WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Get Away Today.Com Inc. v. Warren Gilbert

Case No. DCO2010-0021

1. The Parties

Complainant is Get Away Today.Com, Inc. of Ogden, Utah, United States of America, internally represented.

Respondent is Warren Gilbert of Lilburn, Georgia, United States of America.

2. The Domain Name and Registrar

The disputed domain name <getawaytoday.co> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2010. On September 22, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 22, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceeding commenced on September 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 14, 2010.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on October 22, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant has registered the word service mark GETAWAYTODAY.COM on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 3,448,665, dated June 17, 2008, in International Class 39, covering “travel agency services, namely, making reservations and bookings for transportation”, claiming first use and first use in commerce of May 1, 2002.

Complainant operates a commercial Internet website offering travel planning and booking services for destinations in the United States and other countries. The Internet address of Complainant’s website is “www.getawaytoday.com”.

According to the registrar GoDaddy.com, Inc.’s verification, Respondent is registrant of the disputed domain name. According to that verification, the record of registration of the disputed domain name was created in July 2010. According to a GoDaddy.com, Inc. WhoIs database report provided by the Center, the record of registration of the disputed domain name was created on July 27, 2010.

Respondent has used the disputed domain name to direct Internet users to a link farm parking page website provided by GoDaddy.com, Inc.. The link farm parking page includes a substantial number of links to travel service providers that are in direct competition with Complainant, including websites operated by companies such as Disney and Universal Studios, as well as travel agents and ticket brokers. The link farm parking page indicates that the website was provided “free” by GoDaddy.com, and also indicates that GoDaddy.com’s “Buy Domain Services” can help Internet users purchase the disputed domain name. It is not evident from the free link farm parking page content whether Respondent receives financial benefit from click-throughs by Internet users on the various links.

The registration agreement in effect between Respondent and GoDaddy.com, Inc. subjects Respondent to dispute settlement under the Policy. The disputed domain name is registered with the country code extension for Colombia (“.co”), and the Registry for the “.co” extension has adopted the Policy for purposes of domain name dispute resolution (see paragraph 32 of the GoDaddy.com Inc. registration agreement). Respondent’s website at the disputed domain name is in the English language. Respondent registered the disputed domain name through GoDaddy.com, Inc., and there is no indication that Respondent’s registration agreement is in Spanish or another language other than English. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant argues that it has rights in the service mark GETAWAYTODAY.COM, and that the disputed domain name is identical or confusingly similar to its service mark. Complainant asserts that service mark registration “creates a rebuttable presumption that the mark is inherently distinctive”. Complainant contends that gTLD and country code extensions should be ignored in comparing service marks and disputed domain names under the Policy.

Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because Respondent is not known by the mark; because Respondent has not made a bona fide offering of goods and services with the disputed domain name, and; because Respondent has not engaged in legitimate noncommercial or fair use of Complainant’s mark.

Complainant contends that Respondent registered and is using the disputed domain name in bad faith, because “[t]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”. Complainant indicates that Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark, particularly by permitting third parties in the travel industry to appear as sponsored listings. Complainant contends that Respondent should have been aware of its service mark when it registered the disputed domain name.

Complainant requests the Panel to direct the registrar GoDaddy.com, Inc. to transfer the disputed domain name to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

The Center notified Respondent of the Complaint and commencement of the proceedings by courier and email. The records of the courier service show delivery of the documents to the physical address of Respondent shown on the record of registration of the disputed domain name, and there is no indication of difficulties in transmission of email to Respondent. The Panel is satisfied that the Center took the steps specified in the Rules to provide adequate notice to Respondent, and that Respondent was afforded a reasonable opportunity to respond in this proceeding.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain name; and

(iii) respondent’s domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

The disputed domain name is registered in the “.co” country code Registry of Colombia. Aside from this fact of registration operation, the apparent relevant facts in this proceeding relate to the United States of America. The Panel finds no reason in this proceeding to inquire into considerations of the law of Colombia as it may relate to service mark rights and rights in domain names. The Panel’s decision in this regard is based on and pertains to the specific circumstances of this proceeding.

A. Identical or Confusingly Similar

Complainant has registered the service mark GETAWAYTODAY.COM on the Principal Register of the USPTO and has provided evidence of use of that mark in commerce in the United States. Registration on the Principal Register establishes a presumption of ownership and validity of the service mark in the United States. Respondent has not challenged that presumption of ownership and validity. The Panel determines that Complainant has rights in the service mark GETAWAYTODAY.COM in the United States.

The disputed domain name, <getawaytoday.co>, is identical to Complainant’s service mark, except that the disputed domain name lacks the letter “m” found at the end of Complainant’s service mark. Because Complainant’s registered service mark includes “.com”, it is appropriate to include the gTLD extension “.com” in comparison of the service mark to the disputed domain name. The disputed domain name is nearly identical to the service mark from the standpoint of visual impression, sound and meaning. The Panel determines that the disputed domain name is confusingly similar to Complainant’s service mark.

The Panel determines that Complainant has rights in a service mark and that the disputed domain name is confusingly similar to that mark.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))

Complainant has argued that Respondent has failed to establish rights or legitimate interests in the disputed domain name because Respondent was not commonly known by the disputed domain name, Respondent has not used the disputed domain name for a bona fide offer of goods or services, and that Respondent has not made legitimate noncommercial or fair use of the disputed domain name. Complainant has contended that use of the disputed domain name in connection with a link farm page that includes links to competitors of Complainant is not fair use of the disputed domain name. Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.

It is well-established that operating a link farm parking page using a service mark in a domain name, and providing connection to services competitive with the service mark owner, does not establish rights or legitimate interests. See, e.g., Easy Gardener Products, Inc. v. Whois Privacy Protection Service, Inc. / Demand Domains, Inc., WIPO Case No. D2010-1185; VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager, WIPO Case No. D2010-0925; Overstock.com, Inc. v. Metro Media, WIPO Case No. DME2009-0001; Fifth Third Bancorp v. Texas International Property Associates, WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell, WIPO Case No. D2007-1139, Shaw Industries Group, Inc., and Columbia Insurance Company v. Parth Shah, WIPO Case No. D2007-1368, and Alfa Laval AB and Alfa Laval Corporate AB v. Alfalava.com, WIPO Case No. D2007-1881.

Respondent has not offered any suggestion as to why its use of Complainant’s service mark in the disputed domain name should be treated as an exception from the general rule stated in the preceding paragraph, and there is no “self-evident” justification on the record of this proceeding for Respondent’s use of Complainant’s mark in the disputed domain name. The fact that Respondent may (or may not) be providing its link farm parking page through passive acceptance of a designation by its registrar GoDaddy.com, Inc. does not alter the impact on Complainant from the standpoint of diversion of prospective customers.

The Panel determines that Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include “(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name”; or “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or of a product or service on [respondent’s] web site or location”.

The disputed domain name differs from Complainant’s service mark by its dropping of the final letter “m”. The two terms are nearly identical. Internet users attempting to enter the address for Complainant’s website in a browser and making a minor typographical error will be diverted to Respondent’s website. Respondent’s website links to a significant number of competitors of Complainant. Respondent might not be directly benefiting financially from using a GoDaddy.com, Inc. link farm parking page, but GoDaddy.com, Inc. is financially benefiting from the sponsored links on Respondent’s website, and GoDaddy.com, Inc. is acting on behalf of Respondent. Respondent must accept the consequences of the actions of its agent, in this case GoDaddy.com, Inc. The Panel determines that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent registered and has used the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy.

Having determined that Respondent acted in bad faith, the Panel need not address other potential grounds for such a finding.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <getawaytoday.co> be transferred to Complainant.

Frederick M. Abbott
Sole Panelist
Dated: November 12, 2010