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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
priceline.com Incorporated v. Sigfredo Alviera
Case No. D2007-1273
1. The Parties
The Complainant is priceline.com Incorporated of Norwalk, Connecticut, United States of America, represented by Downs Rachlin Martin PLLC, United States of America.
The Respondent is Sigfredo Alviera of Cancun, Quintana Roo, Mexico.
2. The Domain Name and Registrar
The disputed Domain Name, <pricelinecancun.com>, is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2007. On August 31, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. The Registrar responded to the Center on September 4, 2007, identifying the Respondent as the registrant and providing the contact details.
In response to this further information concerning the Respondent’s identity, the Complainant filed an amendment to the Complaint on September 7, 2007. The Center verified that the Complaint together with the Amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 the Respondent of the Complaint, and the proceedings commenced on September 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2007. No Response was submitted, and the Center notified the parties of the Respondent’s default on October 17, 2007.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on October 26, 2007. 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
The Complainant priceline.com Incorporated is a corporation organized under the laws of the State of Delaware, with its principal offices located in Norwalk, Connecticut. Its shares are publicly traded on the NASDAQ stock exchange.
Since 1998, the Complainant has operated a popular online travel service through which Internet users are able to search, purchase, and book airline tickets, hotel rooms, rental cars, vacation packages, and cruises. A month after its launch, the Complainant’s principal website at “www.priceline.com” was ranked among the world’s ten most frequently visited e-commerce websites by RelevantKnowledge, Inc., with more than 1,5 million unique visitors recorded in the first month alone. The Complainant grossed USD $1,68 billion in travel bookings in 2004, and it now counts over 12 million customers.
In addition to its United States operations, the Complainant has ownership interests in the entities that operate similar websites at “www.priceline.com.uk,” “www.priceline.europe.com,” “www.priceline.com.hk” (Hong Kong), “www.priceline.com.sg” (Singapore), and “www.priceline.com.tw” (Taiwan).
The Complainant holds 91 registered service marks worldwide for the coined name PRICELINE, as well as ten registered PRICELINE.COM service marks. These include United States Registrations Nos. 2,272,659 (PRICELINE, registered August 24, 1999 and showing first use in commerce i November 1998) and 2,481,752 (PRICELINE.COM, registered August 28, 2001 and showing first use in commerce in January 1999).
The Complainant owns nearly 300 domain names, many of which incorporate the PRICELINE or PRICELINE.COM marks in combination with geographic and other relevant descriptive words.
The Domain Name was registered on February 13, 2007, in the name of a domain privacy service, Domains by Proxy, Inc. After the Complaint was filed, the Registrar informed the Center that the registrant is the Respondent Sigfredo Alviera of Cancun, Mexico.
Two consumers contacted the Complainant in August 2007 to complain about unsolicited fax advertisements they received from “PricelineCancun”, advertising Cancun vacation packages. One fax included what appeared to be a favorable article about Cancun vacations from USA Today; no such article could be found in that newspaper. Another fax misleadingly appeared to come from the recipient’s own corporate travel office.
The Complainant retained a law firm and a private investigator, who linked the toll-free number to one used by a Florida company named Travelcomm Industries, Inc., which apparently also operated a travel website at “www.cancuncheaptickets.com”.
One consumer reported calling the toll-free number more than once in response to an advertisement. On the first occasion it was answered “Cancun Cheap Ticket,” and on a later call, “Priceline Cancun”. Confused, the consumer asked about their identity and was told the company had just been acquired by “Priceline” two days earlier. Another customer asked directly (in a conversation that the consumer recorded), “You are priceline.com?” and was told, “Yes, we are”.
The Complainant found several complaints about “www.pricelinecancun.com” on the consumer websites “http://800notes.com” and “www.junkfax.org,” with reports that the operators of the toll-free number advertised in the faxes and on the Respondent’s website suspiciously required a credit card number before furnishing further information about their advertised vacation packages.
The Complainant has furnished information to the Federal Bureau of Investigation to examine potential criminal activity by the operator of “www.pricelinecancun.com.”
The website to which the Domain Name resolves features vacation packages in Cancun, Mexico and also advertises such packages in other Mexican, United States, and Caribbean tourist destinations. Visitors may book and pay online. They are also encouraged to call a toll-free telephone number to inquire about “specials.” The website prominently displays the words “Welcome to priceline CANCUN,” in a blue-and-teal color scheme similar to that used by the Complainant, and with the name “priceline” in rounded, lower-case letters, just as it appears on the Complainant’s website. Based on printouts provided by the Complainant, the website at “www.cancuncheaptickets.com” was essentially similar in August 2007, advertising the same toll-free telephone number that appeared at the time on the website at “www.pricelinecancun.com,” but without reference to “priceline.”
As discussed further below, Trip Network Inc. d/b/a/ Cheap Tickets, Inc. brought a UDRP complaint against the same Respondent earlier this year concerning the domain names <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org>. A National Arbitration Forum panel found that the Respondent had registered and used these domain names in bad faith and ordered transfer of the domain names to the complainant in that proceeding. See, Trip Network Inc. d/b/a/ Cheap Tickets, Inc. v. Sigfredo Alviera, NAF Claim No. FA 914943.
The Respondent has not submitted a Response in this proceeding, despite notice from the Center and the Complainant delivered to the contact address provided by the Registrar.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its PRICELINE and PRICELINE.COM marks and that the Respondent is making use of those marks without authorization or legitimate interest.
The Complainant argues that the Respondent registered and used the Domain Name in bad faith, pointing to the fame of the Complainants’ marks and the evidence that the Respondent has engendered and exploited confusion with those marks both online and in its fax advertising and telephone call center operations.
The Respondent did not submit a Response to the Complaint.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a Respondent of a disputed domain name, a Complainant must demonstrate each of the following:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
The Complainant indisputably owns registered PRICELINE and PRICELINE.COM standard-character service marks. The Domain Name incorporates the PRICELINE mark in its entirety and adds a geographically descriptive term, “Cancun.” This in no way decreases the likelihood of confusion as to source. Indeed, since the Complainant is in the travel business and does in fact book Cancun vacations, the addition of this relevant geographic term increases rather than lessens the likelihood of confusion.
The Panel concludes, therefore, that the Complainant has satisfied the first element of the UDRP Complaint.
B. Rights or Legitimate Interests
The Policy, paragraph 4(c), advises respondents as follows:
“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.
The certified Complaint asserts without contradiction that the Complainant did not authorize the Respondent to use the Complainant’s marks in the Domain Name. The Complainant has adduced persuasive evidence of the fame of its marks and the fact that the Domain Name was and is used for a website advertising vacation bookings in competition with the Complainant, and with design elements that appear calculated to make Internet users believe the website is associated with the Complainant. This attempt to engender confusion as to the source of sponsorship or origin of the website at the Domain Name is also reflected by the fax advertising sent to consumers and the reported telephone conversations with consumers who called the toll-free number advertised on the website to which the Domain Name resolves.
These facts create a rebuttable presumption that the Respondent has no rights or legitimate interests in the Domain Name but rather sought to mislead Internet users for commercial gain. The Respondent has not come forward with any argument or evidence to rebut that presumption, and the Panel thus concludes that the Respondent has no such rights or legitimate interests.
The Panel concludes, therefore, that the second element of the Complaint has been established.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), gives non-exhaustive illustrations of bad faith registration and use, including the following:
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.
The Complainant cites both of these provisions. The UDRP panel in Trip Network Inc., supra found that both provisions applied in a very similar case earlier this year against the same Respondent, who advertised the same vacation packages on websites with domain names incorporating the registered CHEAPTICKETS and CHEAPTICKETS.COM marks.
The current Panel notes that Respondent’s “primary” purpose may or may not have been to disrupt the Complainant’s business, although it would presumably have occurred to the Respondent that its use of the Domain Name would be likely to have that effect to at least some unquantified degree.
It is reasonably clear that the Respondent attempted to mislead Internet users for commercial gain, as evidenced by the following:
- the fame and distinctiveness of the Complainant’s PRICELINE and PRICELINE.COM marks, known to millions of Internet users;
- the entire incorporation of those marks in the Domain Name, with the addition of a relevant geographic identifier;
- prominent use of the Domain Name incorporating the Complainant’s marks, in a similar typeface and color scheme, on the Respondent’s website;
- related fax advertising with misleading references to an apparently fictitious newspaper article and a “memo” purportedly from the recipient’s “corporate” travel office;
- call center dialogues reported (and in one case, as alleged by the Complainant, tape recorded) by consumers that included misrepresentations about affiliation with the Complainant;
- use of the website to which the Domain Name resolves to advertise and book (or at least take payment for) vacation packages that directly compete with the travel booking services offered by the Complainant;
- essentially identical recent conduct by the Respondent with respect to another famous online travel mark, CHEAPTICKETS, as found by the panel in Trip Network Inc., supra.
Cumulatively, these actions strongly support an inference of bad faith, and the Respondent has not come forward with an alternative explanation for registering and using a Domain Name confusingly similar to the marks of the Complainant’s famous online travel service.
The Panel concludes, therefore, that the Complainant has established bad faith within the meaning of the Policy.
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 <pricelinecancun.com> be transferred to the Complainant.
W. Scott Blackmer
Dated: October 30, 2007