WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Orbitz, LLC v. Rajiv Khatri, Service Network, LLC

Case No. D2015-1665

1. The Parties

The Complainant is Orbitz, LLC of Chicago, Illinois, United States of America, represented by Winston & Strawn LLP, United States of America.

The Respondent is Rajiv Khatri, Service Network, LLC of Waxhaw, North Carolina, United States of America.

2. The Domain Names and Registrar

The Disputed Domain Names <orbitzmoving.com> and <orbitzrentals.biz> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2015. On September 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On September 22, 2015, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on September 30, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2015. On October 20 and 21, 2015, the Center received emails from the Respondent. The Respondent did not however submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on October 21, 2015.

On October 27, 2015, the Complainant filed an “Additional Submission”.

The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on November 5, 2015. 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 is a leading global online travel business that has been in operation since June of 2001. The Complainant’s website “www.orbitz.com” has received millions of Internet visitors, who use it to plan their travels domestically and internationally.

The Complainant has owned multiple trademark registrations since 2003, including Registration Nos.: 2,799,051, 2,858,685, and 2,951,983 for its ORBITZ trademark with the United States Patent and Trademark Office (“USPTO”) in connection with a variety of travel related goods and services, including making temporary lodging reservations.

The Respondent registered the Disputed Domain Name <orbitzmoving.com> on September 7, 2005 and the Disputed Domain Name <orbitzrentals.biz> on September 20, 2007. Both of the Disputed Domain Names fully incorporate the Complainant’s trademark ORBITZ.

The Disputed Domain Name <orbitzmoving.com> was registered as a website where it collects personal information for the purpose of selling when Internet users are asked for such information in exchange of moving quotes. The Disputed Domain Name <orbitzrentals.biz> resolves to a parking page with the notice “Website coming soon!”

5. Parties’ Contentions

A. Complainant

The Complainant alleges that:

(a) The Disputed Domain Names are identical or confusingly similar to the Complainant’s mark.

The Complainant claims that both Disputed Domain Names entirely incorporate the Complainant’s mark. Both Disputed Domain Names contain a combination of the Complainant’s mark with a generic element. Such addition is insufficient to avoid a finding of confusing similarity. To the contrary, the relevant public might get the impression that the Disputed Domain Names identify the Complainant itself and emphasize the association between the two Parties. The addition of Top-Level Domains (TLDs) in the Disputed Domain Names fails to produce domain names that are distinctive enough from the Complainant’s mark.

(b) The Respondent has no rights or legitimate interests with respect to the Disputed Domain Names.

The Complainant avers that the Respondent is not commonly known by the Disputed Domain Names and has not been authorized, licensed, or otherwise permitted by the Complainant to register and/or use the Disputed Domain Names.

Further, the Complainant states that the Respondent cannot claim any use of the Disputed Domain Names for any bona fide offering of goods or services. One of the Disputed Domain Names resolves to a parked holding page with the notice “website coming soon!” and the other Disputed Domain Name attempts to lure Internet users to submit certain personal information in order for the Respondent to obtain profits from selling such information. The act of acquiring personal information by misleading individuals into believing that they are providing their information to a service affiliated with the Complainant cannot be deemed a bona fide offering of goods or services.

In addition, despite the fact that the actual operating entity is noted as Leadgrab LLC, the Respondent is alleged to use the Complainant’s mark as a front to profit off of the Complainant’s goodwill and thus misleading consumers into a false affiliation between the Complainant and the Respondent.

Lastly, the Complainant asserts that although the Respondent has used the Disputed Domain Names for a relatively long time, this does not automatically make the Respondent “commonly known” by them.

(c) The Disputed Domain Names were registered and are being used in bad faith.

The Complainant contends that bad faith is demonstrated through following facts:

The Respondent’s registrations are in bad faith because they were acquired and commercially used to mislead the public; to suggest false affiliation with the Complainant in an attempt to lure Internet users into providing personal information in hopes of obtaining moving quotes; to attempt to attract, for commercial gain, Internet users to the Respondent’s websites.

Further, the Respondent has used important elements of the look-and-feel of the Complainant’s website.

In addition, the fact that the Disputed Domain Name <orbitzmoving.com> collects users’ personal information in order to sell such information to third parties further evidences the Respondent’s bad faith.

Also, bad faith can be shown because the Respondent ignored a letter sent by the Complainant on July 31, 2015 to inquire about the nature of the Respondent’s use of the ORBITZ mark and to request transfer of the Disputed Domain Names.

The Respondent’s registrations are in bad faith also because it arguably knew or should have known of the Complainant’s mark at the time of registration. A standard trademark search would show the Complainant’s mark. Such prior knowledge can be inferred also because the Complainant is globally famous.

Moreover, bad faith is shown because the Respondent is also the registrant of a series of domain names containing the marks of other companies, such as Expedia, All State Insurance, Amazon, Geico, Woot and so on. Such a pattern of behavior could only be considered further evidence of bad faith.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions. However, in response, it did communicate through emails, and one of its responses, dated October 20, 2015, contained the following arguments (“Response”):

(a) That the Disputed Domain Names have not done anything to cause brand confusion with the Complainant’s clients;

(b) That it is merely a small moving company and has used the Disputed Domain Name <orbitzmoving.com> for over ten years without a single issue;

(c) That its logos, color schemes, etc. are all radically different from the Complainant’s mark;

(d) That it is in a completely non-competitive industry to the Complainant; and

(e) That it has a disclaimer placed at the bottom of its site (apparently referring to “www.orbitzmoving.com”) letting users know that the Respondent has no affiliation to the Complaint.

And therefore, it opposes the transfer the Disputed Domain Names.

C. Complainant’s Additional Submission

The Complainant’s additional submission of October 27, 2015 alleged that the Respondent’s statements made in its Response are not true as follows:

(a) Contrary to the statement in the Response, there is no disclaimer placed at the bottom of “www.orbitzmoving.com” to alert users that the Respondent has no affiliation to the Complainant;

(b) As mentioned in the Complaint, on the “About Us” page of the Disputed Domain Name <orbitzmoving.com>, it states “Expedia Movers, owned and operated by …”. This is further evidence showing the Respondent’s repeated practice of registering domain names containing well-known company names, such as “Expedia”;

(c) The Complainant disputes the Respondent’s description of itself as a “small moving company”, noting that on the “www.orbitzmoving.com” website, it is firstly stated that “Orbitz Moving is not a moving company” and also that “Over a million customers have saved on their move with us”.

Also, the additional submission alleges that confusion analysis for UDRP purposes should be limited to the domain name level rather than content level. And even if content will be examined, the Respondent is still using important elements of the look-and-feel of the Complainant’s website. Particularly, the website at the Disputed Domain Name <orbitzmoving.com> uses the blue and white color themes and the use of an upward facing arrow within the letter “O”.

Such false statements are therefore further evidence of the Respondent’s bad faith.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) The Disputed Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Disputed Domain Names are identical or confusingly similar to the Complainant’s mark.

It is well settled that the inclusion of a registered mark in its entirety in a domain name results in confusing similarity for purposes of paragraph 4(a)(i) of the Policy. Here, the Disputed Domain Names both consist of the Complainant’s mark ORBITZ in its entirety.

One of the distinctions between the Disputed Domain Names and the mark is that the Disputed Domain Names contain the generic terms “moving” and “rentals”. Numerous UDRP decisions have illustrated that such addition of generic or descriptive terms will not be sufficient to avoid confusion. It is also stated in paragraph 1.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that:

“The addition of generic or descriptive words to a trademark in a domain name normally does not avoid a finding of confusing similarity, particularly where the trademark constitutes the dominant or principal component of the domain name. Further, the use of a generic or descriptive word that describes the products or services with which the trademark is ordinarily used may exacerbate or increase the confusing similarity.”

In addition, it has been long held that the TLD typically should not be considered when comparing the mark and the domain name. See The Stanley Works and Stanley Logistics, Inc v. Cam Creek. Co., Inc, WIPO Case No. D2000-0113 and Nokia Corporation v. Nokiagirls.com, WIPO Case No. D2000-0102. In result, the TLDs in this case have no significance to the first element analysis.

Therefore, the first Policy element has been established.

B. Rights or Legitimate Interests

The Panel concludes that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.

Although a complainant bears the ultimate burden of proof on this issue, UDRP panels recognize that strict compliance would often require the impossible task of proving a negative because such information is frequently within the sole possession of a respondent (see Altria Group, Inc. v. Steven Company, WIPO Case No. D2010-1762). Accordingly, a complainant need only make out a prima facie case that a respondent lacks rights or legitimate interests in a domain name (see Valero Energy Corporation and Valero Marketing and Supply Company v. Kim A Waugh, Kim Consult, WIPO Case No. D2014-1819 “Upon such a showing, the burden shifts to Respondent to demonstrate its rights or legitimate interests in the Disputed Domain Names.”).

In this case, the Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the Disputed Domain Names within the meaning of paragraph 4(a)(ii) of the Policy.

This finding is inter alia based on the following, non-disputed circumstances:

(1) The Respondent is not commonly known by the Disputed Domain Names, even if it has been using one of the Disputed Domain Names for over ten years. Such duration of time is not relevant in the circumstances of this case.

(2) The Complainant has asserted that the Respondent has no relationship or affiliation with the Complainant and has never authorized or licensed the Respondent to use its trademark to apply for a domain name.

(3) The Respondent’s use of the Disputed Domain Names is not a bona fide offering of goods or services.

With regard to the Disputed Domain Name <orbitzrentals.biz>, the only use the Respondent has made of it has been to direct traffic to a parked webpage with a simple “Website Coming Soon!” notice. Such passive holding does not give rise to any rights or legitimate interests.

With regard to the Disputed Domain Name <orbitzmoving.com>, the Respondent is not making a bona fide offering of goods or services. For the only purpose of exploitation, the Respondent elicits personal information when Internet users are asked for such in exchange of moving quotes. It is therefore reasonable to presume that the Respondent is not making a bona fide offering of goods or services.

Further, even if, under different circumstances, the collection of personal information for the purpose of providing moving quotes might be a legitimate practice, in the instant case the Panel finds that using the name “Orbitz Moving”, instead of the name of the real operating entity, “Leadgrab LLC”, has the clear potential to mislead visitors into believing that they are providing their information to a service affiliated with the Complainant, and that this is not a legitimate practice. This fact annihilates the possibility that the Respondent’s use of the Disputed Domain Name is a bona fide offering of goods or services. Contrary to what the Respondent claims, there is no evidence in the record that “www.orbitzmoving.com” contains a disclaimer of association with the Complainant.

As nothing in the record rebuts the Complainant’s prima facie case, the Panel finds that the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy have been sufficiently made out by the Complainant and that the Respondent’s bad faith registration and use of the Disputed Domain Names have been proven.

Paragraph 4(b) provides the following four (nonexclusive) circumstances which are deemed to provide evidence of bad faith registration and use of a domain name:

(i) circumstances indicating that you [respondent] have registered or you [respondent] have 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 the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you [respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you [respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online 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 web site or your location.

The Panel finds the following circumstances indicia of the Respondent’s bad faith.

(a) The Respondent has not contested the Complainant’s arguments and evidence that it has engaged in a pattern of abusive registration of domain names containing the marks of other well-known companies. This pattern includes the registration of several domain names comprising the EXPEDIA mark (which designates a business very similar to the Complainant’s). This implies the Respondent’s prior knowledge of the Complainant’s mark at the time of registration, which is recognized as a ground for finding bad faith. The Respondent’s awareness of the Complainant’s trademark at the time of registration can also be inferred because the Disputed Domain Names were registered several years after the Complainant’s trademark registrations and they fully incorporate the Complainant’s mark, and the Complainant is widely known along with its valid trademarks.

(b) Bad faith is also reflected as “Expedia” is used at the “About Us” page of the Respondent’s website “www.orbitzmoving.com” where it introduces itself with the language “Expedia Movers, owned and operated by…” This fact indicates that the Respondent seeks to mislead Internet users into believing that it is in some way associated with the Complainant and similar online travel businesses.

(c) The Respondent failed to develop its argument that “its logo’s [sic], color schemes, etc. are radically different” from the Complainant’s. In fact, one of the “Os” in the logo heading the “www.orbitzmoving.com” website contains an arrow, and such can be identified as the “O” in the Complainant’s ORBITZ logo as well.

(d) The Respondent is acting in bad faith especially because of its false statements in its informal reply. The Respondent attempted to deceive the Panel by misrepresenting that there is a disclaimer placed at the bottom of “www.orbitzmoving.com” alerting Internet users that the Respondent has no affiliation to the Complainant. Ironically as well, the Respondent describes itself as a “small” moving company, while on the website, it firstly self-contradicted by defining “Orbitz Moving is not a moving company”, but then promoting itself by saying that over a million customers have saved on their move with the Respondent. Such false statements can only been construed as indications of bad faith.

(e) As to the Disputed Domain Name <orbitzrentals.biz>, the passive holding of a domain name is not a bar to finding bad faith for the purposes of the Policy, which the Panel does in the circumstances of this case (including specifically the Respondent’s undisputed pattern of abusive domain name registrations). See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Taking all the above into account, this Panel finds for the Complainant on the third element of the Policy.

7. Decision

In light of the foregoing, the Panel finds that both Disputed Domain Names are confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and that the Respondent registered and is using the Disputed Domain Names in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel orders that the Disputed Domain Names <orbitzmoving.com> and <orbitzrentals.biz> be transferred to the Complainant.

Maxim H. Waldbaum
Sole Panelist
Date: November 15, 2015