WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Viajes H, S.A. v. NORTAQ, Ltd.
Case No. D2006-1480
1. The Parties
The Complainant is Viajes H, S.A., a Spanish company, represented by Jordi Masdevall, Barcelona, Spain.
The Respondent is NORTAQ, Ltd., London, United Kingdom of Great Britain and Northern Ireland, represented by John Berryhill, Pennsylvania, United States of America.
2. The Domain Name and Registrar
The disputed domain name at issue is . The domain name is registered with EnCirca, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2006. On November 22, 2006, the Center transmitted by email to EnCirca, Inc. a request for registrar verification in connection with the domain name at issue. On November 30, 2006, EnCirca, Inc. 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”), 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 commencement of this proceeding on December 7, 2006. On December 26, 2006, Respondent submitted its timely Response to the Complaint by e-mail; the hard copy Response was received on January 4, 2007.
On January 25, 2007, the Center appointed Miguel B. O’Farrell, Johan Sj�beck and Geert Glas as panelists in this matter. The Panel finds that it was properly constituted. Each member of 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 is a tour operator and travel agency in Spain, which offers facilities in Spain and operates principally through its website “www.h”, which was launched on September 19, 1998.
Complainant owns the following trademark registrations: (i) Spanish registration for HIS HOLIDAYSINSPAIN.COM, N�M-2577343, granted on July 14, 2004; (ii) Spanish registration for VIAJES HOLIDAYSINSPAIN.COM, N�N-0260065, granted on September 16, 2005; (iii) Community registration for HOLIDAYSINSPAIN.COM, N�004288321, filed on March 11, 2005 and granted on April 13, 2006. Complainant has also a pending Community application for HIS HOLIDAYSINSPAIN.COM, No. 003781283.
On October 20, 2005, Respondent registered the domain name . At this site, Respondent offers travel and accommodation information in Spain.
5. Parties’ Contentions
A. Complainant
Complainant alleges that:
Respondent’s registration and use of the domain name violates Complainant’s rights in its above-mentioned confusingly similar trademarks which include the wording “HOLIDAYSINSPAIN.COM.”
Respondent does not have rights or legitimate interests in the disputed domain name at issue. Respondent does not have trademark rights or any kind of authorization to use the trademark HOLIDAYSINSPAIN.COM.
The domain name has been registered and is being used in bad faith. In support of this assertion, Complainant argues that Respondent has registered the domain name primarily to preclude the Complainant from reflecting its trademarks and for the purpose of renting, selling or otherwise transferring the disputed domain name to the Complainant.
Respondent is not using the domain name at issue in connection with a bona fide offering of goods and/or services, nor does it make a legitimate non-commercial or fair use of the domain name, but rather unfairly trades on Complainant’s trademark, for commercial gain, misleading consumers by associating the disputed domain name with sponsored links resolving to websites offering services competing with those of the Complainant.
B. Respondent
In defense of its registration of the domain name, Respondent alleges that:
Complainant’s trademarks are dominated by a complex three-dimensional logo, to which the addition of “HOLIDAYSINSPAIN.COM” is a minor part.
“Holidays in Spain” is a widespread non exclusive term, widely used, and it is not distinctively identified with the Complainant.
Respondent is in no more need of a license or authorization from the Complainant than are the thousands of other readily-identifiable entities which use and have used for years the descriptive term “holidays in Spain”.
Respondent has not attempted to sell the domain name at issue to the Complainant, nor has the Respondent engaged in a pattern of bad faith domain name registrations to deprive Complainant of the opportunity to reflect its trademark. Indeed, Complainant has demonstrated a proficiency at registering numerous variations of the term “holidays in Spain” in a variety of domain names.
Respondent has registered several other travel-related domain names such as , , , which demonstrates a pattern of registering geographic names of travel destinations, combining those names with various permutations of “hotels” and “holidays”.
Respondent’s primary motivation in registering the domain name at issue was to advertise travel services using the names of destinations.
Complainant has not proved that the domain name has been either registered or used in bad faith.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements listed in Paragraph 4(a) of the Policy have been satisfied:
(i) The disputed 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) The disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
Complainant has proved that it owns the following trademark registrations: (i) Spanish registration for HIS HOLIDAYSINSPAIN.COM, N�M-2577343, granted on July�14,�2004; (ii) Spanish registration for VIAJES HOLIDAYSINSPAIN.COM, N�N-0260065, granted on September 16, 2005; (iii) Community registration for HOLIDAYSINSPAIN.COM, N�004288321, filed on March 11, 2005 and granted on April 13, 2006.
The Panel notes that Complainant’s rights derived from all of these trademark registrations predate Respondent’s registration of the disputed domain name. In this connection, the Panel considers that the priority of rights date in a registered trademark is the filing date rather than the date on which the registration is granted.
The Panel considers that the dominant feature in all of Complainant’s trademarks are the words “HOLIDAYS IN SPAIN”, particularly in the Community registration No. 004288321 HOLIDAYSINSPAIN.COM and it is evident that they are confusingly similar to the domain name .
Therefore, Complainant has proved the first element required in paragraph 4(a)(i).
B. Rights or Legitimate Interests
Respondent has clearly explained the reason why it has chosen the terms “holidays in Spain” as a domain name, that is, to advertise travel services.
In the United Kingdom, where the Respondent is domiciled, the phrase “holidays in Spain” is merely descriptive. Moreover, such phrase appears in many other websites and domain names not related to the Complainant, as Respondent demonstrates.
Respondent has also proved its registration of several other domain names composed of a geographic-travel destination, combined with the words “hotels” and/or “holidays”, such as , , .
Unless there is persuasive evidence that the domain name was selected opportunistically to create confusion and exploit the Complainant’s trademarks, the Panel would conclude that Respondent has a legitimate interest in using the domain name for commercial purposes. See Mariah Media, Inc. v. First Place � Internet, Inc, WIPO Case No. D2006-1275.
In view of the above and since there is no evidence to suggest that Respondent registered the domain name in bad faith, the Panel finds that Respondent has demonstrated use of the domain name in connection with a bona fide offering of goods or services according to paragraph 4(c)(i) of the Policy which reads as follows “c.- […] 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 […] (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; […]”.
Therefore, the Panel finds that Respondent has proved its legitimate interests to the domain name at issue and that Complainant has not proved the second element required in paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
No finding of registration and use in bad faith can be made against the Respondent.
Respondent’s domain name portfolio, so far as it is reflected in the record in these proceedings, is limited to common words and combination of words, and there is no evidence suggesting a pattern of abusive domain name registrations, or any evidence showing unfair registration/use of the disputed domain name.
In addition, there is no evidence in the record that Respondent has registered the domain name primarily for the purpose of renting, selling or otherwise transferring the disputed domain name to the Complainant.
Finally, there is no evidence to suggest that the Respondent registered and used the domain name in bad faith.
In view of the foregoing, the Panel finds that Complainant has not proved the third element required in paragraph 4(a)(ii).
7. Decision
For all the foregoing reasons, the Complaint is denied.
Miguel B. O’Farrell
Presiding Panelist
Johan Sj�beck
Panelist
Geert Glas
Panelist
Dated: February 7, 2007
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