WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Ebookers Limited, Ebookers.IE Limited v. Mark O Donovan Case No. D2009-0254 1. The Parties
The Complainants are Ebookers Limited of London, United Kingdom of Great Britain and Northern Ireland, and Ebookers.IE Limited of Dublin, Ireland, represented by Boult Wade Tennant of United Kingdom of Great Britain and Northern Ireland.
The Respondent is Mark O Donovan of Ireland. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2009. On February 26, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On February 26, 2009, eNom 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 4, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2009. The Response was filed with the Center on March 5, 2009.
Supplemental filings were submitted by the Complainants on March 9, 2009 and on March 12, 2009 and by the Respondents on March 6, 2009, March 12, 2009 and March 17, 2009. The Center acknowledged the receipt of these filings, and informed the parties that such will be brought to the Panel's attention, upon its appointment. Further, the parties were informed that it will be in the Panel's sole discretion to determine whether to consider and/or admit the supplemental filings, and whether to order any further procedural steps.
The Center appointed Alistair Payne as the sole panelist in this matter on March 13, 2009. 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 first named Complainant was incorporated in the United Kingdom on August 3, 1999. The second named Complainant was incorporated on September 24, 1997. The second named Complainant is a subsidiary of the first named Complainant.
The second named Complainant holds a trademark registration for EBOOKERS in the United Kingdom. The second named Complainant has applied for a Community Trade Mark and also for an Irish trademark for the term “ebookers”.
The services offered by the Complainants primarily relate to the booking of travel and accommodation and general travel agency services.
The Complainants operate the following domain names: and .
The Complainants are seeking a transfer of the Disputed Domain Name to the first named Complainant.
The Disputed Domain Name was registered on March, 6, 2005.
The Disputed Domain Name resolves to the Respondent's website which offers accommodation in hotels, hostels, B&B's and guesthouses on the island of Ireland. 5. Parties' Contentions A. Complainant
The Complainants assert that they have registered and unregistered trademark rights in the term “ebookers”.
The Complainants contend that the Disputed Domain Name is identical or very similar to their EBOOKERS mark.
The Complainants contend that the Respondent do not have rights or legitimate interests in the Disputed Domain Name and the website from which the Disputed Domain Name resolves is used by the Respondent to provide identical services to those of the Complainants.
The Complainants submit that the Respondent is trading off the goodwill of the Complainants.
The Complainants submit that the Respondent is not commonly known as “ebookers” or by “ebookersireland”.
The Complainants contend that the Disputed Domain Name was registered and is being used in bad faith by the Respondent on the basis that the Disputed Domain Name is being used by the Respondent to intentionally attract customers and clients looking for the Complainants' websites for commercial gain by creating a likelihood of confusion with the Complainants' mark. The Complainants also asserts that the Disputed Domain Name is for sale. B. Respondent
The Respondent denies the allegations put forward by the Complainants.
The Respondent refutes that there is any possibility of confusion between his website and the Complainants.
The Respondent refutes that the Complainants have established unregistered trademark rights in the term “ebookers”.
The Respondent considers that the term “ebookers” is generic and descriptive.
The Respondent contends that he has legitimate interests in the Disputed Domain Name and at the date of registering the Disputed Domain Name in 2005 he was unaware of the Complainants' existence.
The Respondent contends that the Disputed Domain Name was not registered and is not being used in bad faith.
The Respondent states that the Disputed Domain Name is available for purchase on “”. 6. Discussion and Findings A. UDRP Elements
If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy. In doing so the Panel elected to consider the parties' respective Supplemental Filings as noted above. B. Identical or Confusingly Similar
The Complainants have provided sufficient evidence of their ownership of both registered and unregistered usage rights in the EBOOKERS trademark.
The Disputed Domain Name is not identical to the Complainants' mark. However the use of the words “ebookers” and “ireland” in combination and in particular in connection with the offer of accommodation services, including accommodation services located in Ireland, does suggest that the Disputed Domain Name is confusingly similar to the Complainants' mark. The Panel is satisfied that the Disputed Domain Name is confusingly similar to the EBOOKERS mark.
Previous panels have decided that a domain name which wholly incorporates a complainant's registered mark may be sufficient to establish confusing similarity for the purposes of the Policy. See Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin,WIPO Case No. D2003-0888. Previous panels have decided that a geographically descriptive term which is suffixed to a complainant's trade mark does nothing to dispel confusing similarity. See in this regard: Arthur Guinness Son & Co. (Dublin) Limited v. Kevin Graham/ Kevin Paul Wayne,WIPO Case No. D2000-1699; Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life,WIPO Case No. D2002-0363; PepsiCo Inc. v. Kieran McGarry,WIPO Case No. D2005-0629.
The Panel considers that the Complainants has satisfied paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
It is the Complainants' burden to prove that Respondent lacks rights or legitimate interests. Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. As it is difficult to produce evidence to support a negative statement, the threshold for the Complainant to prove a lack of legitimate interest is low. Once a prima facie case is shown the burden of proof then shifts to the Respondent who must demonstrate its rights or legitimate interests to the Panel.
Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that can be brought forward by the Respondent, which if found by the Panel to be proved based on its evaluation of all evidence presented, shall be demonstrative of the Respondent's legitimate rights or legitimate interests to the Disputed Domain Name for the purposes of paragraph 4(a)(ii):
(i) (demonstrable preparations to) use the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(ii) an indication that the registrant has been commonly known by the domain name even if has acquired no trademarks rights: or
(iii) legitimate non-commercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.
It is generally regarded as sufficient prima facie proof, for a complainant to show that “the disputed domain name is identical or confusingly similar to its mark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise”. Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857.
The Respondent's website to which the Disputed Domain Name resolves is currently used to offer accommodation services on the island of Ireland. The Respondent asserts that his website was launched in March 2005.
The Complainants who also provide accommodation services on, inter alia, the island of Ireland, have used the EBOOKERS brand name in both the United Kingdom and in Ireland since 1998. Financial group accounts provided by the Complainants in evidence show that Ebookers plc had achieved very significant levels of gross sales in the years prior to the registration of the Disputed Domain Name. The Complainants have also provided evidence of industry awards won by the first Complainant in 2004 as well as providing a considerable sample of invoices issued to Irish customers prior to date of registration. Considering the evidence as a whole the Panel considers that the Complainants have established that they had developed substantial goodwill and reputation in the EBOOKERS name and mark at the date of the registration of the Disputed Domain Name in 2005. The Panel considers it is reasonable to infer that a competitor operating in the Irish travel industry would have been aware of Ebookers reputation subsisting both in Ireland and on a worldwide basis in 2005.
Based on the degree of reputation attaching to the Complainants' EBOOKERS name and mark the Panel infers that the Respondent must have been aware of the Complainants' mark at the date of registration of the Disputed Domain Name. There is nothing to suggest that the Respondent was ever affiliated with the Complainants in any way, or was authorised to use the EBOOKERS trademark. Nor is there any evidence before the Panel to support a finding that the Respondent was or has become commonly known by the Disputed Domain Name or by a confusingly similar name. The Panel notes in particular, as set out further below that the Respondent's website, to which the Disputed Domain Name resolves, ultimately diverts Internet users to another website owned by the Respondent.
As the Respondent has failed to supply evidence to the contrary, the Panel infers that the Respondent is exploiting the Complainants' goodwill by using the Disputed Domain Name to intentionally attract and divert Internet users who wish to access the Complainants' website.
For these reasons and as further discussed below, the Panel considers that the Respondent does not have any rights or legitimate interests in respect of the Disputed Domain Name and as such the Complainants have satisfied paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The Policy requires a complainant to prove both registration and use in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and used of a domain name in bad faith. Those circumstances are:
(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
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's 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 the respondent's website or location or of a product or service on the respondent's website or location.
The Panel is satisfied from the evidence that the Complainant had established a substantial reputation prior to the date of registration of the Disputed Domain Name. The Panel infers that by the date of registration of the Disputed Domain Name the Respondent must have been aware of the Complainants' business reputation. The Panel notes that the website to which the Disputed Domain Name resolves ultimately diverts Internet users to another website offering accommodation services which is also operated by the Respondent. No satisfactory explanation is evident to the Panel as to why the Respondent selected the EBOOKERS mark as part of the Disputed Domain Name other than to trade on the goodwill of the Complainant. The Panel therefore infers that the Respondent is using the reputation of the Complainants' mark to profit from the obvious association with the Disputed Domain Name by attracting Internet users to the Respondent's website for commercial gain. The Complainants have therefore satisfied the requirements of paragraph 4(b)(iv) of the Policy.
The Complainants sent the Respondent a cease and desist letter on March 10, 2008. The Respondent replied a day later setting out his alleged entitlements to the Disputed Domain Name. In the same correspondence the Respondent advised the Complainants that the Disputed Domain Name was available for sale through a domain broker, “” for £5,000, on a first come first serve basis. The Complainants on March 19, 2008 once again wrote to the Respondent requesting the transfer of the Disputed Domain Name and also made an offer of £250 to cover the Respondent's reasonable expenses. The Respondent refused this offer on the basis that that the website to which the Disputed Domain Name resolves is worth substantially more than £250 but has provided no evidence to support its assertion that its out of pocket costs associated with the Disputed Domain Name were substantially more than £250.
In light of the foregoing evidence the Panel is willing to infer that, in the alternative, the Disputed Domain Name was registered primarily for the purpose of selling it for a consideration in excess of documented out of pocket costs directly related to the Disputed Domain Name. No evidence was produced by the Respondent to establish that the actual cost of registration and maintenance of the Disputed Domain Name was £5,000 or could be anything like this sum. The Panel considers that the Complainants have also satisfied 4b(i) of the Policy.
For the reasons stated above the Panel is satisfied that the Disputed Domain Name was registered and used in bad faith and that the Complainants have satisfied paragraph 4(a)(iii) of the Policy. 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 be transferred as requested to the Complainant Ebookers Limited.
Alistair Payne
Sole Panelist
Dated: March 30, 2009
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