WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION RM Acquisition, LLC d/b/a Rand McNally v. Trip Maker Tours & Travels Case No. D2009-0305 1. The Parties
The Complainant is RM Acquisition, LLC d/b/a Rand McNally, Skokie, Illinois, United States of America, represented by Kirkland & Ellis, United States of America.
The Respondent is Trip Maker Tours & Travels, Maharashtra, India. 2. The Domain Name and Registrar
The disputed domain name is registered with Lead Networks Domains Pvt. Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2009. On March 10, 2009, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the disputed domain name. On March 16, 2009, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 16, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 20, 2009. The Center verified that the Complaint together with the amended 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 24, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response originally was April 13, 2009, extended as per the request of the Respondent with the consent of the Complainant until May 3, 2009. The Response was filed with the Center on May 4, 2009.
The Center appointed Brigitte Joppich as the sole panelist in this matter on May 6, 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant owns, inter alia, a United States (U.S.) service mark TRIPMAKER registered for online information services concerning routing and travel planning (U.S. Registration No. 2,338,907) with a priority of October 20, 1995 (the “TRIPMAKER Mark”). It has owned and operated an online route planning tool under its TRIPMAKER Mark since at least October 1999 for the purpose of providing travel-planning services and promoting, advertising, and marketing products and services in conjunction with such mark.
The disputed domain name was registered or acquired by the Respondent at an unknown point of time in the year 2008. Before the Complaint was filed, the disputed domain name resolved to a click-through site, offering access to travel-related sites for which advertisers usually pay click-through fees. It currently provides information on various tours in India and abroad.
The Complainant sent a cease and desist letter to the Respondent's contact details available in the whois database on February 20, 2009. Furthermore, prior to the filing of the Complaint, the Complainant tried to acquire the disputed domain name through a brokerage service for the amount of USD 2,000. The Respondent did not reply to any of the Complainant's attempts to settle the dispute. 5. Parties' Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is argued to be confusingly similar to the Complainant's TRIPMAKER Mark, in which the Complainant has acquired substantial goodwill and reputation. The Complainant contends that “tripmaker” is the distinctive element of its TRIPMAKER Mark and that the gTLD “.com” does not distinguish it from such mark.
(2) The Complainant contends that the Respondent has never been authorized to use the Complainant's mark and that the Respondent is not commonly known by the disputed domain name, exploiting the Complainant's valuable mark merely to lure Internet users to its website for the commercial benefit of the Respondent. Moreover, there is no evidence of the Respondent's use of, or demonstrable preparations to use, the domain name in connection with any bona fide offering of goods or services, the Respondent acting merely as a conduit for other entities, for the apparent purpose of earning click-through fees, some of the links on the Respondent's website even linking to competitors of the Complainant's planning tool. Finally, the Complainant contends that the Respondent's use of the disputed domain name is not a legitimate, non-commercial, or fair use, as the Respondent operates it purely for commercial gain.
(3) The Complainant finally contends that the disputed domain name was registered and is being used in bad faith. The Respondent registered in bad faith and for the purpose of commercially benefiting from the goodwill associated with the TRIPMAKER Mark. Upon information and belief of the Complainant, the Respondent was actually or constructively aware of the Complainant's mark. Furthermore, the unusual combination of ordinary English language words (“trip” and “maker”) by a company registered in India suggests that the disputed domain name was registered with the Complainant's business in mind. The Complainant also states that the Respondent is no stranger to UDRP proceedings and that past panel decisions indicate that the Respondent has a pattern and practice of registering domain names that correspond to registered trademarks. Finally, the Complainant suggests that the Respondent intentionally attracts unsuspecting Internet users to its website by creating a likelihood of confusion with the TRIPMAKER Mark as to the source, sponsorship, affiliation, or endorsement of the links offered on or through the Respondent's website, apparently for the sole purpose of earning click-through fees. The Complainant contends that it first informed the Respondent that was confusingly similar to its mark on February 20, 2009. Ultimately, the use of an anonymizing whois privacy service is supposed to be another factor in this case that supports a finding of bad faith. B. Respondent
The Respondent denies that any of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is argued not to be confusingly similar to the Complainant's descriptive TRIPMAKER Mark as it is the name of the Respondent's firm.
(2) The Respondent contends that is has a legitimate interest in the disputed domain name. It claims it does not need any authorization from the Complainant to use the disputed domain name for its own business “Trip Maker Tours & Travel”, set up on October 15, 2007 as evidenced by an income tax card. The Respondent further claims that, after the purchase of the disputed domain name at some point of time in 2008, it proceeded to develop an elaborate website which went live during the first week of March 2009. The Respondent supplied checks received from customers and further material that mentions a company named “Trip Maker Tours & Travel”, bearing either dates after April 1, 2009 or being undated, argued to reflect preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The Respondent contends that it was commonly known by the disputed domain name then. The privacy whois service was allegedly chosen by the Respondent to avoid spam and unsolicited material and that no inference should be made from the decisions against the privacy whois service.
(3) Finally, the Respondent (located in India) contends that it had no knowledge of the Complainant's U.S. service mark, that it was not aware of the Complainant's online planning tool and that it is currently offering various conducted tours on its website, its services differing strongly from those rendered by the Complainant. The parking pages had allegedly been set up by the Registrar and the Respondent did not know of the earlier content of the website at . The Respondent claims that it did not know of the dispute before March 24, 2009. 6. Discussion and Findings
The Respondent did not file its Response within the time limit set by the Center (which had previously been extended as per the Respondent's request) but only one day later. According to paragraph 14 of the Rules, the Panel need not consider the Response in this case (but can take it into account if there are good reasons to apply its discretion) and may draw inferences considered appropriate. Responses submitted late were considered by previous panels in the past, in particular where they were filed before commencement of the decision-making process (e.g. J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing,WIPO Case No. D2000-0035) or where the lateness did not delay the decision (e.g. Young Genius Software AB .v. MWD, James Vargas,WIPO Case No. D2000-0591). Although this Panel is also aware of decisions by previous panels rejecting out of time responses, it considers it more important in this case that each party is given a fair opportunity to present its case than to penalize the Respondent for a slight delay. The Response is therefore accepted.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant's trademark; 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. A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant's TRIPMAKER Mark in which the Complainant has rights.
It is well established that the specific top level domain name is not an element of distinctiveness that is to be taken into consideration when evaluating the identity or confusing similarity between the complainant's trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Therefore, the Panel finds that the disputed domain name is identical to the Complainant's TRIPMAKER Mark and that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is consensus view among panelists that a complainant has to make only a prima facie case to fulfil the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has asserted that the Respondent neither uses the disputed domain name or any name corresponding to such name in connection with a bona fide offering of goods or services nor is known by the disputed domain name, that the Respondent is not making any legitimate non-commercial or fair use of the disputed domain name, and that the Respondent therefore cannot have any legitimate interests in the domain name. Based on the record, the Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent contends, however, that it has a legitimate interest in the disputed domain name due to the use of its business name “Trip Maker Tours & Travel”. It provided some documents to show its commercial activities under such name. Still, having reviewed all the evidence, the Panel is not convinced that the Respondent used the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute, mainly for the following reasons:
- The Respondent claims that, after the purchase of the disputed domain name at some point of time in 2008, it proceeded to develop an elaborate website which went live no earlier than the first week of March 2009. However, this was at least nine days after February 20, 2009, when the Complainant sent its cease and desist letter to the Respondent (at the whois data then available) by email.
- The Respondent supplied checks received from customers and other material mentioning a company named “Trip Maker Tours & Travel”, bearing either dates after April 1, 2009 or being undated. The only piece of evidence with an earlier date is an income tax card, which, however, does not reflect any trading with third parties as implied in “a bona fide offering of goods or services” under the Policy.
- The Respondent did not provide any other evidence that it used the disputed domain name or a name corresponding to such name or that it made demonstrable preparations for such use in connection with a bona fide offering of goods or services before notice of dispute in the last decade of February 2009.
Therefore, the Respondent has no rights or legitimate interests under paragraph 4(c)(i) of the Policy.
Furthermore, the Respondent did not provide any evidence that it has been commonly known by the domain name, nor did it claim that it is making a legitimate non-commercial or fair use of the disputed domain name.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain name under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or 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 its 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 its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: The Complainant must show that the domain name was registered and is being used in bad faith.
Evidence of bad faith registration and use is shown when registration of a domain name occurs in order to utilize another's well-known trademark by attracting Internet users to a website for commercial gain (cf. America Online, Inc. v. Tencent Communications Corp., NAF Case No. FA 93668; Lilly ICOS LLC v. John Hopking / Neo net Ltd.,WIPO Case No. D2005-0694; Lilly ICOS LLC v. East Coast Webs, Sean Lowery,WIPO Case No. D2004-1101).
The Complainant is well-known internationally and has been carrying on business activities under the name “Tripmaker” for many years. Given the high presence of the Complainant's services on the Internet, it is inconceivable that the Respondent, which is also planning to provide its services over the Internet, registered the disputed domain name without knowledge of the Complainant's rights in the TRIPMAKER Mark. The Panel is therefore satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant's mark and therefore in bad faith under paragraph 4(a)(iii) of the Policy.
As to bad faith use, by fully incorporating the TRIPMAKER Mark into the disputed domain name and by using the website at such domain name as a parking website, providing links to third parties' websites, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainant's website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (cf. L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc.,WIPO Case No. D2005-0623, with further references). The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.
The fact that the Respondent's privacy service was named as respondent in previous UDRP proceedings does not lead to a finding of bad faith under paragraph 4(b)(ii) of the Policy as the fact that different respondents have been using the same privacy service does not imply that the Respondent in this proceeding has engaged in a pattern of registering third parties' trademarks as domain names.
Still, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has satisfied the requirements of paragraphs 4(a)(iii) and 4(b)(iv) 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 to the Complainant.
Brigitte Joppich
Sole Panelist
Dated: May 18, 2009
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