WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION TUI AG v. Andrej Gajdar Case No. D2009-1371 1. The Parties
The Complainant is TUI AG of Hannover, Germany, represented internally.
The Respondent is Andrej Gajdar of Bratislava, The Slovak Republic. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2009. On October 15, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On October 15, 2009, GoD, 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” 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”).
On October 19, 2009, the Center received email communications from both the Complainant and the Respondent, which the Center acknowledged.
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 October 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 15, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 16, 2009.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on November 24, 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 Complainant has submitted evidence that it is the owner of the following trademark registrations:
TUI (device), United States (“US”) trademark registration no. 2975052 with registration date July 26, 2005.
TUI, US trademark registration no. 2928468 with registration date March 1, 2005.
TUI, Community trademark registration no. 003354081 with registration date March 3, 2005.
TUI, Community trademark registration no. 002349009 with registration date August 20, 2004.
TUI (device), International registration no. 781790 with registration date February 7, 2002.
TUI, International registration no. 780562 with registration date November 7, 2001.
TUI, International registration no. 867414 with registration date August 10, 2005.
The disputed domain name was registered by the Respondent on March 19, 2006. 5. Parties' Contentions A. Complainant
The Complainant, being a leading travel group in Europe, is a stock corporation incorporated under the laws of Germany. The Complainant consists of three divisions: the TUI Travel PLC division, the TUI Hotels & Resorts division and the cruise ship business. In 2008 the TUI Group had a turnover of EUR 18,628 billion in the tourism division and operated a total of 238 hotels with a capacity of 149,000 beds.
The Complainant argues that the trademark TUI is a well-known, if not famous, trademark that has been known for a long time. The Complainant has registered and applied for more than 350 trademarks for the mark TUI in most countries around the world, including the Slovak Republic, where the Respondent is domiciled.
The Complainant maintains that the disputed domain name is confusingly similar to its trademarks, in which the Complainant has exclusive rights. The disputed domain name incorporates the Complainant's trademark TUI in its entirety.
The Respondent is using the disputed domain name to divert Internet users to a website of a competitor of the Complainant in the travel sector. It is likely that Internet users who search for TUI may find the Respondent's website in addition to the Complainant's website. Not all international customers are familiar with the nature of the term “sucks” and such customers are likely to be confused by the disputed domain name. The addition of the term “sucks” in the disputed domain name does not affect a finding that the domain name is identical or confusingly similar to the Complainant's trademark for the purposes of the Policy.
The Respondent has no rights or legitimate interest in the disputed domain name. The Respondent's use is not a bona fide offering of goods and services. The Complainant has not licensed or otherwise permitted the Respondent to use the trademark TUI. Furthermore, the Respondent has not been commonly known by the disputed domain name and the Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
The Respondent is using the disputed domain name as an alleged complaint site. The right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner's registered trademark. The website to which the disputed domain name resolves does not aim at giving consumers information about the quality of potential holiday destinations, but rather at tarnishing the image of the Complainant and therefore cannot merit protection as a “free speech site”.
By displaying a link to a competitor's website that also offers holidays in Greece, the Respondent uses the disputed domain name to divert Internet users to a Slovakian website offering last minute travels. Thus, the Respondent is using the disputed domain name to capitalize on the Complainant's mark to optimize search engines and earn click-through revenues for redirecting Internet users to a competing website. Such use is not a bona fide use.
The Respondent registered and uses the disputed domain name to disrupt the Complainant's business by redirecting traffic to competing travel services. The Respondent collaborates with a competitor to the Complainant by using “alleged” criticism as a pretext to drive business from the Complainant to the Respondent.
In addition to the above, the Respondent has designed his website in a deceptive and confusing manner that creates a likelihood of confusion by displaying the Complainant's trademark using the special color-combination typical for the Complainant. B. Respondent
The Respondent did not formally reply to the Complainant's contentions. The Respondent did however send an email to the Center on October 19, 2009, in which the Respondent implied that the disputed domain name (which is currently being used to criticize the Complainant) was registered primarily because the Respondent had requested but not received an apology from the Complainant, presumably in relation to certain services provided by the Complainant in a manner that the Respondent for its part found wanting in some manner. In addition, the Respondent denied having registered the disputed domain name in bad faith. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of several trademark registrations for the mark TUI. All the trademark registrations predate the registration of the disputed domain name .
The disputed domain name incorporates the trademark TUI in its entirety. The domain name contains an addition of the word “sucks”. The ability for the addition “sucks” to distinguish the disputed domain name from the trademark of the Complainant is limited.
According to the majority view in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Paragraph 1.3, a domain name consisting of a trademark and a negative term will generally be found to be confusingly similar to the complainant's mark. There are a number of reasons why this may be so. In the present case, the disputed domain name wholly incorporates the Complainant's trademark as the principal element in combination with the dictionary term “sucks”. The prospect of an Internet user seeking the Complainant's services finding and accessing the website because it includes the Complainant's trademark is obvious. See further in this regard prior decisions including Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647 and Société Air France v. Mark Allaye-Chan,WIPO Case No. D2009-0327.
Having the above in mind, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark TUI and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that it has made 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 prior to the dispute; or
(b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or
(c) that it is 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.
The Complainant has not licensed or otherwise consented to the Respondent's use of the trademark TUI in connection with the disputed domain name which the Panel has found for the purposes of this case is confusingly similar to the trademark.
From the submitted evidence in this case, the Panel finds that it is established that the Respondent is using the disputed domain name for a website containing general criticism of the Complainant's business. The criticism appears to the Panel to be of an essentially noncommercial nature (in the sense that it appears to be from a disgruntled customer, rather than for example from a commercial competitor of the Complainant). The website to which the disputed domain name resolves displays a graphic reproduction of the Complainant's device mark with the addition of the word “sucks”. The design of the Respondent's website displays the same color-combination as the Complainant's website. Furthermore, the Panel has noted the Complainant's contentions that the Respondent's website contains a link to a commercial competitor of the Complainant (although as a matter of fact the Panel finds the evidence on this point to be less than conclusive).
In previous cases it has been held that in order to fully exercise free speech rights, it is not indispensable to use a domain name which is identical or confusingly similar to another's trademark. See for example The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, WIPO Case No. D2003-0166.
In the Respondent's email to the Center on October 19, 2009, the Respondent did not submit any evidence indicating that the Respondent made preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute, or that the Respondent is the owner of any trademark rights, or that the Respondent is commonly known by the disputed domain name. Furthermore, although being mindful that the disputed domain name does currently appear to be in use as a criticism site, the Respondent did not itself submit any evidence showing that the Respondent intends to make a legitimate, noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's trademark. The only real evidence before the Panel to indicate that Respondent may have rights or legitimate interests is the content displayed at the disputed domain name. The present textual content of that website is as follows:
“Hi everyone,
my name is Andrej and Im one of those people who were scammed by gulet touristik AUSTRIA, a part of TUI Reisen. If you plan to use any of them in the future, then read this.
All I wanted was a little vacation anywhere in Europe. All I asked for was internet connection in my room. I had to do some important business during this week. So they were looking for hotels all over Europe and found one in Greece. Normally a vacation over there costs about 300 EURO, but I was ready to pay for a 5 star hotel almost 1000 EURO/person just to be online. They told me many times, there is internet connection in the hotel and its a great hotel at all.
How big was the surprise after arrival, there was no internet in the hotel. Well, there were some adapters in the room, but not connected to anything. It seemed like they are only working on it. So I was going to the reception to complain. They told me to send an expert who will fix the problem. So was it day after day, I complained and was told only: Tomorrow, tomorrow for sure. It wasn't fixed, so I filled a complaint with the woman responsible for us from Gulet. By the way the food in the hotel sucked, it was not much to choose from and the pool was small as it would be for kids only. And yeah, we are talking about an expensive 5 star hotel here.
I lost several thousands during this trip and probably 5 years of my life due to the stress. So I asked the travel agency to pay me the money back. If I would sue them for all damages, it would be probably more than 10k EURO. But how was my surprise when my lawyer showed me the letter I got from them.
They told me, they won't give me anything back, because I used the manager's internet connection in his room? I mean what the hell? I didn't even meet him during the time and nobody offered me any real help at all. Those arrogant idiots at the travel agency just made this up and thought I will give up and won't bother them anymore. How wrong they were. I will not sue them, I will rather tell to everyone what kind of company they are and how they respect their customers.
You can reach me anytime at [ ]@
Anyone willing to support me, please forward this site to your friends. Don't let the companies laugh at us customers, lets do something against it.
Do you have bad experiences with either Tui or Gulet? Email me with your story and I will post it here.”
The Panel considers the merits of this case under the second element to be closely balanced. On the one hand, there is evident use of the domain name as a criticism site, and such use does not strike the panel as obviously pretextual. On the other hand, the Respondent has chosen a domain name that is confusingly similar to the complainant trademark for that purpose, and has not (in present proceedings at least) advanced a persuasive case for holding a present right or legitimate interest in the disputed domain name. However, it is not ultimately necessary for the Panel to reach a finding in regard to paragraph 4(a)(ii) of the Policy, as the Complaint fails for other reasons related to bad faith as discussed further below. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:
(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring a domain name registration to the owner of the trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided there is a pattern of such conduct; or
(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.
The Respondent's website, to which the disputed domain name resolves, contains commentary critical of the Complainant, as indicated under paragraph 6.B above, and a single hyperlink to what the Complainant says is a competing third party travel service.
There is no evidence before the Panel establishing that the disputed domain name was registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name. The Respondent has not directly or indirectly requested any financial remuneration in order to transfer the disputed domain name.
Secondly, it has not been argued or shown that the disputed domain name was registered by the Respondent in order to prevent the Complainant from reflecting the mark in a corresponding domain name.
Thirdly, although it has been established by the Complainant that the Respondent may have registered and used the disputed domain name in order to disrupt the Complainant's business by criticizing it, there is no evidence in the case establishing that the Respondent itself is a “competitor” of the Complainant and therefore the above mentioned behavior cannot fall under the provision of paragraph 4(b)(iii).
There is no persuasive evidence in the case before the Panel that the Respondent has used the disputed domain name with intent for commercial gain, in the sense stated in paragraph 4(b)(iv). Even if there was to be some form of indirect commercial gain to a party other than the Respondent, the Complainant has not submitted any evidence showing that there is any kind of commercial relationship between the Respondent and the allegedly competing travel service linked to. The submitted evidence merely indicates that the website, to which the disputed domain name resolves, in addition to content critical of the Complainant, contains a single hyperlink to what is said to be a third party travel service. The overall impression given by the website is that it is being used by the Respondent to criticize the Complainant. To the extent that there may be any commercial gain, on the present record it would appear to be incidental to the site's main purpose. It has not, for example, been shown by the Complainant that the disputed domain name is used by the Respondent to obtain click-through commissions from the diversion of Internet users. It may be that a court examining the case with the benefit of a more complete record and opportunity to cross-examine witnesses may reach a different conclusion, but on the record availble to the panel in the present case this does not appear to be a clear-cut case of abusive cybersquatting, and the Panel is not persuaded on balance that the Respondent registered and is using the domain name in order to profit itself from likely confusion with the Complainant's TUI mark. It seems more likely to the Panel on the present record that the Respondent registered and is using the domain name for the principle purpose of expressing its dissatifaction with the Complainant. Having the above in mind, the Panel does not find that the Complainant has met its burden of persuasion on the third element of the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Johan Sjöbeck
Sole Panelist
Dated: January 11, 2010
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