The Complainant is Eurail Group GIE of Netherlands, represented by HOWREY LLP of Netherlands.
The Respondent is Hazim Onur Mat of Turkey 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with GoD, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2010. On July 29, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 29, 2010, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2010. The Response was filed with the Center on August 21, 2010.
The Center appointed Tony Willoughby as the sole panelist in this matter on August 26, 2010. 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 and its associated and predecessor companies have been major players in the European transportation field for over 50 years.
The Complainant is particularly well-known for its Interrail pass, a travel pass enabling holders to make use of one or more of the railway systems operated by the Complainant’s 30 member railway companies. The Interrail pass was introduced in 1972.
The Complainant is the proprietor of several trade mark registrations of or incorporating the “Interrail” name (variously represented as “INTERRAIL”and “InterRail” and in logo format), the earliest of which is Benelux registration no. 0812875 dated November 27, 2006. The earliest registration cited in the Complaint is a Swiss registration dating back to 1995, but it is held in the name of one of the Complainant’s member companies, the Swiss federal railway company.
The Complainant has produced evidence to demonstrate the substantial volumes of sales made by the Complainant and its associates under and by reference to the “Interrail” name since 1972 and rising to a peak in 1991 with over 400,000 people travelling with Interrail passes1. The Interrail pass continues to be purchased in very substantial numbers. On the evidence before him the Panel is satisfied that the Complainant and/or its predecessors will have established unregistered trade mark rights in respect of the “Interrail” name very shortly after introduction of the Interrail pass and certainly well before 1998.
The Domain Name was registered on October 2, 1998.
On July 1, 2010 the Complainant’s representative wrote to the Respondent drawing the latter’s attention to the Complainant’s rights, complaining about the Respondent’s unauthorized use of the Domain Name to connect to a Google parking page and seeking transfer of the Domain Name.
The Respondent replied by email the same day explaining that the use being made of the Domain Name was only a temporary use and would be replaced by a “worldwide community site for train enthusiasts, not limited to Europe, or Eurail/Interrail”. The email acknowledged that the Domain Name could be causing confusion but claimed that that was not the Respondent’s intention. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to its INTERRAIL trade mark in which it has both registered and unregistered rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith within the meaning of either paragraph 4(b)(i) of the Policy or paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent denies the Complainant’s allegations and points out that the Complainant’s earliest trade mark registration post-dates the Respondent’s registration of the Domain Name by about 8 years.
He states that he is the owner of a respected Internet technologies company with a respected Turkish and international clientele. He states that one of his company’s projects is a travelers’ community site connected to the domain name, , “gezgin” meaning “traveler” in Turkish. He picked the Domain Name as being suitable for an international version of the site. For commercial reasons the site has not progressed and is still “work in progress”. Pending development of the site the Domain Name has been connected to a Google domain parking page. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith. B. Identical or Confusingly Similar
The Domain Name comprises (a) the Complainant’s INTERRAIL trade mark in which the Complainant has both registered and unregistered trade mark rights (see paragraph 4 above), and (b) the generic “.org” domain suffix.
It being permissible to ignore the generic domain suffix for the purpose of assessing identity and confusing similarity under this head of the Policy, the Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
The Complainant contends that the Respondent registered the Domain Name with knowledge of the Complainant’s trade mark rights and with the intention of exploiting those rights commercially to his own advantage either with a view to selling the Domain Name to the Complainant at a profit or to monetizing the Domain Name by way of pay-per-click revenue.
The evidence put in by the Complainant purporting to show that the Domain Name was up for sale stems from a DomainTools search. The Respondent denies that the Domain Name is up for sale and asserts that the DomainTools webpage in question has nothing to do with him. The Panel accepts that denial.
However, it is the case that the Domain Name was registered in 1998 when the “INTERRAIL” brand was well-established. Moreover, the registrant, the Respondent, claims at that time to have been engaged in a Turkish travel website project (see paragraph 5B above). He is therefore likely to have been aware of the Complainant’s brand at that time and he is also likely to have been aware of the potential for confusion. Indeed, in his email of July 1, 2010 he acknowledges that confusion may have occurred. Since registration the only use that the Respondent has made of the Domain Name has been to connect it to a Google pay-per-click parking page. At the time of the Complaint one of the most prominent links was to the Complainant’s website.
It seems reasonable to the Panel to suppose that the Respondent’s reason for registering the Domain Name was to use it commercially for the use that he has made of it since registration of the Domain Name in 1998, none of which gives him rights or legitimate interests in respect of the Domain Name in particular where such use trades on the trademark value of the name to the Complainant.
However, the Respondent contends that the use that he has made of the Domain Name has been a purely temporary use pending development of his international travelers’ community website. He contends that his plans for his travelers’ community website (pending for 12 years) give him a legitimate interest in respect of the Domain Name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of what shall constitute rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy. The only potentially applicable example is that set out in paragraph 4(c)(i), which reads:
“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;”
The use giving rise to the Respondent’s claim to a legitimate interest in respect of the Domain Name is not his use to connect it to the parking page, but his planned use of it for a travelers’ community website. However, he has produced no evidence at all to demonstrate his “preparations to use” the Domain Name for that purpose. It is a bare assertion. In any event, to select a well-known travel brand for a domain name to connect to an unrelated travel website is calculated to cause confusion and cannot be said to be “a bona fide offering of goods or services” for this purpose.
None of the examples of what shall constitute rights and legitimate interests for the purpose of paragraph 4(a)(ii) of the Policy as set out in paragraph 4(c) of the Policy is applicable. Nor is the Panel aware of any other reason why the Respondent could reasonably be said to have rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
The Respondent claims to have been involved with an online travel project when he registered the Domain Name. It seems to the Panel inconceivable that he was unaware of the Complainant’s brand at that time. It is noteworthy that he has not denied knowledge of the “Interrail Pass” when he registered the Domain Name. The Respondent draws attention to the fact that the earliest trade mark registration in the name of the Complainant post dates by several years his registration of the Domain Name. However, as indicated he cannot have been unaware and has not denied that the Complainant’s brand was by then very well-known.
On the evidence before him the Panel finds that the Respondent registered the Domain Name, knowing of the fame of the Complainant’s brand and with the intention of exploiting it commercially as he has been doing, namely by connecting the Domain Name to a Google pay-per-click parking page.
It seems to the Panel inevitable that a significant proportion of Internet users seeing the Domain Name will visit the site to which it is connected believing it to be a site of or associated with the Complainant. In other words, they will have been attracted to the site by a misrepresentation. When they arrive at the site most will no doubt appreciate that it is not a site of the Complainant, but the fact that a link to the Complainant’s website was prominently featured there, might have led some to believe that the site had the approval of the Complainant. Either way, the Respondent will have obtained for himself a commercial opportunity. The visitor to the site may well be attracted to one of the other links on the website thereby earning for the Respondent pay-per-click revenue. In the view of the Panel that is likely to have been the Respondent’s hope and expectation when he registered the Domain Name.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy which reads:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.” 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.
Tony Willoughby
Sole Panelist
Dated: September 7, 2010
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