The Complainant is Cox & Kings Ltd. of Mumbai, India, represented by W.S. Kane & Co/Law & Prudence, India.
The Respondent is Mr. Manoj of New Delhi, India. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2011. On February 22, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. a request for registrar verification in connection with the disputed domain name. On February 23, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR., transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 28, 2011.
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 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2011.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on March 28, 2011. 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 is in the business of travel and uses the trademark COX & KINGS for its services. The Complainant owns the Indian registered trademarks:
Trademark Application / Registration Number Date of Application Class Journal Number
COX & KINGS
662224
April 17, 2005
16
1297( S-II)
COX & KINGS
1242455
October 10, 2003
39
1326(S-I)
COX & KINGS (Label)
1649447
February 4, 2008
16, 18, 25,28,39
1402
The Complainant’s pending trademark applications (India) are:
Trademark Application / Registration Number Date of Application Class / Classes Journal Number
COX & KINGS (Label)
1907527
January 11, 2010
16, 18,25,28,39
1451
COX & KINGS (Label)
1907528
January 11, 2010
16,18,25,28,39
-
COX & KINGS (Label)
1907529
January 11, 2010
16, 18, 25,28,39
-
COX & KINGS (Label)
1907530
January 11, 2010
16, 18, 25,28,39
1452
The Complainant’s International trademark applications are:
Trademark Registration No. Country Class / Classes Registration Date
COX & KINGS
25239
Community Trademark
36,39,42
April 1, 1996
COX & KINGS
2150337
U.S.A
36,39,42
April 14, 1998
COX & KINGS
643932
New Zealand
36
August 21 2008
COX & KINGS
643933
New Zealand
39
August 21, 2001
COX & KINGS
693934
New Zealand
42
August 21, 2001
COX & KINGS
1554683
Britain and Northern Ireland
39
November 24, 1993
COX & KINGS
1574363
Britain and Northern Ireland
42
June 7, 1994
COX & KINGS
1580573
Britain and Northern Ireland
36
June 29,1994
COX & KINGS
885358
Australia
36,39,42
August 9 2001
The Respondent registered the disputed domain name on August 26, 2009. 5. Parties’ Contentions A. Complainant
The Complainant states it is the oldest established travel company of the world, founded in 1758, about two hundred and fifty two year ago. It was appointed as agent for most of the British regiments posted overseas. Presently the Complainant employs over eight hundred trained persons and alleges it is a premium brand in travel related services. The Complainant’s Indian headquarters is in Mumbai and it has twelve fully owned offices in key cities of India with associate offices in other countries.
One Cox & Kings (Agents) Ltd., a British company with its registered office in London is the predecessor in business of the Complainant. The Indian branch of the said business was wholly taken over by the Complainant. The Complainant offers a host of travel services such as destination management, leisure travel, MICE, NRI Holidays and trade fairs. In currency exchange, the Reserve Bank of India has given the Complainant a Category II license, the status of an authorized dealer. The Complainant states it represents and retails many international travel products including Cosmos, Rail Europe, Star Cruise, and Escorted tours to USA. The Complainant claims it is a market leader in business destination management and international conferences, meetings, domestic conferences and ground related services to international cruise companies. “Conde Nast Traveller” has rated the Complainant as the top five premium tour operators and the Complainant has won several awards and accolades for its services.
The Complainant states it was initially incorporated in June 7, 1939 as “ The Eastern Carrying Company Limited” and on February 23, 1950 changed its name to Cox and Kings (India) Pvt. Ltd. The Complainant states that its trademark COX & KINGS is popular and well known due to its reputation and goodwill. The mark is widely advertised and the Complainant has filed selected advertisements published in newspapers featuring its trademark. The Complainant states it uses the domain names and and has launched the respective websites on September 26, 1996 and on February 16, 2005. The Complainant states that it also owns the domain name and that its popular websites contribute to the success of its online business.
The Complainant states it came to know of the Respondent’s domain name in December 2010 and sent a legal notice to the Registrar on December 10, 2010. The Complainant contends that the Respondent registered the disputed domain name to free ride on the reputation and goodwill associated with the Complainant’s trademark. The public associates the mark with the Complainant‘s services; furthermore the disputed domain name was registered much later than the creation of the Complainant’s websites.
The Complainant argues that the disputed domain name is deceptively similar to its mark and its websites and the Respondent has no rights or legitimate interests in the disputed domain name. The word “tours” with its trademark is likely to deceive the public and divert customers to the Respondent’s website. The Complainant argues that a domain name that intentionally trades on the fame of another does not constitute bona fide use. Given the long and extensive use of the Complainant’s mark the Respondent ought to have known of the Complainant’s mark when he registered the disputed domain name.
The Complainant states the Respondent stands to gain every time a potential customer is diverted to the Respondent’s site or from there to other third party sites and refers to the Bombay High Court ruling in Rediff Communication Ltd. v. Cyberbooth & Another, (April 23, 1999) regarding passing-off action in domain names and the Indian Supreme Court ruling in Satyam Infoway Ltd. v. Sifynet Solutions (May 6, 2004) regarding diversion of users by deceptively similar domain names. The Complainant states the domain name was transferred in its favor through a settlement with the Registrar in November 2007. Finally, the Complainant argues that the Respondent’s use of the disputed domain name is likely to result in dilution and tarnishing of its mark and requests for transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To obtain the remedy of transfer of the disputed domain name, the Policy states that the Complainant has to establish three elements under paragraph 4(a).
(i) The disputed domain name is identical or confusingly similar to a 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 was registered and is being used in bad faith by the Respondent. A. Identical or Confusingly Similar
The first element under paragraph 4(a) of the Policy requires the Complainant to prove that the disputed domain name is identical or confusingly similar to a mark in which it has rights.
The Complainant has provided material in these proceedings to establish its right in the trademark COX & KINGS. The material filed by the Complainant includes among others, details of the Complainant’s Indian and International trademark registrations and details of its pending Indian trademark applications. The Complainant has also furnished advertisements and media coverage for its trademark in newspapers that establishes its long and continuous use of the COX & KINGS mark. The Panel finds the Complainant has clearly demonstrated its registered rights in the trademark COX & KINGS in multiple classes and that it has used the mark extensively in commerce.
The disputed domain name consists of the trademark and the generic term “tours”. Generic terms used in conjunction with the trademark does not decrease the confusing similarity with the trademark and in some instances are found to heighten the confusing similarity, particularly if the generic word is connected with the business of the complainant. Confusing similarity can be found where an average consumer would expect the complainant to use a term in connection with the mark for identifying their goods or services. See for instance Bell South Intellectual Property Corporation v. Muder, Inc.,WIPO Case No. D2003-0431, where the domain names and were found to be confusingly similar to the complainant’s trademark BELLSOUTH, as an average consumer would perceive or expect the complainant to use the terms “security “ and “security systems” with the trademark to identify the goods and services offered by the complainant.
Similarly in the present case, there is merit in the Complainant’s argument that the word “tours” when used with the trademark COX & KINGS is deceptively similar to the mark, particularly for users trying to locate the Complainant online and who are aware of the Complainant’s reputation as tour operators. The Complainant in the present case has established that the word “tours” is a term that is associated with the Complainant’s travel business. Further, the Panel notes that “Conde Nast Traveller” has placed the Complainant among the top five premium tour operators in its rating. Based on these undisputed submissions by the Complainant, the Panel finds the Complainant is a widely known tour operator that is recognized for its premium tours. Therefore the use of the word “tours” with the trademark COX & KINGS undoubtedly renders the disputed domain name confusingly similar to the Complainant’s mark.
The Panel notes that the trademark COX & KINGS has the ampersand symbol, whereas the disputed domain name uses the word “and” in place of the ampersand symbol. Use of the word “and” in place of the ampersand symbol does not affect confusing similarity, as the word “and” is a mere substitution for the ampersand symbol. See Villeroy & Boch AG v. Whois Data Shield/Hong Kong Names LLC,WIPO Case No. D2008-1300, where the ampersand symbol was replaced with the word “and” in the domain name , but did not affect the finding of confusingly similar to the trademark VILLEROY & BOCH.
The Panel also notes that the disputed domain name uses the word “king” (without “s”), whereas the trademark uses the word “kings” (in plural). The omission of the letter “s” in the disputed domain name does not affect a finding of confusing similarity.
For the reasons discussed, the disputed domain name is found confusingly similar to the trademark COX & KINGS in which the Complainant has proven rights. The Panel finds the Complainant has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. The unchallenged submissions of the Complainant are that the Respondent has not been authorized or licensed to use its trademark and therefore the Respondent has no rights and legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances by which the Respondent can demonstrate rights or legitimate interests in the disputed domain name:
(i) The Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services;
(ii) The Respondent has been commonly known by the disputed domain name;
(iii) The Respondent is making legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or tarnish the trademark of the Complainant.
The Respondent has not responded in these proceedings and has not provided any material to show rights in the disputed domain name. The material on record does not show that the Respondent has been commonly known by the disputed domain name or that the Respondent is making any legitimate noncommercial fair use of the disputed domain name. The Panel finds the facts and circumstances in the present case shows the Respondent has not used the disputed domain name for a bona fide offering of goods or services.
In the Panel’s view, the material in the present case show that the Respondent uses the Complainant’s mark in the disputed domain name to mislead the public and Internet users to believe that the disputed domain name refers to the Complainant’s business. A domain name that gives a false impression to users and misleads Internet users does not confer rights or legitimate interests. This view has been upheld in several prior UDRP decisions, See for instance, Zurich American Insurance Company v. Administrator, Domain,WIPO Case No. D2007-0481 (Use of a confusingly similar or identical domain name to divert Internet users to competitor sites per se is not use that can be termed a bona fide offering of goods and services).
The Respondent is not connected with the Complainant or its business, yet uses the disputed domain name with the Complainant’s trademark to mislead unsuspecting users. In the absence of any submissions from the Respondent and based on the material on record, the Panel finds the Respondent lacks rights or legitimate interests in the disputed domain name.
For the reasons discussed the Panel is satisfied that the Complainant has established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The third element under paragraph 4(a) of the Policy requires the Complainant to prove that the disputed domain name has been registered and used in bad faith.
The Complainant’s trademark is undoubtedly well known for travel related services and it is unlikely that the Respondent did not know of the Complainant’s prior rights in the mark when he registered the disputed domain name. The most persuasive evidence of the Respondent’s knowledge of the Complainant’s mark and of his targeting the Complainant’s trademark is the use of the word “tours” in the disputed domain name. The disputed domain name is not a mere coincidence but shows deliberate use of a well recognized mark with a generic term that is likely to attract unsuspecting users. Registration of a domain name, based on awareness of a complainant’s trademark rights, under certain circumstances, is recognized as bad faith registration under the Policy. See Janet E Sidewater v. Worldwide Media Inc.,WIPO Case No. D2006-1281.
The facts and circumstances in the present dispute therefore indicate that the Respondent registered the disputed domain name knowing of the trademark COX & KINGS and the significance of the term “tours” for the Complainant’s business. It can be inferred that the Respondent has intentionally attempted to attract, for commercial gain Internet users to his website by creating a like hood of confusion with the Complainant’s mark as to the endorsement of his website and services on his website.
The Panel finds there is no reasonable explanation for such registration and use of the disputed domain name except that the Respondent seeks to exploit the reputation and goodwill associated with the Complainant’s mark to attract Internet traffic to the Respondent’s website and to mislead customers to believe that the Complainant is in some way associated with the Respondent’s website. The Respondent has therefore intentionally registered the disputed domain name for the purpose of attracting Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, and affiliation of the website which is recognized as bad faith registration and use under paragraph 4(b)(iv) of the Policy. See Micro Electronics, Inc. v. J. Lee,WIPO Case No. D2005-0170, (Bad faith registration and use of the domain name was found where the respondent used the domain name to attract Internet users unwittingly to his site for commercial gain, in the hope that Internet users would be confused into thinking that the site of the disputed domain name is linked to the legitimate business of the complainant).
Further, the Complainant’s allegations that the disputed domain name is used to attract users to other websites and competitors of the Complainant is evident from the links and advertisements displayed of Respondent’s website. It can be inferred from the facts and circumstances discussed here, that the Respondent’s intention in registering the disputed domain name appears to be motivated by diverting potential customers of the Complainant who seek the Complainant’s services online and redirect them to other travel related sites. Such use of the disputed domain name is recognized as bad faith use. See DaimlerChrysler Corporation, DaimlerChrysler Services North America LLC v. LaPorte Holdings, Inc.WIPO Case No. D2005-0143 (Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant’s mark and redirecting the users to the complainant’s competitors is evidence of bad faith registration and use under the Policy, paragraph 4(b)(iv).)
For the reasons discussed, the Panel finds that the Complainant has successfully established the disputed domain name was registered in bad faith and is being used in bad faith. 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 disputed domain name be transferred to the Complainant.
Harini Narayanswamy
Sole Panelist
Dated: April 11, 2011
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