The Complainant is Globus-Gateway Ltd., Inc. of Panama City, Panama, represented by Melbourne IT CBS Ltd., United States of America.
The Respondent is BP / Antoinette Clair of Afghanistan. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on January 11, 2013. On January 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 11, 2013, 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 January 18, 2013. 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 January 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2013. From January 18, 2013 through to February 8, 2013, the Center received a series of email communications from the Respondent in reply to the Complainant’s contentions (the text of which is reproduced under Section 5.B. below). On February 5, 2013, the Center received email communications from the Complainant in reply to the Respondent’s email communications. On January 23, January 25, February 6 and February 12, 2013, the Center acknowledged receipt of all the Respondent’s and the Complainant’s email communications and reminded the parties that the Response due date was February 7, 2013. No further communications were filed with the Center. The Respondent did not submit any formal response. Accordingly, the Center notified the commencement of panel appointment process to the parties on February 8, 2013.
The Center appointed Hub J. Harmeling as the sole panelist in this matter on February 28, 2013. 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.
On March 23, 2013, the Panel instructed the Center to issue a Procedural Order in which the Respondent was invited to submit further documents. The Respondent has provided additional documents containing more detailed information about its alleged business. The Complainant was given the opportunity to respond to these new submissions and it did so. 4. Factual Background Parties
The Complainant is active in the travel business and is a worldwide tour operator.
The Respondent is BP / Antoinette Clair. The Domain Name
The Respondent is the holder of the Domain Name , which was registered on February 18, 2011. Trademarks
The Complainant owns the principal trademark GLOBUS at the United States Patent and Trademark Office, with the registration number of 0684217 since August 1959 with its first use in commerce on October 1957 for travel service. 5. Parties’ Contentions A. Complainant
The Complainant brings forward that it is the sole owner of the trademark GLOBUS. The Domain Name consists of a combination of this trademark, GLOBUS, and a generic term which describes the services offered the Complainant (“cruises”). Complainant argues that the GLOBUS trademark is well-known. The Domain Name is confusingly similar to the trademark.
According to the Complainant, the Respondent has no rights or legitimate interests in the Domain Name since the Respondent is not using the Domain Name in connection with a bona fide offering of goods and services since the Respondent is not using the Domain Name. The website is showing a blank site.
Furthermore, the Complainant argues that the Respondent registered the Domain Name in bad faith, since the Respondent must have been aware of the GLOBUS business and registered trademarks. Also, the contact information in the WhoIs-database is clearly false, with the intention of disguising the true information about the owner of the Domain Name. B. Respondent
The Respondent did not submit a formal Response. However, the various emails of 18, 22, 23, 24 January 2013 and 5, 8 February 2013 sent by the Respondent will be taken into consideration as reflecting the point of view of the Respondent.
The Respondent argues that it cannot understand that a commonly used word as “Globus” can be registered as a trademark. The Respondent chose to use the Domain Name because it is a common word in the travel industry. The Respondent furthermore states it has good intentions and wanted to create its own business. The Respondent has not disputed that GLOBUS is a well known trademark. 6. Discussion and Findings General Requirements A. Identical or Confusingly Similar
According to established case law, the top-level generic domain “.com” must be disregarded for the purpose of assessing whether the Domain Name is identical or confusingly similar to Complainant’s trademark.
The Complainant argues that the Domain Name is confusingly similar to its trademark. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of confusion of Internet users. In order to satisfy this test, the trademark needs to be recognizable as such within the domain name, with the addition of common, dictionary and/or descriptive terms, which are generally regarded as insufficient to prevent Internet user confusion.
The Domain Name is a combination of Complainant’s registered trademark (“globus”) and a generic word (“cruises”), which describes one of the Complainant’s main services. The fact that the Domain Name wholly incorporates the Complainant's trademark is sufficient to establish confusing similarity, despite the addition of the word ‘cruise’ to such trademark. Here, the addition of a generic term does not serve to distinguish the Domain Name from the trademark, but, by contrast, may reinforce the association of the Complainant's trademark with the Domain Name. Therefore, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark GLOBUS.
The Respondent argues that it cannot understand why the widely used term “globus” can be trademarked. This is, however, not for the Panel to decide. Within the scope of these proceedings, the fact that GLOBUS is a valid trademark owned by Complainant is an established fact.
Therefore, the Panel finds that Complainant has complied with paragraph 4(a)(i) of the UDRP. B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the UDRP, the Complainant must demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. Case law under the UDRP shows that the Complainant has to make a prima facie showing that the Respondent has no rights or legitimate interest in the Domain Name.
The Complainant stated that the Respondent has no rights or legitimate interests in the Domain Name because the Respondent does not use the Domain Name in connection with any bona fide offering of goods of services.
The Respondent implicitly argued that it has rights or legitimate interests in the Domain Name. The Respondent brought forward that it had the intention to start an online travel agency. The Respondent supports this position by alleging it made considerable investments in the construction and development of a website, which would be made accessible via the Domain Name. In order to substantiate this statement, the Respondent submitted screenshots, text fragments and invoices relating to the development of this project.
In this Panel’s view, the Respondent’s argument is not convincing. The sole intention to launch a new online business on the Domain Name is insufficient to show that the Respondent has “rights or legitimate interests” under the UDRP as such. The material which the Respondent submitted does not prove that the Respondent has a genuine intention to develop an online business. The nature of the provided materials is general and with no clear relation to the registration or the use of the Domain Name, and therefore in the Panel’s assessment cannot serve as proof for the Respondent’s alleged business aspirations in relation to the Domain Name. The mere fact the Respondent may have invested time and money does not of itself ground a claim of “rights or legitimate interests” in the Domain Name as stipulated under the UDRP.
The Panel observes in this regard that the Respondent does not claim that it has any other rights or legitimate interests with respect to the Domain Name. In these circumstances, on the provided record before it, the Panel concludes that the Respondent lacks rights or legitimate interests with regard to the Domain Name under the UDRP.
Accordingly, the Panel finds that the Complainant has complied with paragraph 4(a)(ii) of the UDRP. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the UDRP, the Complainant must demonstrate that the Domain Name has been registered and is being used in bad faith.
The Panel finds that the Complainant has sufficiently demonstrated that the Domain Name was registered and is being used in bad faith. The Domain Name was registered by Respondent in February 2011. By that time, the Complainant had actively used the trademark GLOBUS for more than 50 years. Therefore, in this Panel’s view, the Respondent knew or can reasonably be assumed to have known about the existence of the Complainant, its business and its well-known trademark at the time of the registration of the Domain Name. By registering the Domain Name, the Respondent took advantage of the confusion between the Domain Name and the Complainant’s trademark rights. Other circumstances which the Panel finds indicative for the Respondent’s bad faith include the fact that the Respondent tried to conceal its identity by registering the Domain Name under a non-existent name (“BP”) and address (“Afghanistan, 1000, AF”).
Under these circumstances, the Panel finds that this use contributes to the qualification of registration and use in bad faith in the meaning of the UDRP.
The Respondent’s submissions in relation to the Complainant’s registration of the trademark are immaterial and do not require further discussion.
Consequently, the Panel finds that the Complainant has complied with paragraph 4(a)(iii) of the UDRP. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the UDRP and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Hub J. Harmeling
Sole Panelist
Date: April 24, 2013
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