The Complainant is Late Rooms Ltd of Manchester, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by 1919 Polo Patent, S.L, Spain.
The Respondent is Euro Agencies of Dublin, Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2013. On March 1, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 1, 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 March 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2013.
The Center appointed John Katz QC as the sole panelist in this matter on April 11, 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. 4. Factual Background
The Complainant owns and operates a website at “”. That website is a hotel reservations website providing discounted accommodation through the world including the UK and Europe. The hotels which are covered by the website are both independent and group or chain hotels and accommodation may be booked via the website from up to a year in advance to just a few minutes before check in. The total number of hotels covered by the website service exceeds 55,000. Daily visits to the website average to 231,758.
The website dates back to 1999. In 2000 it moved to largely an online platform. In 2006 the company operating the website was purchased by a public company and in September 2007 it merged with a very large public company TUI to form part of the TUI Travel Group. The Complainant has associated entities and . Although the bulk of the hotel accommodation bookable via the Complainant’s website or websites are in the UK and Europe, there are almost 9,000 hotels or accommodations in Asia and bookable via one or other of the Complainant’s different websites.
The Complainant has offices in UK, Italy, Spain and Australia. The website may be accessed and used in 5 languages. The website has over half a million guest reviews on the website commenting on the booked accommodation and the visitors’ experiences. The accommodation available at the present time includes B& B’s, budget hotels, spa hotels, luxury hotels, riads, paradors and agriturismos.
Given the large number of hotel rooms available for booking, particularly not in any way limited to last minute unbooked or overflow accommodation, the site provides a useful avenue for travelers to book accommodation at an often much reduced rate. It is one of a number of sites worldwide that provide such services.
The Complainant owns a number of registered trade marks throughout the world including in the UK and EU. These registrations are for LATEROOMS, LATEROOMS.COM amongst others. The Complainant also contends that it has rights to the common law trade mark LATEROOMS.
The Respondent established its website via the disputed domain name in December 2011 and is it currently registered through to December 2013. The disputed domain name directs visitors to the website “www.” that lists four different tour operators to which click through links are available. These other sites are apparently offering a service very similar to that of the Complainant. Some of the services are for last minute deals whilst others appear to be generic travel industry services such as airline flights. The Respondent’s website however also sponsors links to third party websites which are in competition with the Complainant, one of the best known of which is .
The Complainant took issue with the Respondent over the disputed domain name and wrote a letter before action on October 19, 2012. On November 2, 2012 the Complainant received a reply which said:
“We are in receipt of your letter dated the 19th October 2012 regarding the above.
We were surprised that there was any difficulty so to allay your fears and ours and to avoid any confusion we have implemented without prejudice some changes and more will take place next week.
This will bring the matter to an end”.
Although the reply suggested changes were being made and more were to be made, the Complainant took issue still with the continued use of the website associated with the disputed domain name . Consequent upon this issue remaining unresolved the Complainant commenced the present proceeding. 5. Parties’ Contentions A. Complainant
The Complainant contends that as the registered proprietor of trade marks LATEROOMS and LATE ROOMS.COM in a number of countries and as the owner of goodwill in the common law trade marks it has rights to any domain name which reproduces or incorporates totally or in a confusingly similar manner its trade mark LATEROOMS.COM, whether with a space between the first two words or not. The addition of the country descriptor “Ireland” would do no more than suggest the domain name and associated website are specific to last minute or late booked hotel accommodation in Ireland. Moreover, Ireland is one country in which the Complainant offers accommodation booking facilities via its domain name and website. Thus visitors to the Respondent’s website would assume it is a website associated with the Complainant, contrary to the fact.
The Complainant further contends that the addition of the geographical and descriptive word “Ireland” cannot distinguish the Respondent’s website from that of the Complainant, nor avoid confusing similarity.
The Complainant then addresses the other two subparagraphs under paragraph 4 of the Policy. It says the Respondent has no affiliation or association with the Complainant, no consent from the Complainant to use a similar mark and that there is no legitimate or bona fide commercial or fair use involved to which the Respondent can point in justification of its registration of the disputed domain name.
The Complainant notes the willingness of the Respondent to delete any mention on its website of LATEROOMSIRELAND but that the URL for the disputed domain name remains.
The Complainant then contends that the Respondent must have known of the Complainant’s domain name and website in December 2011 when the Respondent registered the disputed domain name and that, trade mark registrations aside, search engine searches for LATEROOMS.COM provide links to the Complainant, with which links the Respondent would have been aware.
The Complainant then says that the Respondent offers accommodation booking facilities for accommodation in Ireland, where the Complainant also offers a similar service, and this provides evidence of bad faith use. Further, the click on links on the Respondent’s website allowing visitors to pass through to third party websites some of which are in competition with the Complainant, are further examples of bad faith use. Thus the Respondent is intentionally seeking to attract for commercial gain visitors to its website, thus constituting use in bad faith. B. Respondent
Although the Respondent has defaulted, it did reply to the letter before action. That reply is set out above. Beyond expressing surprise at the concerns of the Complainant and offering some changes to the website, the Respondent did not change the disputed domain name nor did it dispute the merits of the Complainant’s contentions. 6. Discussion and Findings
The Policy is directed towards resolving disputes concerning allegations of abuse of domain name registrations.
As part of the process, a complainant must provide evidence and submissions in support of its complaint. The expectation is that the complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The respondent is given full opportunity to respond. In this instance, the Respondent has defaulted.
Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:
(i) The respondent’s 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 respondent’s domain name has been registered and is being used in bad faith.
Each of three elements must be established by a complainant to warrant relief. A. Identical or Confusingly Similar
As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trade marks in which the Complainant has rights.
The Complainant must establish that it has such rights either to common law or registered trade marks or service marks. The Complainant can also rely upon its common law goodwill generated by virtue of its trading activities.
The issues under this head are easy to resolve. Whilst on a mark for mark or sign for sign comparative basis, as used, there is direct replication, the Respondent’s registration of the disputed domain name with the addition of the geographic, generic or descriptive word “Ireland” indeed adds nothing by way of distinction. It merely serves to suggest that the associated website is more likely than not to be a subset of the Complainant’s website. The disputed domain name therefore uses or contains a word or sign confusingly similar to a trade mark in which the Complainant has rights where that trade mark be registered or subsists at common law.
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is made out. B. Rights or Legitimate Interests
As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, this Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights and legitimate interests. The Respondent does not put forward any business or trading operation known as or by reference to the trade mark in suit thereby justifying a proprietory right to the mark.
Under paragraph 4(a)(ii) a respondent can justify its registration of a domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate noncommercial or fair use.
Even though the Respondent has defaulted, it is not sufficient simply to assume from that that the Respondent has no rights or legitimate interests or can claim none.
The use of a relatively descriptive phrase to advertise and promote a website that offers a service of late or last minute accommodation booking facilities (even if in fact the services are available for full 12 months) can create difficulties. In this Panel’s view, others wanting to use an equally descriptive phrase that perfectly captures and describes the nature of the business or service offered are entitled to do so. There is and can be no monopoly in an eloquently descriptive phrase unless the person claiming such a right can establish that the phrase has become distinctive of its own business activities.
That said, in this Panel’s opinion, the Complainant’s trade mark is not fully descriptive of its services. It is LATEROOMS not “LAST MINUTE ROOMS”. The word “late” might do no more than suggest a very late and urgent need to find accommodation via a website that consolidates available accommodation in a particular location and still available at the last minute. It does not of itself describe discounted accommodation which is available for a full period of 12 months. The country designator “Ireland” does no more than specify which country is likely to be sampled in the available accommodation to be displayed on the website.
In any event, it is clear from the very substantial amount of business generated by the Complainant, the number of hotels and related business available via its website, and the number of average daily hits, that the Complainant clearly has established that its trade mark and its domain name are indeed distinctive of its activities.
The Respondent does not suggest it operates a website via the disputed domain name that offers a service or solely a service for last minute accommodation available for booking in Ireland. Contrary to the fact, it appears to offer links to other websites including ones directly in competition with the Complainant. Whether these links are pay per click or in some way are revenue generating for the Respondent is unclear, but in the absence of any evidence from the Respondent it may be assumed that there is some commercial gain to the Respondent by its use of the confusingly similar mark in its domain name registration.
It is therefore difficult to see what rights or legitimate interests the Respondent may have.
There being no direct response from the Respondent (other than its reply to the letter before action), the Complainant more than satisfies its obligations of proof under this head.
The Panel accordingly finds that paragraph 4(a)(ii) of the Policy is made out. C. Registered and Used in Bad Faith
As to the third ground, this requires that the disputed domain name be registered and is being used in bad faith. As has previously been said in other UDRP decisions together with earlier decisions of this Panel, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.
The Complainant has clearly established a significant business in the offering of accommodation in Ireland and elsewhere via its own domain name and website. It has its own domain name registration and registered trade marks. Through its very extensive trading it clearly also has common law rights in its mark or sign.
As at the date of registration of the disputed domain name, December 2011, it is inherently improbable that the Respondent was not well aware of the Complainant’s activities, domain name and website. In its reply to the letter before action the Respondent does not deny these matters.
Given the links to other websites, including competitors of the Complainant, the likelihood is that the Respondent registered the disputed domain name in bad faith.
But the Complainant must also establish use in bad faith. The Respondent’s website is not static. It is not used for parking the disputed domain name. The website is active and enables a pass through to other active websites. It is therefore in use. Having regard to the findings under the first limb above and noting that links to third party websites which are in competition with the Complainant are on the website at the disputed domain name, seeking to attract Internet users for commercial gain, it must follow that there is use in bad faith.
The Panel accordingly finds that paragraph 4(a)(iii) of the Policy is made out. 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.
John Katz QC
Sole Panelist
Date: April 25, 2013
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