Complainant is trivago GmbH of Düsseldorf, Germany, represented by LEXEA Rechtsanwälte, Germany.
Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America ("US") / Alberto Lopez Fernandez, Alberto Lopez of Gijon, Asturias, Spain. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 10, 2014. On March 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 10, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 11, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 14, 2014.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint and the amended Complaint, and the proceedings commenced on March 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 9, 2014.
The Center appointed Roberto Bianchi as the sole panelist in this matter on April 17, 2014. 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
Complainant owns a registration for the International Trademark TRIVAGO, Reg. No. 910828, registered on August 18, 2006, protecting, inter alia, travel booking; storing of electronic stored data and documents; travel reservation and booking; reservation services (travel); organization of travel events and trips, in International Class 39.
Complainant also owns US service mark TRIVAGO, Reg. No. 4069216, Reg. Date December 13, 2011, filed on November 25, 2010, covering: travel booking agencies; physical storage of electronically-stored data and documents; making reservations and bookings for transportation; reservation and booking seats for travel; organisation of travel events and trips, in International Class 39, and various other services in International Classes 35, 38 and 42.
Complainant provides an online worldwide hotel price comparison service at the "" website and other websites.
The disputed domain name was created on March 29, 2013. 5. Parties' Contentions A. Complainant
In its amended Complaint, Complainant contends as follows:
The disputed domain name is identical to Complainant's trademark. The disputed domain name consists of the identical term "trivago". The generic Top-Level Domain (gTLD) suffix ".name" is to be disregarded under the confusing similarity test, as it is a technical requirement of registration.
Respondent has no rights or legitimate interests in respect of the disputed domain Name. Complainant is only required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
Complainant's prima facie case is based on the following evidence: The operator of the website makes use of an anonymization service. The website under the disputed domain name does not contain any information on the person owning or maintaining said website. The WhoIs data only point to Respondent. There is no evidence that Respondent owns any rights or legitimate interests in respect of the disputed domain name. First, Complainant is in no way affiliated with Respondent, and has not licensed or permitted Respondent to use its trademark in any fashion. Second, no trademark registration for the mark TRIVAGO in favor of Respondent can be retrieved from the trademark database in the US, where Respondent is located. The only trademark registration which can be retrieved is the trademark registration of Complainant. Third, the website under the disputed domain name contains no information on Respondent or any other website operator. This leads to the assumption that Respondent has not been commonly known by the disputed domain name. The true identity of the website operator remains unclear.
Furthermore, there is no evidence Respondent is making a bona fide or legitimate noncommercial or fair use of the disputed domain name. On the contrary the disputed domain name is used in a misleading way. The website itself contains information on Complainant and Complainant's offerings on the Internet. The website reports on Complainant's services and how to use the website. While doing so, the website makes use of a logo which is confusingly similar to the logo in use by Complainant. The name "trivago" is again identical to the name and trademark of Complainant. The colors in use are the same as the official logo of Complainant. Only the typeface differs from Complainant's logo.
It could be debated that the website under the disputed domain name is to be considered a fan or tribute site. The actual content on the website proves that this is not the case. Instead the disputed domain name is primarily a pretext for commercial advantage. First, the right to maintain a tribute or fan site does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant's trademark. That is especially the case if the respondent is using the trademark alone as the domain name as that may be understood by Internet users as impersonating the trademark owner. Where the domain name is identical to the trademark, UDRP panels have noted that such respondent action prevents the trademark holder from exercising its rights to the trademark and managing its presence on the Internet.
Second, the registrant of an active and noncommercial fan site may only have rights or legitimate interests in the domain name that includes the complainant's trademark if the site is actually in use, clearly distinctive from any official site, and noncommercial in nature. UDRP panels have found that a claimed fan site which includes pay-per-click (PPC) links or automated advertising would not normally be regarded as a legitimate noncommercial site.
The website at the disputed domain name makes use of Complainant's trademark as a domain name alone and uses a logo which is confusingly similar to that of Complainant. While containing information about Complainant, the website does not bear any information on who actually maintains the site, so visitors are led to believe they are visiting Complainant's actual service site. That customers already have been misled can be seen through the comments on the site, where customers that are actually seeking hotel rooms and hotel operators are trying to contact Complainant. Furthermore, there is not a single direct link to the website of Complainant, which could have been expected on a fan or tribute site.
The website at the disputed domain name makes extensive use of the Google AdSense program. All ads lead to commercially active sites of third parties within the field of operations of Complainant. The vast majority of these ads are for competing businesses but even for Complainant itself. Thus Complainant is charged a fee by Google to advertise on a website which uses a confusingly similar domain name and is operated by a third party, Respondent. Respondent's website cannot be considered an active fan or tribute site as the main scope is diverting customers to direct competitors of Complainant.
The disputed domain name was registered and is being used in bad faith. Respondent provides identical services to Internet users through advertising for companies in the fields of travel and hotel booking. Thus, Respondent intentionally attempts to attract Internet users for commercial gain. First, the disputed domain name is confusingly similar to the mark of Complainant. Second, the services offered under the disputed domain name are identical to those of Complainant, which creates the likelihood of confusion between Complainant's mark and Respondent's website. Internet users are likely to mistakenly believe that the website is actually Complainant's web presence which therefore leads to Internet users using Respondent's service and interferes with Complainant's business. Complainant has already pointed out that the disputed domain name is likely to confuse Internet users. A substantial proportion of Internet users visiting Respondent's website will be doing so in the hope and expectation of reaching a site of or authorized by the trademark owner. This is supported by the fact that the website under the disputed domain name makes extensive reference to Complainant and its services. Thus, Respondent was not only fully aware of Complainant and its business, but chose the disputed domain name in order to capitalize on Internet traffic intended for Complainant's website.
The fact that the website under the disputed domain name contains automated advertising content from the Google AdSense network leads to Respondent to be deemed responsible for the content appearing on the website. Using a website to gain PPC revenues has been considered sufficient to prove bad faith. B. Respondent Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Under the Policy, paragraph 4(a), a complainant must make out its case that:
(i) the domain name is identical or confusingly similar to a trademark 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 has been registered and is being used in bad faith. A. Identical or Confusingly Similar
By its trademark registrations, Complainant has shown to the satisfaction of the Panel that it has trademark rights in the TRIVAGO mark.
Since the disputed domain name consists of the TRIVAGO mark in its integrity, plus the gTLD ".name", the Panel finds that the disputed domain name is identical to Complainant`s mark. Thus, the first element has been met. B. Rights or Legitimate Interests
It is well established that a complainant must first establish a prima facie case that the respondent lacks any rights or legitimate interests in the disputed domain name, and once this is done, the burden of production shifts to the respondent to show that it has at least a right or legitimate interest in the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ("WIPO Overview 2.0"), paragraph 2.1 ("[A] complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]").
In the instant case, Complainant contends that Complainant is in no way affiliated with Respondent, and has not licensed or permitted Respondent to use the TRIVAGO trademark in any fashion. No trademark registration for the mark TRIVAGO in favor of Respondent can be retrieved from the trademark database in the US, where Respondent is located. The only trademark registration which can be retrieved is the trademark registration of Complainant. Further, the website under the disputed domain name contains no information on Respondent or any other website operator, which leads to the assumption that Respondent has not been commonly known by the disputed domain name.
Also, says Complainant, there is no evidence Respondent is making a bona fide or legitimate noncommercial or fair use of the disputed domain name. Instead, the disputed domain name is used in a misleading way: the website makes use of a logo which is confusingly similar to the logo in use by Complainant; the name "trivago" is identical to the name and trademark of Complainant; the colors in use are the same as the official logo of Complainant. Only the typeface differs from Complainant's logo.
Complainant also contends that customers have already been misled. This can be seen through the comments on the website, at the disputed domain name, where customers that are actually seeking hotel rooms and hotel operators are trying to contact Complainant. Furthermore, there is not a single direct link to the website of Complainant, which could have been expected on a fan or tribute site.
Complainant adds that Respondent's website makes extensive use of the Google AdSense program, and that the main scope of Respondent's website is diverting customers to direct competitors of Complainant. And therefore it cannot be considered as an active fan or tribute site.
Complainant has shown that Respondent's website at the disputed domain name consists of a main page entitled "trivago" where the term "trivago" is in a font and colors strongly similar to Complainant's "trivago" logo, although without the "®" sign used by Complainant. On Respondent's website texts in Spanish are shown describing how Complainant's system of price comparison works. Various ads from the Google AdSense program appear on the website at the disputed domain name. These ads, offering different travel and hotel services, are from third parties competing with Complainant.
On April 29, 2014 the Panel visited the website at the disputed domain name and confirms that the website is being used as shown by Complainant1: Respondent's website at the disputed domain name, by using Complainant's full mark, and displaying Complainant's TRIVAGO mark with an almost identical logo, creates the impression that the owner of the website is Complainant. The Panel notes that Respondent does not state, clearly by means of a disclaimer, or otherwise, that this is not the case. Nor does Respondent provide contact information showing that it is not Complainant. In the opinion of the Panel, Respondent's use of the disputed domain name is equivalent to an impersonation of Complainant. In any case, Respondent is using the disputed domain name in a scheme aimed at creating confusion amongst Internet users presumably looking for Complainant, and thus to generate income via PPC and/or other system designed to receive commissions from advertising in the same field of business as Complainant.
The Panel believes this use is not in connection with a bona fide offering of goods or services under Policy paragraph 4(c)(i), nor a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy paragraph 4(c)(iii). See Jupiter Investment Management Group Limited v. N/A, Robert Johnson,WIPO Case No. D2010-0260 ("The adoption and use of a domain name for the purposes of such impersonation does not provide a right or legitimate interest under the Policy."); see also Thomas Sabo GmbH & Co. Schmuckhandel KG v. A&L, Ran Hill,WIPO Case No. D2010-0731 ("[I]t is established that the Respondent commercially used the disputed domain names without the Complainant's consent or authorization to divert internet traffic to commercial websites through which it apparently identified itself as the Complainant. Such use is not a bona fide offering of goods or services or a legitimate noncommercial use or fair use of the domain names.")
In absence of any evidence in favor of Respondent and in view of its default, the Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel concludes that, by using the disputed domain name as described, including the use of Complainant's TRIVAGO mark with its typical logo, or a close imitation thereof, Respondent has shown that it knew of, and had Complainant and its TRIVAGO mark in mind at the moment of registering the disputed domain name, which is evidence of registration in bad faith.
Complainant has also shown that, by impersonating or creating the impression amongst Internet users that the website at the disputed domain name belongs to Complainant, and by causing advertisings to be posted on its website, presumably with the purpose to generate income for Respondent via a PPC scheme, Respondent intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant's TRIVAGO mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on Respondent's website or location. This is a circumstance of bad faith registration and use of the disputed domain name pursuant to Policy paragraph 4(b)(iv). See Jupiter, supra, ("[Impersonation of the complainant by the respondent] also involves registration and use in bad faith")
Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith. 7. Decision
For 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 Complainant.
Roberto Bianchi
Sole Panelist
Date: May 1, 2014
1 A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. See WIPO Overview 2.0, paragraph 4.5.
Full & Egal Universal Law Academy