The Complainant is WRI Nominees Limited of Dublin, Ireland, represented by Tomkins & Co., Ireland.
The Respondent is Whois Privacy Protection Service, Inc. of Kirkland, United States of America / Pramualsin Kerdngam of Muang, Thailand. 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 January 22, 2015. On January 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2015, 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 the Complainant on January 23, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 26, 2015.
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 the Respondent of the Complaint, and the proceedings commenced on January 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2015.
The Center appointed Knud Wallberg as the sole panelist in this matter on February 20, 2015. 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 the holder of the registered trademark HOSTELWORLD.COM in a number of countries around the world and the Complainant further claims to hold unregistered rights in the trade mark HOSTELWORLD.COM and other variations of the mark in the various countries in which it operates its business.
The Complainant is also the proprietor of the domain name which was registered in 1999 and which was registered in 2006. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is highly similar to the trade mark HOSTELWORLD.COM and the domain name of the Complainant, differing only in the addition of the three letters “com” after the word “world”. Such similarity in use is highly likely to cause confusion among members of the public who are apt to be deceived into believing that the Respondent is part of or connected to the Complainant.
In addition the Complainant alleges that in the present case, there is no evidence that Respondent uses the disputed domain name or has any intention to use the name in connection with a bona fide offering of goods or services. On the contrary, since the Respondent in a reply to an email from the Complainant stated the following: “I just want to register I have money and I will not do anything for this domain. It’s not your business”.
Finally the Complainant contends that the disputed domain name has been registered in the full knowledge of the existence of the business of the Complainant and reputation of the trade mark HOSTELWORLD.COM, and that it can be assumed that the disputed domain has been registered either with a view to selling, renting, or otherwise transferring it to the Complainant or to a competitor of the Complainant for valuable consideration over and above the cost the Respondent has incurred in registering the domain name, or that the Respondent wishes to prevent the Complainant from registering this domain name itself or for the purpose of disrupting the business of the Complainant or to attract, for commercial gain, Internet users to the Respondent’s web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(1) that the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) that the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark because it contains the mark HOSTEL WORLD.COM in its entirety. The addition of the suffix “com”, which is identical to the generic Top-Level Domain denomination “.com”, does not dispel a finding of confusing similarity where it otherwise exists, as it does in the present case.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name. B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and given the circumstances of this case, the Panel is of the opinion that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not rebutted this and both the Respondent’s reply to the Complainant as cited above and the way that the Respondent has been “using” the disputed domain name does not support a finding of rights or legitimate interests.
Consequently the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b)(i) of the Policy provides an example of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s web site or location or of a product or service on the holder’s web site or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case and in particular the extent of use of the Complainant’s trademark and the distinctive nature of the mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
The disputed domain name is not actively used instead a message indicating that the webpage is unavailable will appear when the disputed domain name is entered into a search engine. However, as first stated in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and repeated in many subsequent decisions under the UDRP: “the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by Respondent to amount to the domain name being used in bad faith.”
The Panel finds that the Respondent’s lack of bona fide use of this disputed domain name is likely to disrupt the business of the Complainant since it could, in this Panel’s view, give those Internet users that will look for information on the Complainant on the Internet the impression that the Complainant is not active on the Internet. An Internet user may thus very well mistype the Internet address of the Complainant’s official web site “www.” by omitting the “.” after “hostelworld”, in which case the Internet browser that the user uses in many circumstances will add the “.com” designation by default.
Noting that the disputed domain name incorporates the particular trademark, HOSTELWORLD.COM together with the additional “.com”, that no Response has been filed, and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, and considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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 the Complainant.
Knud Wallberg
Sole Panelist
Date: March 3, 2015
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