The Complainant is Travelpro International, Inc. of Boca Raton, Florida, United States of America ("United States"), represented by Akerman LLP, United States.
The Respondent is Mohamed Adam of Pretoria Gauteng, South Africa. 2. The Domain Name and Registrar
The disputed domain name is registered with S LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 22, 2015. On May 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 26, 2015, 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 June 3, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 24, 2015.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on July 1, 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 owner, amongst others, of the following trademark registrations:
- United States trademark registration No. 1,587,822 for TRAVELPRO registered on March 20, 1990, to cover products in class 18;
- United States trademark registration No. 4,606,771 for TRAVELPRO registered on September 16, 2014, to cover products in classes 06, 09 and 16.
The disputed domain name was registered on June 20, 2014. As evidenced by the Complaint the disputed domain name resolves to a parking page with pay-per-click advertisements ("PPC"). 5. Parties' Contentions A. Complainant
The Complainant asserts that it is a leading provider of high quality luggage throughout the world, having received awards such as the "World's Best Luggage Award" from Premier Traveler Magazine's, "Editor's Choice Award" from Outdoor Gear Lab, among others. It further states that it has spent considerable money and efforts in promoting its TRAVELPRO trademark since at least 1988 what lead the TRAVELPRO mark to become a distinctive identifier associated with the Complainant and its goods.
The Complainant further asserts that the disputed domain name is substantially identical and confusingly similar to its TRAVELPRO trademark because it incorporates the mark in its entirety merely adding the "e" prefix, which can lead Internet users into confusion since the letter "e" clearly has a connotation relating to the Internet and e-commerce.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent is using the disputed domain name to redirect Internet users to third-party websites, some of which directly compete with the Complainant, presumably in the pay-per-click format;
(ii) the Respondent has not been commonly known by the disputed domain name;
(iii) the Respondent has not made a legitimate noncommercial or fair use of the disputed domain name; and
(iv) the Respondent's use of the disputed domain name seeks to divert Complainant's customers and potential customers.
Lastly, the Complainant asserts that the bad faith of the Respondent is evident given that the Respondent is intentionally misleading and attempting to redirect Internet users to its advantage. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established its rights in its TRAVELPRO trademark, duly registered in the United States, Australia, Bahrain, Benelux, Brazil, Canada, Chile, China, Colombia, Costa Rica, Denmark, Ecuador, European Union, Germany, Honduras, Hong Kong (China), Israel, Japan, Republic of Korea, Kuwait, Mexico, New Zealand, Norway, Peru, the Russian Federation, Saudi Arabia, South Africa, Spain, Sweden, Switzerland, Taiwan (Province of China) and Viet Nam (Annex F to the Complaint).
The Complainant's trademark is entirely reproduced in the disputed domain name and the addition of the prefix "e" in this Panel's view does not distinguish the disputed domain name from the Complainant's trademark, especially considering that the prefix "e" has been used in conjunction with a series of trademarks to relate to the Internet and e-commerce.
The first element of the Policy has therefore been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a nonexclusive list of circumstances that indicate the Respondent's rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that Respondent's use of the disputed domain name aims at diverting its customers and potential customers, profiting from the TRAVELPRO's goodwill.
Also, the lack of evidence as to whether the Respondent is commonly known by the disputed domain name or the absence of any trademarks or trade names registered by the Respondent corresponding to the disputed domain name, corroborate with the indication of the absence of a right or legitimate interest.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith can be found in the use of the domain name, with an intentional attempt to attract, for commercial gain, Internet users to the website 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 website or location or of a product or service on the website or location.
In this case, the registration of a domain name confusingly similar to the Complainant's mark and the use of that name in connection with a parked website that displays sponsored links or pay-per-click advertisements related to the Complainant's business characterizes the Respondent's intent of obtaining a commercial gain by misleadingly diverting the Complainant's consumers or merely earning revenues from the links that solely exist in view of the association with the Complainant's trademark.
Such use, in this Panel's view, constitutes an attempt to profit from the fame and goodwill associated with the Complainant's trademark, thus capitalizing on the TRAVELPRO trademark by creating a likelihood of confusion in Internet users who are likely to believe that the disputed domain name is either connected, endorsed or authorized by the Complainant.
For the reasons as those stated above, the Panel finds that the disputed domain name was registered and is being used in bad faith pursuant to paragraph 4(b)(iv) of the Policy. 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.
Wilson Pinheiro Jabur
Sole Panelist
Date: July 1, 2015
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