The Complainant is Travelscape, LLC of Bellevue, Washington, United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is James Calderon, Real Travel Network, Inc. of Elizabeth, New Jersey, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with R (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2015. On November 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 3, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 13, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2015. On December 2, 2015, the Respondent requested an extension of the Response due date until December 7, 2015, which was granted by the Center in accordance with paragraph 5(b) of the Rules. The Response was filed with the Center on December 7, 2015.
The Center appointed Dennis A. Foster as the sole panelist in this matter on December 16, 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
On December 16, 2015, the Center received an Additional Submission from the Complainant. The Policy does not require the Panel to consider supplemental filings from the parties, and prior UDRP panels have generally followed the principle of allowing such filings only in exceptional circumstances. The Panel does not see exceptional circumstances in this Case and therefore will not take into consideration the Complainant’s Additional Submission in the formulation of its Decision.
Similarly, on January 5, 2016, the Respondent requested information regarding the possibility to submit further material, which was forwarded to the Panel. As above, the Panel does not see exceptional circumstances in this Case and proceeds to its Decision in the matter. 4. Factual Background
The Complainant is an established and well-known United States of America company that is involved in the online travel reservation business on a worldwide basis. It has registered its service mark, TRAVELOCITY, with many authorities around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Registration No. 2,254,700; registered on June 22, 1999).
The Respondent owns the disputed domain name, , which was registered on May 15, 2015. The disputed domain name initially hosted a website that offered links to third party websites. The disputed domain name is currently used to redirect Internet users to the Respondent’s website found at the domain name, , which is owned by the Respondent. 5. Parties’ Contentions A. Complainant
- Founded in 1996, the Complainant is a United States of America company and a worldwide leader in consumer-direct travel services, providing services to more than twenty million travelers per month. The Complainant’s online services are famous throughout the world, as are the similar services of its parent company, Expedia, Inc.
- The Complainant offers its services through its domain name, , and has been using its TRAVELOCITY service mark since 1996. The Complainant has extensively promoted and advertised its business and the mark. Accordingly, the Complainant has gained strong rights in the mark, and has registered it with authorities around the world as well as with the USPTO.
- The Respondent registered the disputed domain name, , long after the Complainant had established rights in its TRAVELOCITY service mark. The name is confusingly similar to the mark as the former incorporates the latter fully, adding simply the falsely descriptive word, “real”. The Complainant’s mark is an arbitrary and distinct term, composed as a fanciful combination of the words, “travel” and “velocity”.
- The Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that it corresponds to a nickname for the Respondent. There is no relationship between the Parties that would suggest permission or license for the Respondent to use the mark in any manner.
- The Respondent first used the disputed domain name as a linkage portal to third party websites, but, since being contacted by the Complainant, that usage has transformed into a website that offers services that are in direct competition with those offered by the Complainant. Such usage does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair usage.
- The disputed domain name was registered and is being used in bad faith. The Respondent seeks commercial gain through Internet user confusion with respect to the Complainant’s mark and the confusingly similar name. Clearly, the Respondent is acting in bad faith as the disputed domain name was registered long after the Complainant’s service mark had attained global notoriety. B. Respondent
- The Complainant’s suggestive mark, TRAVELOCITY, is not actually a service mark at all. Because Expedia, Inc. bought the Complainant and offers services indistinguishable from those of the Complainant, the Complainant’s prior mark, TRAVELOCITY, has no current validity since it fails to identify to the public services that are different from those marketed by its now parent company. The Complainant is no longer the source of its services, as Expedia, Inc. has taken over that role.
- The Respondent has owned the disputed domain name, , since 2005 and has conducted its business under the name, “Real Travel Network, Inc.”, since that year. To further facilitate its operations, Respondent has also created the brand “Real Travel City”.
- The inclusion of the term, “real travel”, part of the Respondent’s business name, into the disputed domain name, , gives the Respondent a legitimate interest in the disputed domain name. Moreover, the Respondent’s use of the brand, “Real Travel City”, gives the Respondent an even greater right to use the disputed domain name as there is an even greater similarity between that brand and the disputed domain name.
- The disputed domain name was not registered and is not being used in bad faith. At no time has the Respondent offered to sell the disputed domain name. The Respondent is not responsible for the initial website located at the name, and, if any click-through fees were derived from the website, they were captured by the Registrar, who created the website. The Respondent has redirected the disputed domain name to the Respondent’s main website found at , where it offers high-end escorted travel packages, which may be similar to, but are distinct from, those offered by the Complainant. 6. Discussion and Findings
Under paragraphs 4(a)(i) – (iii) of the Policy, the Panel may rule in favor of the Complainant and grant it a transfer of the disputed domain name, , if the Complainant can prove that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided ample evidence that it has sufficient rights in the service mark, TRAVELOCITY, including registration with the USPTO (Complaint Exhibit K), to meet the requirements of Policy paragraph 4(a)(i). See, Florida Department of Management Services v. Anthony Gorss (or AGCS),WIPO Case No. D2009-1194 (“Complainant has registered its ... trademarks with the United States Patent and Trademark Office. Therefore, Complainant has established rights in these marks pursuant to Policy, paragraph 4(a)(i).”); and Intagent LLC v. Dominor LLC,WIPO Case No. D2008-1878 (“Complainant has demonstrated rights in the service mark INTAGENT based on use in commerce and as evidenced by registration at the USPTO.”).
The Respondent has put forth an argument that, because the Complainant was acquired by another company, Expedia, Inc., that furnishes the public with services similar to those furnished by the Complainant, the TRAVELOCITY mark has expired. The Respondent uses as an analogy that, if the Coca-Cola company purchased the Pepsi company and sold soda under the Pepsi brand that actually used the cola formula used for Coca-Cola, the PEPSI trademark would cease to exist. However, the Complainant’s valid and subsisting trademark registrations are conclusive for this proceeding. Moreover, the Complainant has provided substantial evidence that it is using the TRAVELOCITY service mark for a wide variety of travel arrangement services.
The disputed domain name, , is not identical to the TRAVELOCITY mark, though the name does fully contain the mark. However, in the Panel's view, the addition of the generic adjective, “real”, does not provide material distinction between the disputed domain name and the Complainant’s mark, and thus they are confusingly similar. The Panel believes that, if anything, the meaning of “real” would actually enhance the confusion in the minds of Internet users as to the connection between the disputed domain name and that service mark. Thus, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark. See OLX Inc. v. Domain Bridge Technologies, Ali Akbar Khan / PrivacyP,WIPO Case No. D2010-2197 (finding to be confusingly similar to OLX).
Accordingly, the Panel determines that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
If the Complainant can establish a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to come forward with evidence to rebut that prima facie case. See, Accor v. Eren Atesmen,WIPO Case No. D2009-0701 (“A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent.”). As there is no evidence in the record pointing to a relationship or license between the Complainant and Respondent, and the Complainant has shown that the disputed domain name is confusingly similar to its valid service mark, the Complainant has established such a prima facie case in the Panel’s opinion.
In rebuttal to the said prima facie case, the Respondent relies on paragraph 4(c)(ii) of the Policy, to the effect that the Respondent’s company has been known by the disputed domain name. More specifically, the Respondent alleges that it has established “Real Travel City” as a brand name in the travel industry, the same industry in which the Complainant operates. The Respondent then notes that is virtually identical to that brand name - ergo, the brand would be commonly known as the disputed domain name. The Panel, noting the significant and longstanding use of the TRAVELOCITY mark, prior to any activity by the Respondent, finds the Respondent’s explanation to be pretextual and self-serving, and does not provide the Respondent with any rights or legitimate interests to the disputed domain name.
The Panel finds that the Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel agrees with the Complainant that the Respondent is using the Complainant’s well-known service mark TRAVELOCITY in bad faith for commercial gain. This can be inferred from both the Respondent’s use of the disputed domain name, , to drive traffic to other websites and from Respondent’s use of the disputed domain name to drive traffic to its own website offering services similar to Complainant’s services.
The Respondent is an opportunistic cybersquatter. The Respondent perhaps calculated that the merger of the company Expedia with the company Travelocity at the beginning of 2015 would give Respondent the opportunity to begin using a domain name confusingly similar to the TRAVELOCITY service mark for financial gain. This contravenes the Policy at paragraph 4(b)(iv). The Panel finds the Complainant has shown that the Respondent has registered and is using the disputed domain name 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 the Complainant.
Dennis A. Foster
Sole Panelist
Date: January 6, 2016
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