Complainant is Travelscape, LLC of Bellevue, Washington, United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, New York, New York, United States.
Respondent is A Domain Privacy, A Domain Privacy of Beaumaris, Australia / domain admin, dcw group investments of Walnut, California, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with A, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2016. On February 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 2016, 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 1, 2016, 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 7, 2016.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 29, 2016.
The Center appointed Steven L. Snyder as the sole panelist in this matter on April 8, 2016. 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
In March 1996, near the beginning of the dot-com bubble, a company known as TSGL Holding, Inc. started using the TRAVELOCITY mark in connection with various Internet-based travel services. On June 22, 1999, the United States Patent and Trademark Office (“USPTO”) issued Registration No. 2254700 to that company for the TRAVELOCITY mark. Through various acquisitions and assignments, the mark’s owner became Complainant Travelscape, LLC, a subsidiary of Expedia Inc.
Nineteen years after Complainant’s predecessor started using the TRAVELOCITY mark, Respondent registered the disputed domain name, . 5. Parties’ Contentions A. Complainant
Complainant describes itself as “a leading provider of consumer-direct travel services for the leisure and business traveler.” It claims ownership of the TRAVELOCITY mark, “TRAVELOCITY-formative marks,” and the domain name . Complainant states that it has secured registrations for the TRAVELOCITY mark in the United States, “Australia, New Zealand, China, Hong Kong, Canada, Mexico, Brazil, and countries of the European Community.”
Since 1996, the domain name has been linked to a website that permits travelers to “take control of their bookings and reservations and research information about potential destinations.” In November 2015, this website reportedly “received an estimated 3,511,418 unique visits.” According to Complainant, more than “20 million travelers per month” utilize its TRAVELOCITY-branded services.
The TRAVELOCITY mark has been “extensively promoted … throughout the world through online, print, and television advertising campaigns, and email communications.” In addition, the mark is featured on “various social media platforms” including Facebook and Twitter. Due to this “longstanding use and promotion of the TRAVELOCITY Marks, the consuming public and the trade recognize and associate the TRAVELOCITY Marks with” Complainant.
Respondent registered the disputed domain name “on or around July 9, 2015, well after the TRAVELOCITY mark and TRAVELOCITY.COM website became well-known in the U.S. and other countries.” Since then, Respondent has used the disputed domain name to “redirect Internet traffic” to on-line surveys and to other websites that list links such as “Travelocity Hotels,” “Travelocity Cheap Tickets” and “Travelocity Coupon Codes.” Complainant believes that Respondent received compensation when visitors completed the surveys or clicked on the links to the other websites.
Based on these alleged facts, Complainant argues that it should prevail in this proceeding.
Regarding the first element of the Policy, Complainant maintains it has rights in the TRAVELOCITY mark and that the disputed domain name is “confusingly similar” to its mark. The addition of the word “awards” to its TRAVELOCITY mark does not decrease the confusion. Instead, it “merely suggests to Internet users that the [disputed domain name] is related to Travelocity awards/loyalty Programs.”
As for the second element of the Policy, Complainant states that Respondent has no rights or legitimate interests in the disputed domain name: Complainant’s use of the TRAVELOCITY mark long predated Respondent’s registration of the disputed domain name; Respondent is not affiliated with Complainant; and “Respondent is not known by the names TRAVELOCITY or TRAVELOCITY.COM or any variation thereof”.
With respect to the third and final element of the Policy, Complainant argues that Respondent acted in bad faith by deliberately misappropriating its famous trademark for commercial gain: “[T]here can be no doubt that Respondent was fully aware of Complainant’s rights in its TRAVELOCITY Marks when Respondent registered the [disputed domain name] and did so in order to intentionally … attract, for commercial gain, Internet users to the website at the [disputed domain name].”
Complainant requests that the disputed domain name be “immediately transferred” to its ownership. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under the Policy, Complainant must prove three elements in order to prevail:
(i) That the disputed domain name “is identical or confusingly similar to a trademark or service mark in which” Complainant has rights;
(ii) That Respondent has “no rights or legitimate interests in respect of” the disputed domain name; and
(iii) The disputed domain name was “registered and is being used in bad faith”.
Policy paragraph 4(a). A. Identical or Confusingly Similar
Complainant has obtained registrations from various governments for its TRAVELOCITY service mark. See, e.g., USPTO Reg. Nos. 2254700, 2466132 and 3159355. These registrations are sufficient proof of Complainant’s rights in the TRAVELOCITY mark, particularly when combined with the many examples Complainant submitted of its use of the mark in commerce.
The disputed domain name is comprised of Complainant’s mark and the word “awards.” The addition of “awards” to the TRAVELOCITY mark does not lessen any likelihood of confusion between the disputed domain name and mark. It is quite common for online travel services to have “awards” or “rewards” programs in order to encourage loyalty and repeat business. Complainant has such a program and so do Expedia, Orbitz, Priceline and H.
Given the prevalence of awards and rewards programs in the online travel business, it would be no surprise if an Internet user mistakenly believed that the disputed domain name, , was sponsored by or affiliated with Complainant. On similar facts, other panels have found a likelihood of confusion.
In Amadeus IT Group, S.A. v. Gilbert Li,WIPO Case No. D2015-2065, the complainant had registered the AMADEUS mark in numerous countries based on its use of the mark in the travel industry. The respondent subsequently registered “amadeusbooking” in several generic Top-Level Domains. The complainant argued that the addition of the word “booking” to its AMADEUS mark did not lessen any confusion since the complainant was in the business of booking flights and rooms. The panel agreed with the complainant’s argument: “The [AMADEUS] trademark is incorporated in whole, and an additional word commonly associated with travel services is appended. The addition of the word ‘booking’ to each disputed domain name does not eliminate confusing similarity. To the contrary, the addition of the word ‘booking’ increases the likelihood of confusion.”
In Academy of Country Music v. Pablo Palermo,WIPO Case No. D2008-0818, the complainant was commonly referred to by its initials, ACM, and was perhaps best known for a televised awards show that featured popular country singers. Long after the complainant’s awards show had become famous, the respondent registered the domain name . The panel found that the disputed domain name was confusingly similar to the complainant’s ACM mark: “With respect to Complainant’s trade mark ACM, the addition of the descriptive word ‘awards’ to Complainant’s trade mark ACM is not sufficient to avoid a finding of confusing similarity.”
Combining a mark with another word does not lessen confusion when that word merely describes goods or services that the public commonly associates with the mark. Indeed, it may only increase the likelihood of confusion, particularly when a mark may be used by many other organizations. The initials “ACM,” for example, are used by the Academy of Country Music, the Association of Computing Machinery, the Association for College Management and the Associação Cristã dos Moços – to name just a few. By combining “ACM” with “awards,” there is a greater chance that the Internet user would believe the domain name was sponsored by or affiliated with the Academy of Country Music. Similarly, the combination of TRAVELOCITY with “awards” likely increases the chance that an Internet user would believe Respondent’s website was affiliated with Complainant.
The Panel finds that the disputed domain name, , is confusingly similar to Complainant’s TRAVELOCITY mark. Complainant has established the first element required by the Policy. B. Rights or Legitimate Interests
A respondent may gain rights or legitimate interests in a domain name by using it “in connection with a bona fide offering of goods or services,” by being “commonly known by the domain name,” or by making “a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” Policy, paragraph 4(c).
Complainant has introduced proof that Respondent does not have any legitimate rights or interests in the disputed domain name. Respondent is not affiliated with Complainant, it is not otherwise known as “Travelocity”, and it certainly appears to have registered and used the disputed domain name in a deliberate attempt to profit off the confusion of Internet users.
Respondent did not respond to the Complaint. Its failure to offer any rebuttal evidence leaves the Panel with no choice but to rely on the record as developed by Complainant. See Kraft Foods (Norway) vs. Fredrik Wide and Japp Fredrik Wide,WIPO Case No. D2000-0911 (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to Paragraph 4 c. of the Policy, any rights or legitimate interests in the domain name.”).
The Panel finds that Respondent lacks any rights or legitimate interests in the disputed domain name, . Complainant has established the second element required by the Policy. C. Registered and Used in Bad Faith
The Policy sets forth non-exclusive examples of bad faith registration and use. One example is the registration of and use of a domain name in order to attract Internet users to the respondent’s website “by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of” the complainant’s website or of a “product or service” offered via the website. See Policy, paragraph 4(b)(iv).
The disputed domain name, , is confusingly similar to Complainant’s famous TRAVELOCITY mark. That confusion is arguably increased by Respondent’s use of the disputed domain name: Respondent has directed Internet users to links that appear to lead to TRAVELOCITY sites and to surveys that purport to query them about their experiences with TRAVELOCITY-branded services.
The likelihood of confusion clearly is not the result of an innocent mistake. Respondent did not register the disputed domain name until July 9, 2015, more than 19 years after Complainant’s predecessor started using the TRAVELOCITY mark. In the intervening years, many millions of people had visited Complainant’s website located at , utilized TRAVELOCITY-branded services and seen the TRAVELOCITY commercials featuring the peripatetic “roaming gnome” (inspired, perhaps, by the charming French movie Amélie).
On these facts, it is legitimate to conclude that Respondent’s registration and use of the disputed domain name was in bad faith. See Dr. Ing. h.c. F. Porsche AG v. Ron Anderson,WIPO Case No. D2004-0312 (“The Complainant’s trademark PORSCHE is undoubtedly famous, and it is inconceivable that Respondent registered the Domain Name unaware of the Complainant’s rights in its PORSCHE mark and with an intent to use it in good faith.”).
The Panel concludes that Respondent registered and has used the disputed domain name in bad faith and that Complainant has established the third element required by 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.
Steven L. Snyder
Sole Panelist
Date: April 15, 2016
Full & Egal Universal Law Academy