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 Arulanantham Arulpragasam, of Waltham Cross, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), self-represented. 2. The Domain Names and Registrars
The disputed domain name is registered with eNom, Inc.
The disputed domain name is registered with Mesh Digital Limited.
The above-mentioned disputed domain names are hereinafter referred to as the "disputed domain names". The above-mentioned registrars are hereinafter referred to collectively as the "Registrars". 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 16, 2016. On September 16, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On September 17, 2016, Registrar Mesh Digital Limited transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On September 19, 2016, Registrar eNom, Inc. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2016. The Respondent submitted informal email communications on October 10, 2016 and October 11, 2016 in which he stated that he was prepared to transfer the disputed domain names to the Complainant.
On October 12, 2016, the Center invited the Complainant to comment on whether it would like to suspend the proceeding to explore possible settlement between the parties and stated that if the Parties wished to explore settlement, the Complainant should submit a request for suspension by October 19, 2016. On October 20, 2016, the Complainant indicated it wished to continue the proceeding. On the same day, the Center notified the Parties of the commencement of panel appointment.
The Center appointed C. K. Kwong as the sole panelist in this matter on October 31, 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
The Complainant is the owner of numerous service mark registrations consisting of or comprising the word "travelocity" which were acquired from its predecessor in title, including:
(a) United States trademark registration no. 2254700 for the mark TRAVELOCITY registered on June 22, 1999 and (b) United States trademark registration no. 2466132 for the mark TRAVELOCITY registered on July 3, 2001, with both their respective dates of first use in 1996 being claimed.
The Complainant is also the registrant of the domain name, , created on January 23, 1997, which it acquired from its predecessor in title.
The Complainant is owned by Expedia, Inc. ("Expedia"). Expedia and its corporate affiliates are authorized to use the TRAVELOCITY trademark under authority from the Complainant.
The uncontradicted evidence produced by the Complainant shows that the registrations of the aforesaid TRAVELOCITY mark and domain name occurred well before the registration of the disputed domain names embodying the word "Travelocity" by the Respondent on the respective dates set out below:
(a) on June 14, 2016;
(b) on June 12, 2016.
Other than the particulars shown on the printout of the database searches conducted by the Complainant of the WhoIs database (as provided in Exhibits P, Q and R of the Complaint), the websites to which the disputed domain names resolve and the WhoIs database search results provided by the Center, there is no other evidence or information in the case file concerning the background of the Respondent and its business. 5. Parties' Contentions A. Complainant
The Complainant has made the following contentions:
1. (a) The Complainant is acquired and owned by Expedia which is well-known as one of the world's largest travel companies.
(b) For the purposes of this Complaint, the Complainant together with its predecessors in interest are referred to collectively as "Travelocity" which includes Travelocity, Inc.; T LP; Terrapin, Inc.; TSGL Holding, Inc.; and the Complainant's other predecessor in interest; and/or the Complainant's corporate affiliates who are authorized to use the TRAVELOCITY trademark by the Complainant.
2. Travelocity with its establishment tracing back to 1996, is a leading provider of consumer direct travel services for leisure and business travelers. The mark "TRAVELOCITY" is one the most recognized online travel brands, offering thousands of travel destinations to more than 20 million travelers per month.
3. Travelocity's main website, "www." was launched in 1996 and is one of the most powerful one-stop travel sites on the Internet, providing secure online reservation capabilities for air, car, hotel and vacation reservations, plus access to a vast database of destinations and other travel information. The site provides reservation information for more than 70 airlines, more than 50,000 hotels and more than 50 car rental companies. "www." also offers more than 6,500 vacation packages as well as tour and cruise departures. It received 6.6 million visits in April 2016.
4. Travelocity has been using the trademark TRAVELOCITY either standing alone or in combination with other word and/or design elements for its travel related services since 1996, for nearly 20 years.
5. Travelocity has extensively promoted its TRAVELOCITY services and "www." website worldwide through online, print and television advertising campaigns and email communications.
6. The Complainant owns trademark and service mark registrations in the United States and worldwide for its TRAVELOCITY mark.
7. Travelocity and the "www." website have received numerous awards.
8. As a result of Travelocity's longstanding use and promotion of the TRAVELOCITY mark, the consuming public and the trade recognize and associate the TRAVELOCITY mark with Travelocity.
9. The disputed domain names were registered well after the TRAVELOCITY mark and "www." website became well-known.
10. The Respondent has used for his own profit to promote a competing online travel business that promotes and offers to consumers the ability to search for and book flights, hotels, cruises and car rentals.
11. The Respondent purports to be a business and Internet marketing and website development consultant. He claims to own and operate a company called Our Unique Company Ltd. through which he promotes website creation and hosting services.
12. Prior to the institution of these proceedings, the Complaint wrote to the Respondent on August 16, 2016, requesting transfer of the disputed domain names, but received no response.
13. The disputed domain names are identical or confusingly similar to the Complainant's well-known TRAVELOCITY mark as they fully incorporate the TRAVELOCITY mark exactly and in its entirety.
14. The disputed domain names involve the new generic Top-Level Domain ("gTLD") extensions of ".tips" and ".today".
15. Adding the said gTLD extensions in the disputed domain names does not distinguish the disputed domain names from the Complainant's coined and unique TRAVELOCITY mark. It even increases the confusion by suggesting that the disputed domain names are related to the Complainant's TRAVELOCITY services.
16. The Respondent is attempting to capitalize on the TRAVELOCITY name and mark by misleading consumers into believing that the disputed domain names are affiliated with Travelocity.
17. The disputed domain names are not legitimate names or nicknames of the Respondent.
18. There is no relationship between Travelocity and the Respondent. The Complainant has not given any permission to the Respondent to register or use the disputed domain names incorporating the Complainant's TRAVELOCITY name and mark. The Respondent is not an authorized affiliate of the Complainant and there has never been any business relationship between the Complainant and the Respondent.
19. The Respondent is neither using the disputed domain names in connection with a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the disputed domain names.
20. The Respondent has registered and is using the disputed domain names in bad faith. He was and is fully aware of the Complainant's rights in its TRAVELOCITY marks when he registered the disputed domain names and used such for competing travel related services or hosting services.
21. The Respondent's use of the Complainant's TRAVELOCITY mark creates initial interest confusion. He has continued use of the disputed domain names even after receiving a demand letter from the Complainant which he ignored. B. Respondent
The Respondent has not filed a Response to the Complainant. Instead, by its email to the Center on October 10, 2016 which was repeated on October 11, 2016, the Respondent stated the following:
(1) He registered the disputed domain names as they were available for registration.
(2) He received the Center's notice of September 21, 2016 when he only then came to know that he should not have registered the disputed domain names.
(3) He was prepared to transfer the disputed domain names to the Complainant or cancel them as he did not want any case on this matter.
(4) He did not have the name or address or email of the Complainant and would request the Center to forward his message to the Complainant.
(5) He would like to know the process to transfer the disputed domain names to the Complainant or to cancel the same. 6. Discussion and Findings A. The Respondent's consent to transfer
A number of approaches which various UDRP panels have adopted in dealing with cases where the Respondent has expressed its consent to transfer the domain names in question to the Complainant were summarized under paragraph 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). They depend on the circumstances of the case especially those surrounding (a) the acquisition of the domain name in question, (b) the use of such domain name, (c) the clarity of the consent and (d) the parties' conduct.
In the absence of a prompt settlement being reached between the parties with the disputed domain names being transferred to the Complainant which would then only require a formal order for the present administrative proceedings to be formally terminated, this Panel considers that it is appropriate to proceed and render a decision on the merits. In this connection, the Panel has taken the following circumstances into account:
1. Before commencement of this proceeding, a letter dated August 16, 2016 was written by the Complainant to the Respondent in which the Complainant's contact particulars were clearly stated but apparently the Respondent did not respond to it;
2 The Respondent's emails to the Center on October 10 and 11, 2016 acknowledged receipt of the Center's notice of commencement of proceedings dated September 21, 2016 which notice and the accompanying documents (including the Complaint) clearly provided contact particulars of the Complainant. Despite that, the Respondent claimed that he did not have any name or address or email of the Complainant;
3. A further unsuccessful attempt was apparently made by the Complainant on October 19, 2016 to contact the Respondent for possible settlement when there was a lack of response.
The above circumstances do not support a clear intention by the Respondent to settle or to reach a prompt settlement agreement which would otherwise permit the Panel to summarily order the proceedings to be formally terminated. B. The Three Elements
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, "[t]he Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to each of the disputed domain names, the Complainant must prove each of the following, namely that:
(i) the disputed domain names are 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 disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
The said three elements are considered below. 1. Identical or Confusingly Similar
On the evidence available before the Panel, it has no hesitation in finding that the Complainant has rights in the trademark "TRAVELOCITY" by reason of the trademark registrations as recited in Section 4 above.
It is a well-established practice to disregard the gTLD part of a domain name, such as ".com" (which would correspond to the newly extended gTLDs ".tips" and ".today" in the present case), when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d'Evian and Société des Eaux de Volvic v. Beroca Holdings B.V.I. Limited,WIPO Case No. D2008-0416.
The Panel finds that each of the disputed domain names and embodying the Complainant's TRAVELOCITY trademark in its entirety with the addition of the said gTLDs are insufficient to distinguish them from the Complainant's trademark TRAVELOCITY. Each of them is identical or confusingly similar to the Complainant's trademark TRAVELOCITY. Accordingly, the first element of paragraph 4(a) of the Policy is established in respect of all the disputed domain names. 2. Rights or Legitimate Interests
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain names. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Once such prima facie case is made, the burden of production will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain names.
In the present case, the Complainant has asserted registration and very extensive use of the registered trademark TRAVELOCITY and the domain name as set out in Section 4 above in connection with its services well before the Respondent's registration of the disputed domain names. The Complainant has confirmed that the Respondent is not a licensee or authorized party of the Complainant. The Respondent was not authorized to register or use any of the disputed domain names.
The Respondent has suggested that he registered the disputed domain names as they were available for registration. However, there is no explanation as to why it was necessary for the Respondent to adopt the word "Travelocity" in the disputed domain names.
There is also no evidence to suggest that the Respondent is commonly known by any of the disputed domain names.
Indeed, the Respondent concludes in his emails of October 10 and 11, 2016 that he should not have registered the disputed domain names.
The Panel is satisfied that the Respondent has no rights or legitimate interests in any of the disputed domain names. Accordingly, the second element of paragraph 4(a) of the Policy is established in respect of all the disputed domain names. 3. Registered and Used in Bad Faith
The Panel finds that the incorporation of words which are identical or confusingly similar to the Complainant's said registered trademark consisting of or comprising the word "Travelocity" in the disputed domain names which resolve to websites in relation to his services which include competing travel-related services cannot be incidental. It is also noted that the Respondent appears to be a knowledgeable business consultant rendering advice and services to the public in relation to, inter alia, website matters. The Panel also repeats the observations in sections 6.B1 and 6.B2 above.
In the absence of any plausible explanation for the Respondent's conduct in incorporating the Complainant's TRAVELOCITY trademark in its entirety as part of the respective disputed domain names, the Panel finds that the Respondent has registered and is using the disputed domain names in bad faith.
The Panel finds that the disputed domain names have been registered and are being used in bad faith under paragraph 4(a)(iii) 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 names and be transferred to the Complainant.
C. K. Kwong
Sole Panelist
Date: November 14, 2016
Full & Egal Universal Law Academy