The Complainant is Hotelbeds Spain, S.L.U. of Palma de Mallorca, Islas Baleares, Spain, represented by ECIJA, Spain.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama City, Panama / Macnoel Enterprise of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2017. On November 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 22, 2017, 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 November 28, 2017 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 December 2, 2017.
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 the Respondent of the Complaint, and the proceedings commenced on December 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2017.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on January 15, 2018.
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 claims to be the world’s leading bedbank, delivering hotel accommodation to travel suppliers and distributors across the industry. It results from the Complainant’s further undisputed allegations that the Complainant is the owner of many registered trademarks dating back to the year 2003 and consisting of or containing the verbal element HOTELBEDS. For the purpose of this decision, reference is made to the following trademarks:
(1) Canadian mark no. TMA616113 for HOTELBEDS (word mark) registered on August 2, 2004 (duly renewed), for services in class 35;
(2) US trademark no 2990910 for HOTELBEDS (word mark) registered on September 6, 2005 (duly renewed), for services in class 43;
(3) Mexican trademark no 806988 for HOTELBEDS (figurative) registered on September 12, 2003, covering services in class 39.
Furthermore, it results from the Complainant’s further unchallenged allegations that it operates websites under its numerous domain names such as , , , .
According to the Registrar’s verification response, the disputed domain name was registered to the Respondent on August 20, 2017.
It results from the Complainant’s undisputed allegations that the website to which the disputed domain name resolves contains a list of pay-per-click (“PPC”) links to other pages in the hotel sector; the Panel verified this through a quick Internet check. Finally, the Complainant provided evidence from which it results that the disputed domain name has also been used for phishing activities. In fact it results from the evidence provided that the disputed domain name has been used to create an email account from which the Complainant’s clients have been contacted charging them for allegedly unpaid invoices and by using the name of one of the Complainant’s employees and the Complainant’s address. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is identical to its marks and domain names since it wholly incorporates the trademark HOTELBEDS.
The Complainant further contends that the Respondent has no prior rights or legitimate interests in the disputed domain name. In particular, the Complainant has not granted any permission or license for the Respondent’s use of the disputed domain name and the disputed domain name has no “connection with a bona fide offering of goods or services”. Furthermore, the Complainant states that there had never been any business relationship with the Respondent and the latter has not been “commonly known by” a name HOTELBEDS. Using the disputed domain name for phishing activities cannot confer any right or legitimate interest.
Finally, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith. According to the Complainant, the Respondent registered and uses the disputed domain name to intentionally attempt to attract for commercial gain trough PPC links, Internet visitors to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s marks. Further elements showing the Respondent’s bad faith in the Complainant’s view are the phishing activity performed under the disputed domain name and the fact that the Respondent originally hid behind a privacy service. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “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”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, a complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of several trademark registrations consisting of containing the verbal elements HOTELBEDS. This decision is based on the two verbal trademarks quoted by the Complainant, i.e., Canadian mark no. TMA616113 HOTELBEDS and
US trademark no 2990910 for HOTELBEDS, which predate the creation date of the disputed domain name, which is August 20, 2017.
As noted by many prior UDRP panels, the applicable generic Top-Level Domain (“gTLD”) suffix “.top” in the disputed domain name is normally to be disregarded under the identity/confusing similarity test.
In the light of the above, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a
prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
According to the Complainant’s allegations, which have remained unchallenged, the Complainant has not authorized the Respondent’s use of the trademark HOTELBEDS through the registration of the disputed domain name consisting of a reproduction of said trademarks in their entirety. In addition, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy.
In addition, it results from the undisputed evidence before the Panel that the disputed domain name is used for phishing activities. UDRP panels have categorically held that the use of a domain name for illegal activity such as phishing can never confer rights or legitimate interests on a respondent (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 2.13.1 with further references). In the case at hand, the Complainant submitted substantial evidence of such phishing activities by providing email correspondence sent from an email account under the disputed domain name (“…@”) to one of the Complainant’s customers. These emails have been signed in the name of a natural person and “HOTELBEDS Group” by using the Complainant’s address. The Panel considers this evidence as sufficient to support the Complainant’s credible claim of illegal respondent activity.
Furthermore, according to the Complainant’s undisputed allegations, the website to which the disputed domain name resolves, offers PPC links resolving to websites in the hotellery sector and therefore competing with the Complainant’s business activities. In such cases where PPC links on the respondent’s website compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users, the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering (see WIPO Overview 3.0 at section 2.9 with further references).
It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
One of those circumstances are those specified in paragraph 4(b)(iv), i.e. where the domain name is used to intentionally attempt to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
This Panel approves the approach taken by previous UDRP panels following which the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes particular include sending emails and phishing. Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers (see WIPO Overview 3.0 at section 3.4). As explained above under section 6.B., it results from the undisputed evidence submitted by the Complainant that the disputed domain name has been used to send phishing emails to one of the Complainant’s customers signed in the name of the Complainant by using its address in order to solicit payment. In addition, the Respondent’s use of the disputed domain name in such a phishing scheme additionally demonstrates that the Respondent not only knew of the Complainant, its business and marks, but also attempted to pass itself off as the Complainant.
Finally, the further circumstances surrounding the disputed domain name’s registration and use confirm the findings that the Respondent has registered and is using the disputed domain name in bad faith. In fact, (1) the Respondent originally used a privacy service hiding its identity; (2) it further offers PPC links on the website to which the disputed domain name resolves, in particular to competing websites, and finally (3) the Respondent did not provide any response with conceivable explanation of its behavior.
Consequently, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy. The Complainant is therefore deemed to also have satisfied the third element, 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 name be transferred to the Complainant.
Tobias Malte Müller
Sole Panelist
Date: January 29, 2018
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