The Complainant is STS Student Travel Schools AB of Göteborg, Sweden, represented by Ports Group AB, Sweden.
The Respondent is Nordmann Nordmann of Dbendorf, Switzerland appearing pro se. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2018. On April 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 5, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2018. A letter was received by registered mail by the Center in German on April 24, 2018. The Center notified the Respondent’s default on May 3, 2018. The same day an email was received from the Respondent in English stating that it had replied to the Complaint within the deadline with attached proof of the mailed letter of April 24, 2018. The Center acknowledged receipt of the email stating further that the language of the registration agreement for the Disputed Domain Name was English. As such any submissions or response, including any annexes, shall be submitted in electronic form and shall be submitted in English. No further communications have been received from Respondent.
The Center appointed John Swinson as the sole panelist in this matter on May 8, 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. The Panel does not understand the German language. 4. Factual Background
The Complainant is STS Student Travel Schools AB of Sweden. The Complainant is in the business of providing a wide range of experience-based learning programs in the form of guided trips, high school exchange, au pair and study abroad programs at college and university. The Complainant operates in 15 countries and has a network of global partners.
The Complainant owns a European Union registered trade mark for the following device, filed on September 28, 1999 and registered on November 14, 2000 (registration number 001325398):
(the “Trade Mark”).
The Respondent is Nordmann Nordmann of Switzerland. Based on an informal email communication sent from the Respondent to the Center, the Respondent operates Travelwell LLC, a company which provides tours around Europe. The Respondent registered the Disputed Domain Name on February 15, 2018. At the time the Complaint was filed the Disputed Domain Name resolved to a website with pay-per-click (“PPC”) links, many of which relate to schools and student related websites. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions: Identical or Confusingly Similar
The Complainant has registered trade marks containing the term “STS”. The Disputed Domain Name is confusingly similar to the Complainant’s registered rights as it is identical with the prominent part of the Complainant’s Trade Mark.
The addition of the new generic Top-Level Domain (“gTLD”) “.tours” does not dispel the confusing similarity of the Disputed Domain Name with the Complainant’s Trade Mark. The new gTLD adds to the confusion since the domain .tours is a generic word which describes the core business of the Complainant. Rights of Legitimate Interests
The Respondent does not have any rights in the Trade Mark. The Complainant has not given the Respondent any authorisation to register the Disputed Domain Name. The use of the Disputed Domain Name cannot be considered reasonable where it falsely suggests an affiliation with a trade mark owner.
The Disputed Domain Name is being used for sponsored links which are directing customers to businesses providing services similar to the Complainant’s business operations. There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or made any effort to use it in a legitimate noncommercial or fair manner. Registered and Used in Bad Faith
The Complainant has been using the Trade Mark for many years and registered the Trade Mark long before the Disputed Domain Name was registered. The Complainant has made significant efforts to develop and promote the Trade Mark during the time it has operated its business. The Complainant submits that it is obvious, considering the content on the website at the Disputed Domain Name, that the Respondent was and is well aware of the Complainant’s prior rights and businesses.
The Disputed Domain Name is not being used for a genuine, noncommercial purpose but is simply linking customers to other websites. The Respondent’s actions suggest that the Disputed Domain Name was registered and is being used primarily to capitalize on, or take advantage of, the Complainant’s Trade Mark rights for commercial gain. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. The Respondent sent a letter to the Center on April 24, 2018 in German. The Center notified the Respondent that any response must be submitted in English, however the Respondent did not submit any further communications or response. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 onus of proving these elements remains on the Complainant even though the Respondent has not filed a formal Response.
The Respondent’s failure to file a formal Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP,WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Trade Mark is a device mark. Previous UDRP panels have found that design elements can be disregarded for the purpose of assessing identity or confusing similarity (see section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Panel finds that the Trade Mark satisfies the requirement that the Complainant show “rights in a mark” for the first element of the Policy.
The Disputed Domain Name incorporates the textual component of the Trade Mark in its entirety, and no additional words have been added. In cases concerning new gTLDs, a number of panels have found that a descriptive TLD suffix may further suggest an association with a trade mark, thus increasing confusion (see Hultafors Group AB v. my domain limited,WIPO Case No. D2014-0597 in relation to the gTLD “.clothing”). Here, the gTLD “.tours” is descriptive of one category of services provided by the Complainant under the Trade Mark. As such, this descriptive TLD suffix increases the confusion.
The Panel finds that the Disputed Domain Name is identical to the textual component of the Trade Mark.
The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case for the following reasons:
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or the Trade Mark, or has registered or common law rights in relation to the Disputed Domain Name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The Respondent is using the Disputed Domain Name for PPC advertising and is likely doing so for profit.
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent is using the Disputed Domain Name as a PPC link page. A number of these links relate to schools and education, which is related to the services provided by the Complainant and the industry in which the Complainant operates. In the absence of any evidence from the Respondent to the contrary, the Panel is of the view that this does not amount to a bona fide use of the Disputed Domain Name for the purposes of the Policy.
The Respondent had the opportunity to demonstrate his rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent has registered and is using the Disputed Domain Name in bad faith.
If circumstances indicate that the Respondent’s intent in registering the Disputed Domain Name was to profit in some fashion from, or otherwise exploit, the Complainant’s Trade Mark, panels will find bad faith on the part of the Respondent (see section 3.1.1 of the WIPO Overview 3.0).
The Respondent registered the Disputed Domain Name on February 15, 2018, which is approximately 18 years after the Complainant registered the Trade Mark. The Complainant has made significant efforts to develop and promote the Trade Mark during the time it has operated. The Complainant is well-known in the student travel industry. As discussed above, the Complainant operates in 15 countries and has a network of global partners. When the Center notified the Respondent of its default following the due date for the Response, the Respondent replied to the Center from an email address at the domain name . The Panel has ascertained that Travelwell is the Respondent’s travel business. In light of this, the Panel considers it likely that the Respondent had knowledge of both the Complainant and the Trade Mark at the time he registered the Disputed Domain Name. This conclusion is reinforced by the content of the website at the Disputed Domain Name, being PPC links relating to schools and education.
In the circumstances, the Panel considers it likely that the Respondent registered the Disputed Domain Name with the Complainant in mind, to trade off the Complainant’s reputation and Trade Mark. By using the Disputed Domain name in this way, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s Trade Mark. This is evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
Given the above, and in the absence of a Response or any evidence rebutting bad faith registration and use, the Panel finds that the Complainant has succeeded on the third element 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.
John Swinson
Sole Panelist
Date: May 18, 2018
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