The Complainant is Fareportal Inc. of New York, New York, United States of America (“United States”), represented by Cowan, DeBaets, Abrahams & Sheppard LLP, United States.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyP) of Burlington, Massachusetts, United States / Domain Admin, Domain Privacy Guard Sociedad Anónima Ltd of Chitre Panamá, Panama. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2018. On April 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 20, 2018, 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 April 25, 2018, 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 April 30, 2018.
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 May 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2018.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on June 13, 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, Fareportal Inc., is an American travel software company providing online travel and travel-related services through different multinational hybrid travel agencies, including “CheapOair”. The Complainant provides its travel-booking services in North America, Europe and Asia and has partnered with over 450 airlines and over 1 million hotels.
The Complainant is the holder of trademarks consisting of CHEAPOAIR, registered in various countries and used in connection to its online travel services business. The Complainant’s trademark portfolio includes, inter alia, the following trade and service mark registrations:
- CHEAPOAIR, word mark registered with the United States Patent and Trademark Office (USPTO) under No. 3,576,166 on February 17, 2009 in classes 35, 39 and 43, and with a date of first use in commerce on July 1, 2005.
- CHEAPOAIR.COM, word mark registered with USPTO under No. 4,729,795 on May 5, 2015 in classes 35, 39 and 43.
- WWW.CHEAPOAIR.COM word mark registered with USPTO under No. 4,725,988 on April 28, 2015 in classes 39 and 43.
Hereinafter referred to as the “CHEAPOAIR” trademark.
The Complainant is also the holder of the domain name , which it registered on June 13, 2005 and uses in connection to its travel services business.
According to the information provided by the Registrar, the registrant of the Disputed Domain Name is Domain Admin, Domain Privacy Guard Sociedad Anónima Ltd. The Disputed Domain Name was registered on April 10, 2006 using a proxy service. The Disputed Domain Name currently resolves to a standard parking page indicating that the “domain is for sale” and displaying sponsored pay-per-click links connected to airline tickets and other travel-booking services which redirect to websites of both the Complainant and the Complainant’s direct competitors. Before filing the Complainant, the Disputed Domain Name used to direct to a website incorporating typical images and titles found on travel-booking websites together with sponsored pay-per-click links and an indication that the domain is for sale.
The Complainant contends to have sent a notice to the Respondent on May 16, 2017 to cease and desist the unauthorized and infringing use of the Disputed Domain Name and that the Respondent failed to respond to this notice. However, the Complainant does not provide any proof to support this contention. 5. Parties’ Contentions A. Complainant
The Complainant considers the Disputed Domain Name to be confusingly similar to trademarks and service marks in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a bona fide or otherwise fair purpose and has aimed to misdirect Internet users to its website connected to the Disputed Domain Name to earn pay-per-click revenue. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent knew, or at least should have known, of the existence of the Complainant’s trademark and that the Respondent registered and used the Disputed Domain Name to attract for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark. The Complainant also claims to have sent a cease and desist notice to the Respondent and that the Respondent did not respond to this notice but afterwards changed its website connected to the Disputed Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.
Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
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 deal with each of these requirements. A. Identical or Confusingly Similar
To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there is a trademark in which the Complainant has rights. The Complainant’s CHEAPOAIR mark has been registered and used in connection to its travel-booking services.
The Disputed Domain Name incorporates the Complainant’s CHEAPOAIR trademark in its entirety, merely adding the non-distinctive suffix “line”.
The Panel is of the opinion that the mere addition of non-distinctive text to a complainant’s trademark does not prevent a finding of confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Karen Millen Fashions Limited v. Akili Heidi,WIPO Case No. D2012-1395, where the domain name was held to be confusingly similar to the KAREN MILLEN trademark; Belstaff S.R.L. v. Jason Lau, Sharing,WIPO Case No. D2012-0783, where the domain name was held to be confusingly similar to the BELSTAFF trademark; Lime Wire LLC v. David Da Silva / C,WIPO Case No. D2007-1168, where the domain name was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word “download” because users typically download complainant’s software). The term “line” does not add to the distinctiveness of the Disputed Domain Name as it produces the common English word “airline” when taken together with the Complainant’s CHEAPOAIR mark.
Additionally, it is well established that the generic top-level suffix “.com” may be disregarded when considering whether the Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights.
Accordingly, the Complainant has made out the first of the three elements of the Policy that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
It is well established that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that the Respondent has not been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.
Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. It appears that the Respondent has been using the Disputed Domain Name to refer to a parking page with sponsored links that promote products and services of third parties which are either competing with or closely related to the products and services offered by the Complainant. Before filing the Complainant, the Disputed Domain Name was used by the Respondent to refer to a website presented as a travel-booking platform incorporating sponsored pay-per-click links equally related to the Complainant’s business.
Although the sponsored links appear to resolve to websites related to the combination of the dictionary words “cheap” and “airline”, the Disputed Domain Name incorporates the Complainant’s CHEAPOAIR mark in its entirety and was previously used to resolve to a website presented as a similar travel-booking platform. According to the Panel, this cannot be considered as fair use of the Disputed Domain Name as the sponsored links mislead Internet users and compete with or capitalize on the reputation and goodwill of the Complainant’s marks (see section 2.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a 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 the website or location or of a product or service on the website or location.
In the present case, the Complainant contends that the Respondent must have been reasonably aware of the Complainant and its rights in the CHEAPOAIR trademark when the Respondent registered the Disputed Domain Name. The Complainant presents that its federal United States registrations for the CHEAPOAIR mark suggest constructive knowledge of that mark by the Respondent. However, it is apparent that the Respondent’s registration of the Disputed Domain Name predates the Complainant’s first trademark registration by almost three years. On the other hand, it is also demonstrated that the Complainant has actively used its CHEAPOAIR mark for its travel-booking services as early as July 1, 2005.
Normally, when a domain name is registered before the Complainant’s relied-upon right is shown to have been first established, the registration of the domain name is not in bad faith because the registrant could not have contemplated the Complainant’s then non-existent right. As a result, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent (see paragraph 3.8.1 of the WIPO Overview 3.0). However, bad faith could still be found in specific limited circumstances where the facts of the case establish that the Respondent’s intent in registering the domain name was to capitalize unfairly on the Complainant’s nascent trademark rights (see paragraph 3.8.2 of the WIPO Overview 3.0).
In the present case, the Respondent has incorporated the Complainant’s mark in its entirety in the Disputed Domain Name and has previously used the Disputed Domain Name to resolve to a website consisting of sponsored pay-per-click links promoting products and services of third parties which are either competing with or closely related to the products and services offered by the Complainant and displaying images and descriptions similar to the Complainant’s travel-booking platform. Website content targeting the Complainant’s mark, e.g., through links to the Complainant’s competitors, may indicate that the Respondent’s intent in registering the Disputed Domain Name was in fact to profit in some fashion from, or otherwise exploit, the Complainant’s trademark (see paragraph 3.1.1 of the WIPO Overview 3.0). As a result, the Panel reasonably finds that the Respondent has registered the Disputed Domain Name in bad faith as there is sufficient information to conclude that the Respondent’s intention was more likely than not to take advantage of the Complainant’s as yet nascent trademark rights.
While the intention to earn click-through-revenue is not in itself illegitimate, the Panel finds that the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use (see Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258; L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623). The Panel finds that by using the Disputed Domain Name incorporating the Complainant’s trademark in connection with a website containing links to products and services relating to the Complainant’s industry, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark.
Additionally, by using a proxy registration service, the Respondent has taken active steps to conceal its identity (see Fifth Third Bancorp v. Secure Whois Information Service,WIPO Case No. D2006-0696, where it was held that the use of a proxy registration service to avoid disclosing the identity of the real party in interest is also consistent with an inference of bad faith when combined with other evidence of evasive and irresponsible conduct).
Finally, by failing to respond to the Complaint, the Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions from this it considers appropriate.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last 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.
Flip Jan Claude Petillion
Sole Panelist
Date: June 25, 2018
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