The Complainant is Hostelworld.com Limited, Ireland, represented by Tomkins & Co., Ireland.
The Respondent is Contact Privacy Inc., Canada / Shamlee Pingle, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2021. On June 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 2021, 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 June 16, 2021 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 June 17, 2021. 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 June 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2021. The Response was filed with the Center on July 6, 2021. The Center appointed John Swinson as the sole panelist in this matter on August 12, 2021. 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 operates an online travel agency focused on the hostel market and backpacker accommodation. The Complainant has operated for more than 20 years, and its website at “hostelworld.com” allows travellers to book accommodation in 36,000 properties across more than 150 countries. Approximately 3,800,000 bookings were made via the Complainant’s website in 2019. The Complainant owns a number of registered trademarks, including for “HOSTELWORLD.COM”, the subject of EU Trade Mark No. 009273947 registered on January 7, 2011, and trademark registrations in other countries including Australia and Canada, and for the “HOSTELWORLD” logo, the subject of EU Trade Mark No. 014096697 registered on October 5, 2016, and International Trade Mark No. 1265596 registered on May 20, 2015. It is not entirely clear, but it appears that the Respondent operates a hotel in India. The disputed domain name was registered on April 6, 2021. There is no website at the disputed domain name. 5. Parties’ Contentions A. Complainant The Complainant made the following submissions: The Complainant owns registered trademarks for “HOSTELWORLD” and “HOSTELWORLD.COM”, as set out in Section 4 above. Making a straightforward comparison between the Complainant’s trademarks and the disputed domain name involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademarks to assess whether the trademark is recognisable within the disputed domain name. In assessing confusing similarity, the figurative elements of the Complainant’s trademarks HOSTELWORLD must be disregarded as they are incapable of representation in domain names. The only difference between the Complainant’s trademarks and the disputed domain name is the addition of the letters “i”, “t”, and “e” between the words “hostel” and “world” which is insufficient to differentiate the disputed domain name from the Complainant’s trademarks. A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant trademark from a visual, aural and, in this case, also conceptual perspective. There is no evidence that the Respondent is using the disputed domain name. The Respondent has never requested authorization from the Complainant to use the disputed domain name, and no such authorization has been given by the Complainant. The Respondent is not commonly known by the disputed domain name and is not making a non-commercial fair use of the disputed domain name. The Complainant is well-known and has a substantial online and social media presence. The Complainant’s trademark is distinctive and should be given greater protection. Bad faith registration can be found where respondents “knew or should have known” of the complainant’s trademark and nevertheless registered a domain name in which they had no right or legitimate interest. The trademark HOSTELWORLD.COM has both inherent distinctiveness and through extensive use worldwide for 20 years, a very high degree of acquired distinctiveness by virtue of which it is entitled to a higher degree of protection. Although no information about the use of the disputed domain name is available, if it is used on services identical or similar to those of the Complainant, there will undoubtedly be confusion among consumers and damage to the business activities of the Complainant. B. Respondent The Respondent made the following submissions, via email in an informal Response: “Hostel” and “Hostelite” are different words with different meanings. There will be no confusion by consumers. The Complainant does not have trademark rights in India where the Respondent operates. The Respondent is not in breach of any Indian intellectual property laws. The Respondent is a legally registered partnership in India. The Respondent provides or intends to provide affordable accommodation in India. The Complainant does not operate in India. The Respondent intends to use the disputed domain name to only allow bookings at the Respondent’s property. The Respondent is a small business, and there is no intentional or unintentional competition. 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 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 onus of proving these elements is on the Complainant. Paragraph 15(a) of the Rules directs the Panel to decide the 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. 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 a name, trademark or service mark in which the Complainant has rights. The Complainant owns trademark registrations for HOSTELWORLD and HOSTELWORLD.COM. The disputed domain name is confusingly similar to both trademarks for HOSTELWORLD and HOSTELWORLD.COM. The only difference is that the disputed domain name includes the additional letters “ite” between “hostel” and “world”. The mere addition of these three letters to Complainant’s trademarks does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks under the Policy. Where the relevant trademark is recognizable within the disputed domain name, the addition of other letters or terms does not prevent a finding of confusing similarity under the first element. The Complainant succeeds on the first element of the Policy in relation to the disputed domain name. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or (iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. Previous UDRP Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden of production will shift to the respondent to rebut that prima facie case. The Panel concludes that none of the circumstances listed in paragraph 4(c) apply in the present circumstances. The Complainant has not authorized the Respondent to register or use the disputed domain name or to use the HOSTELWORLD trademark. The Complainant has rights in the HOSTELWORLD trademarks which clearly predate the Respondent’s registration of the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name. In the Response, there is no information provided as to the name of the hotel or hostel operated by the Respondent. The address of the Respondent, as provided by the Registrar, is “Hostelite World Bir Colony Road, Behind Surya Classic Hotel, Chougan”. This raises a question as to the Respondent’s corporate identifier, but does not necessarily by itself demonstrate that the Respondent is commonly known by the disputed domain name. See e.g., Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,WIPO Case No. D2000-0847. The Panel conducted Internet searches, including of accommodation and travel booking websites, and did not find any clear evidence that the Respondent was using the name HOSTELITE WORLD before notice of this dispute. Given in particular the Respondent’s name which includes “Hostelite World” (and given the fact that the Respondent is pro se) the Panel believed it appropriate to conduct a limited online search to ascertain to what extent the Respondent may be providing its claimed services, and as of when; the Panel reviewed a listing on the booking.com website (at www.booking.com/hotel/in/hostelite-world.html) that stated “Hostelite World has been welcoming Booking.com guests since Jul 22, 2021” which is after the Complaint was provided to the Respondent. There is no website at the disputed domain name, and so there is no evidence that the Respondent is making a bona fide use of the disputed domain name. William Grant & Sons Limited v. Tobias Schopf,WIPO Case No. D2017-2096. In the case file as set out by the Parties, there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name by Respondent. The Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name. The Respondent’s submission on this issue is that the Respondent “is a legally registered entity in India, in the form of a partnership, with the sole intention of providing affordable accommodation facilities at tourist destinations of/across India”. No evidence or detailed information was provided by the Respondent to support this statement, or to demonstrate rights or legitimate interests in respect of the disputed domain name. Nor was the name of the allegedly registered partnership provided. The Respondent had the opportunity to provide evidence that the Respondent was using the name “HOSTELITE WORLD” in respect of a bona fide offering of goods or services prior to notice to the Respondent of the dispute. The Respondent chose not to do so. The Panel infers that the Respondent has no such evidence. Further, while the Panel has undertaken a limited search as noted above, if such evidence does exist, it is not the role of the Panel to undertake comprehensive searches for evidence. Even if the Panel found such use by the Respondent today, that does not necessarily demonstrate bona fide use or use – in particular at the critical point of prior to notice of the dispute. The Panel finds that the Respondent has failed to produce any evidence to establish her rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the disputed domain name. The Complainant succeeds on the second element of the Policy in relation to the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith. The Complainant has been in operation for over 20 years and is very well-known in the online travel industry and by hostel operators in more than 178 countries. Despite assertions to the contrary in the Response, the Panel is aware that the Complainant’s website allows travelers to book hostels in India. The Respondent says that she, or the partnership that she appears to be involved with, intends to provide affordable accommodation in India, but did not submit any specific evidence on this point. (According to LinkedIn, a person in India with the same name as the Respondent previously worked for Thomas Cook Travel in India, but the Panel does not take this into account in reaching this decision; if this was the Respondent, it would support an inference of knowledge and targeting the Complainant.) Since the Respondent has made no active use of the disputed domain name, it is impossible to assess with any certainty what the Respondent’s precise motives were at time of registration. Due to the fame of the Complainant’s trademarks, and that the Respondent is intending to operate in the same market segment as the Complainant, the Panel considers that it is more likely than not that the Respondent registered the disputed domain name knowing of the Complainant, and with the intention to trade off the Complainant’s reputation. In the Response, the Respondent does not provide any reason why she selected the disputed domain name, nor did she state that she was not aware of the Complainant when she registered the disputed domain name. The thrust of the Respondent’s argument in relation to bad faith is that the disputed domain name is not identical to the Complainant’s trademarks and that there is no intentional or unintentional competition between the Respondent and the Complainant because the Respondent intends to use the disputed domain name to allow travelers to book only the properties operated by the Respondent. The Complainant has a longstanding trademark that is known by many hostel operators and backpackers. It is unlikely that the Respondent, who claims to be in the affordable accommodation business, can now start to use the disputed domain name for this business in good faith without causing consumer confusion. Businesses do not register the domain names similar to their competitors for no reason at all and in the particular circumstances of this case, the Panel feels entitled to infer that the Respondent’s intentions were in bad faith. Accordingly, the Panel considers it likely that the Respondent registered the disputed domain name to disrupt the business of the Complainant, who is a competitor. This is bad faith registration and use pursuant to paragraph 4(b)(iii) of the Policy. As is apparent from paragraphs 4(b)(ii) and (iii) of the Policy, active use is not always a dispositive pre-requisite for the purposes of paragraph 4(a)(iii) of the Policy. The fact that the website to which the disputed domain name resolves is currently inactive does not prevent a finding of bad faith under the doctrine of passive holding. See for example 537397 Ontario Inc. operating as Tech Sales Co. v. EXAIR Corporation,WIPO Case No. D2009-0567. Thus, for the above reasons, the Panel concludes that the registration and use of the disputed domain name were in bad faith. The Complainant succeeds on the third element of the Policy in relation to the disputed domain name. 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 John Swinson
Sole Panelist
Date: August 26, 2021
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