Complainant is Hostelworld.com Limited, Ireland, represented by Tomkins & Co, Ireland.
Respondent is Contact Privacy Inc., Canada / Jonathan Anderson, Canada.
2. The Domain Name and RegistrarThe 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 Domain Name. On June 15, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 16, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. 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 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. On July 2, 2021, an apparent third Party contacted the Center asking for a copy of the Complainant. On July 12, 2021, upon the third Party’s confirmation that he is the Respondent, the Center re-sent a copy of the Complaint to the Respondent. The Response was filed with the Center on July 20, 2021.
The Center appointed Robert A. Badgley 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.
On September 6, 2021, the Panel issued Procedural Order No. 1, as follows:
“The Panel has reviewed the case file, and in accordance with paragraphs 10 and 12 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the Panel issues the following order:
1. Respondent is requested to provide, by September 13, 2021, more evidence to show Respondent’s ownership of the disputed domain name
2. Complainant may comment on Respondent’s submissions to this Procedural Order No. 1 by September 20, 2021.
The Panel reserves its rights to issue further procedural orders if necessary.”
Respondent did not submit a response to the Procedural Order No. 1. Complainant submitted a response to Procedural Order No. 1 on September 20, 2021.
On October 5, 2021, Respondent stated that he had not replied to Procedural Order No. 1 in a timely manner because he never received it. The Panel, in its discretion, found Respondent’s statement plausible, given the pains to which Respondent had gone in filing a Response to the Complaint. It did not seem likely that, after making such an effort, Respondent would thereafter simply ignore the Procedural Order No. 1. The Panel thereafter exceptionally allowed Respondent, until October 10, 2021, to respond to Procedural Order No. 1.
On October 11, 2021, October 19, 2021, and October 20, 2021, Respondent submitted various materials to the Center, purportedly in response to Procedural Order No. 1.
On October 21, 2021, the Panel issued Procedural Order No. 2, allowing Complainant to reply to Respondent’s submissions by October 28, 2021. Complainant submitted a reply on October 27, 2021.
4. Factual BackgroundSince 1999, Complainant has provided online travel agent and booking services for hostels, and more recently has provided similar services for campsites, budget hotels, and the like. According to Complainant, it currently lists more than 36,000 properties in over 178 countries.
Complainant’s main website is “www.hostelworld.com”. The site is available in 23 languages. In 2012, this website was named the “Most Trusted Hostel-Booking Website” in a survey of over 5,600 travelers. In 2015, Complainant’s annual bookings were approximately 3,600,000 and its gross sales were EUR 43.9 million. In 2019, these figures were 3,800,000 and EUR 43.2 million, respectively.
Complainant holds several registered trademarks for HOSTELWORLD.COM in various jurisdictions, including International Reg. No. 899896 (registered on August 23, 2006 and designating Australia, European Union, United Kingdom, and United States), and European Union Reg. No. 9273947 (registered on January 7, 2011), and for HOSTELWORLD United States Patent and Trademark Office Reg. No. 4,305,641 (registered on March 19, 2013).
In prior UDRP decisions, panels have recognized the renown of Complainant’s HOSTELWORLD.COM trademark. See, e.g., Hostelworld.com Limited v. Contact Privacy Inc. / Shamlee Pingle,WIPO Case No. D2021-1849 (“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”).
According to the WhoIs record, the Domain Name was registered on February 15, 2021. Respondent alleges, however, that he has owned the Domain Name since 2009. Respondent annexed to the Response a “Domain history checker” document which appears to show that someone may have registered the domain Name as early as 2009, but this document makes no reference to Respondent.
A search of the Wayback Machine (“www.archive.org”) for the Domain Name shows that a website was associated with the Domain Name on June 11, 2011. At that time, there was a very rudimentary web page with scattered references such as “6-23 nights,” “airfare,” “3-5 star hotels,” “honeymoons,” “family travel,” etc. The web page also contains several phrases in Latin which have nothing to do with travel (such as “a ridiculous mouse will be born”). There is a reference to a purported company known as Pied-A-Terre, which apparently was contemplating the offer of travel booking services. The bottom of this June 11, 2011 web page bears a copyright notice: “Pied-A-Terre Networks Corporation © 2009.”
There was nothing in the record or on this Wayback Machine page to link “Pied-A-Terre” to Respondent. The Panel issued Procedural Order No. 1, discussed above, in part to ascertain whether there was any such link. Respondent ultimately produced a document from the Canadian government’s corporations registry which demonstrates that, on January 10, 2009, Respondent was one of the directors of Pied-A-Terre Networks Corporation, which corporation was later dissolved on November 23, 2011.
According to Respondent, he used the Domain Name since 2009 and “was commonly known” by the Domain Name. There is no evidence in the record to support this statement.
Respondent states that, on February 15, 2021, he “re-registered” the Domain Name via Google Domains “for the purpose of solving an account security lockout issue with another email address” that Respondent had been using. Because of a Google re-verification issue, Respondent alleges, he “no longer had access to the telephone number on file for 2 step verification and had his phones and tablets stolen a few months back”.
Respondent cites a February 17, 2021 email exchange with Google Domains to support his explanation why the Domain Name was “re-registered” by Respondent on February 15, 2021. The Panel issued Procedural Order No. 1 seeking further evidence that Respondent was the actual owner of the Domain Name since 2009, and in any event earlier than February 15, 2021. Respondent did provide any further direct evidence to support the claim that Respondent (as opposed to some third party) was the actual owner of the Domain Name since 2009. As noted above, however, there is some evidence that the website to which the Domain Name resolved for a period in 2011 is linked to Pied-A-Terre, a corporation of which Respondent was one of the directors.
Respondent states that his business includes “[h]ostel management, [s]oftware [d]evelopment and design, [m]anagement [c]onsultancy, [m]ergers and [a]cquisitions, [r]eal [e]state [a]cquisition and [h]olding”. Respondent also states that his businesses include “the management of small bed and breakfasts, youth hostels and hotels”. Despite the Panel’s issuance of Procedural Order No. 1 seeking evidence of Respondent’s purported business activities, however, Respondent has offered no proof of his alleged business activities.
The Domain Name currently does not resolve to an active website.
5. Parties’ Contentions A. ComplainantComplainant contends that it has satisfied each of the three elements required under the Policy for a transfer of the Domain Name.
B. RespondentRespondent’s allegations vis-à-vis are summarized above in the “Factual Background” section.
6. Discussion and FindingsParagraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Panel concludes that Complainant has rights in the trademark HOSTELWORLD.COM through registration demonstrated in the record. The Panel also concludes that the Domain Name is confusingly similar to that mark. The addition of the word “my” does not prevent Complainant’s trademark from being recognizable in the Domain Name.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel need not address this element of the Policy, given its conclusion below on the element of bad faith.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes, on the unsatisfying record presented here, that Complainant has failed to demonstrate that Respondent registered and used the Domain Name in bad faith. This is a close call, given the fact that Complainant’s trademarks today enjoy a fair measure of renown, and given the numerous assertions that Respondent made (e.g., he was “commonly known” by the Domain Name) but could not back up with any evidence.
Ultimately, two key factors inform the Panel’s decision here. One, there is insufficient evidence in the record that the trademark HOSTELWORLD.COM, even if registered at the time, enjoyed so much fame back in 2009 that one should conclude that Respondent was probably aware of the mark. Complainant’s evidence of its sales and so forth are presented from 2015 forward, which is not very probative if one is examining a Domain Name registration in 2009. Even though it is a valid, registered trademark which today is doubtless well-known, the combination of “hostel” and “world” to identify and distinguish a service that provides hostel-related booking services is apt to be a combination that numerous budding businesses are apt to consider, either verbatim or with some slight modification. It is not clear to the Panel that someone registering the Domain Name
Two, although Respondent’s overall account remains largely unsupported by evidence and is in other respects implausible, Respondent did provide evidence that he was a director of Pied-A-Terre Networks Corporation, a corporation formed in Canada in 2009 and in existence at the time of the alleged initial Domain Name registration back in 2009. A search of a Wayback Machine shows a very rudimentary website dating from June 2011, which bears a copyright notice by Pied-A-Terre Networks Corporation. This link between Respondent and Pied-A-Terre, coupled with the copyright notice on the 2011 website, provides some basis upon which to conclude that Respondent was in fact the owner of the Domain Name back in 2009, as he has alleged.
Given this conclusion, however tentative, the Panel must look at Respondent’s state of mind in 2009, not in 2021, which is the Domain Name registration date reflected in the current WhoIs database. On this basis, the Panel is unable to conclude, on a balance of probabilities and the record presented, as well as the Panel’s search, that Respondent more likely than not was aware of Complainant’s trademark in 2009. In the absence of such a finding, the Panel cannot conclude that the Domain Name was registered in bad faith.
The UDRP is designed to address clear cases of cybersquatting. As stated above, the Panel regards this case as a close call, given the holes in Respondent’s story. This dispute is perhaps best suited for a different forum, where allegations and evidence can be tested in a more rigorous manner than the UDRP process affords.
Complainant has not established Policy paragraph 4(a)(iii).
7. DecisionFor the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Sole Panelist
Date: November 4, 2021