The Complainant is Hostelworld.com Limited, Ireland, represented by Tomkins & Co, Ireland.
The Respondent is Domain by Proxy, LLC, United States of America (“United States”)/ Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2021. On July 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 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 July 19, 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 July 20, 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 July 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2021.
The Center appointed Marilena Comanescu as the sole panelist in this matter on September 7, 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 BackgroundThe Complainant is an Irish company that operates a large and significant hostel booking site from its website at “www.hostelworld.com” which was launched in 1999. The Complainant is the owner of several trademark registrations for the word HOSTELWORLD.COM such as the International trademark registration number 899896, registered on August 23, 2006, and designating many countries worldwide, including the European Union, Australia, United States of America and United Kingdom, and covering services in Nice classes 39 and 43.
The Complainant received numerous awards an accolades in its industry.
The disputed domain name
The Respondent Carolina Rodrigues was involved in multiple past UDRP disputes where it was recognized that it is a serial cybersquatter1 . See for example ZipRecruiter Inc. v. Privacy service provided by Withheld for Privacy ehf/Carolina Rodrigues,WIPO Case No. D2021-2184 and cases cited therein.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is confusingly similar to its worldwide well-known HOSTELWORLD.COM trademark and domain name, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. The Complainant requests the transfer of the disputed domain name to it.
B. RespondentThe Respondent did not reply to the Complainants’ contentions.
6. Discussion and FindingsIn view of the absence of a Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly SimilarThe Panel finds that the Complainant holds rights in the HOSTELWORLD.COM trademark.
The disputed domain name incorporates the trademark HOSTELWORLD.COM with an additional letter, “k” between the words “hostel” and “world”. However, such addition does not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain name.
Numerous UDRP panels have considered that the addition of other terms (whether descriptive, pejorative, meaningless or otherwise), or letters, to trademarks in a domain name does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g.,”.com”, “.site”, “.info”, “.shop”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0. In any case, in this proceeding, the Complainant’s mark includes the “.com” particle.
Given the above, the Panel finds that the disputed domain name is confusingly similar to the trademark HOSTELWORLD.COM, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate InterestsThe Complainant asserts that the Respondent does not hold any trademark rights, license, or authorization whatsoever to use the mark HOSTELWORLD.COM, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods or services.
Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of the WIPO Overview 3.0.
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name or that the Respondent made a bona fide offering of goods or services or a legitimate noncommercial use under the disputed domain name.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad FaithThe Complainant uses the HOSTELWORLD.COM mark since 2006 and the corresponding domain name since 1999 and the mark is well-known in several jurisdictions.
UDRP panels have found the Complainants’ mark to be distinctive and with reputation in several jurisdictions. See Hostelworld.com Limited v. Domain by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2021-2283; or WRI Nominees Limited v. Whois Privacy Protection Service, Inc. / Pramualsin Kerdngam,WIPO Case No. D2015-0107.
From the above and the available record, the Panel finds that the disputed domain name was registered by the Respondent in bad faith, knowing the Complainant and targeting its trademark.
At the time of filing the Complaint, the disputed domain name resolves to a parking page providing links to various third parties pages.
Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to the respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location” is evidence of registration and use in bad faith.
The Respondent was using without permission the Complainant’s well-known trademark in order to get traffic on its web portal and to misleadingly divert Internet users to third parties websites, and thus to potentially obtain commercial gain from the false impression created with regard to a potential affiliation or connection with the Complainant.
Aditionally, as mentioned above under section 4, the Respondent has been the subject of adverse decisions in numerous UDRP proceedings where it was recognized that the Respondent is a serial cybersquatter. This falls within the circumstances listed by paragraph 4(b)(ii) of the Policy and demonstrates that the Respondent has engaged in a pattern of bad faith behavior.
Previous UDRP panels have found that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark can, by itself, constitute a presumption of bad faith for the purpose of Policy. See section 3.1.4 of the WIPO Overview 3.0.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
7. DecisionFor 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
Marilena Comanescu
Sole Panelist
Date: September 21, 2021
1 See section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition regarding Panel’s powers to conduct limited searches.