Complainant is HomeAway.com, Inc., United States of America (“United States”) and EG Vacation Rentals Ireland Limited, Ireland, represented by Kilpatrick Townsend & Stockton LLP, United States.
Respondent is Jacques Cartier, France.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2021. On August 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 17, 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 Complainant on August 17, 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 in English on August 17, 2021. Complainant filed a second amended Complaint in English on September 16, 2021.
The Registrar also indicated that the language of the Registration Agreement was French. The Complaint was filed in English. The Center sent an email communication to Complainant on August 17, 2021, inviting Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of proceeding, a Complaint translated into French, or a request for English to be the language of proceedings. The Center also invited Respondent to submit comments. Complainant filed a request for English to be the language of proceedings on August 17, 2021.
The Center verified that the Complaint together with the amended Complaints 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 September 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 12, 2021.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on October 15, 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 BackgroundComplainant belongs to the Expedia group, one of the world’s largest travel companies. Complainant is a global online marketplace for the vacation rental industry, with sites currently representing over two million online bookable listings of vacation rental homes and apartment in over 190 countries.
The domain name
Complainant and its predecessors have continuously advertised and offered services and products under the ABRITEL name and mark. The ABRITEL services have been extensively promoted through online, print, and television advertising campaigns, and sponsorships.
Complainant owns numerous word trademarks consisting of the term “arbitel”, such as:
- European Trademark No. 015784382 registered on May 21, 2017 in classes 9, 36 and 43 of the Nice Classification, with a priority date as of August 29, 2016;
- International Trademark No. 857654 registered on April 14, 2005 in classes 35 and 38 of the Nice Classification;
- United States Trademark No. 79013729 registered on June 27, 2006 in classes 35 and 38 of the Nice Classification with a priority date as of April 14, 2005.
Complainant operates a website at “www.abritel.fr” since at least 2000, which currently receives an estimated average of 340000 monthly visits. It also operates since 2020 a website at “www.abritel-dff.com” that promotes the best vacation spots in France based on voting from thousands of vacationers, as well as the domain name
The disputed domain name was registered on December 15, 2020, which relates to a website that offers vacation rentals and homes and yachts under the name of Abritel-Prestige. Respondent’s website includes a text that falsely describes the Abritel-Prestige service as linked to Complainant:
“The abritel-prestige.com site is part of Homeaway, Inc., the leading vacation rental group in the world. At Homeaway, our mission is to make very vacation rental in the world accessible to all vacationers around the world through our network of locations.”
Respondent’s website also reproduces and uses Complainant’s HOMEAWAY name and mark at the bottom of Respondent’s website with a copyright notice that associates the alleged Abritel-Prestige entity with Homeaway and with several links to Complainant’s multiple websites, including to pages within the website “www.abritel.fr”.
On June 30, 2021, Complainant’s representative filed an online abuse report with the Registrar Wix.com, Inc. and sent a demand letter to the unknown Respondent through the Registrar regarding the registration and use of the disputed domain name. No response was received by Respondent, but Wix.com. Inc. responded on July 2, 2021 and advised that it was taking down Respondent’s infringing website at the disputed domain name.
5. Parties’ Contentions A. ComplainantComplainant first argues that the disputed domain name is confusingly similar to its ABRITEL trademark as it entirely incorporates the trademark and that the addition of the term “prestige” does not include the resulting likelihood of confusion. It rather suggests to Internet users that the disputed domain name is related to Complainant and perhaps to a higher end or exclusive property rental service offered by Complainant under its ABRITEL mark.
Complainant then considers that Respondent has no rights nor any legitimate interest in the disputed domain name. Respondent is not known under than name and has never been authorized by Complainant to use the ABRITEL>mark. Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the disputed domain name. Respondent has used, and is using, the disputed domain name solely for commercial gain. Respondent has used the disputed domain name to attract and redirect web traffic to a website that competes with and offers the very services that are offered by Complainant under its ABRITEL mark. Such use does obviously not amount to a bona fide offering of goods or services.
Complainant finally affirms that the disputed domain name was registered and is being used in bad faith. There can be no dispute that Respondent was well aware of Complainant and its ABRITEL mark and property rental service, given that Respondent posted a website that emphasized the ABRITEL mark, falsely claimed to be associated with Complainant and included links to a number of Complainant’s other websites and to pages within the website “www.abritel.fr”. Such use of Complainant’s ABRITEL mark to promote a competing property rental service, combined by Respondent’s false claim on the website it posted at the disputed domain name of being connected to Complainant, obviously amounts to a use in bad faith.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsParagraph 15(a) of the Rules instructs this Panel to “[…] decide a 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”.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or a service mark in which Complainant has rights;
(ii) 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.
Prior to turning to the merits of the case, the Panel however has to address a formal issue regarding the language of the proceedings.
A. Language of the proceedingsThe Complaint was filed in English on August 16, 2021.
On August 17, 2021, the Center notified the Parties in both English and French that the language of the Registration Agreement for the disputed domain name was French. The Center invited Complainant to provide satisfactory evidence of an agreement between the parties to the effect that the proceedings should be in English, to submit the Complaint translated in French or a request for English to be the language of the proceedings.
In its Complaint, confirmed by email of August 17, 2021 Complainant requested the proceedings to take place in English, based upon the fact that the website attached to the disputed domain name is entirely in English and that it claims to be affiliated to the Complainant, a United States based entity. All in all, Complainant considers that the circumstances tend to demonstrate that Respondent has a sufficient command of English, and that fairness requires the proceedings to be held in English.
Based upon the above, the Panel considers that there is no reason for French to be the language of the proceedings. While it had opportunity to do so, Respondent did not object for the proceedings to be held in English. The website attached to the disputed domain name being in English, the Panel considers Respondent to have a sufficient command of English for the proceedings to be held in that language. As a result, the decision shall be rendered in English.
B. Identical or Confusingly SimilarAccording to the Policy, paragraph 4(a)(i), Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant holds numerous word trademarks throughout the world consisting of the word ABRITEL.
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629). This is all the more true when the inserted trademark consists of the dominant part of the disputed domain name, and that the added elements are merely descriptive.
Such happens to be the case. The applicable generic Top-Level Domain name (“gTLD”), in the present case “.com”, is usually disregarded under the confusing similarity test and the addition of a term such as “prestige” does not exclude the confusing similarity (see, among others: Playboy Entreprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768; Inter-IKEA Systems B.V. v. Evezon Co. Ltd,WIPO Case No. D2000-0437; Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life,WIPO Case No. D2002-0363). The addition of the word “prestige” does nothing to avoid a finding of confusing similarity between the disputed domain name and Complainant’s trademark. See Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
C. Rights or Legitimate InterestsAccording to the Policy, paragraph 4(a)(ii), Complainant has to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624, demonstrating that the Respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent UDRP panels acknowledged that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, the burden of production shifts to the respondent to come forward with evidence to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., section 2.1 WIPO Overview 3.0).
In the present case, Complainant is the owner of several ABRITEL trademarks. Complainant has no business or other relationships with Respondent.
Complainant thus has made a prima facie case showing that Respondent has no rights or legitimate interests in the disputed domain name.
On its side, Respondent has not answered to the Complaint.
Considering the absence of a Response and the fact that Respondent is neither commonly known by the disputed domain name, nor has made a legitimate noncommercial or fair use of the disputed domain name, the Panel finds that Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.
D. Registered and Used in Bad FaithFor a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith requires the respondent to be aware of the complainant’s trademarks. In the present case, Complainant owns several ABRITEL trademarks, which enjoy a strong reputation. Taking into account the fact that the website attached to the disputed domain name replicates Complainant’s business model and reproduces Complainant’s official “homeaway” trademark and expressly claims to be affiliated to Complainant, so as to mistakenly lead Internet users to believe that the website is affiliated to Complainant. Consequently, there is no doubt that Respondent was perfectly aware of Complainant’s trademarks when it registered the disputed domain name.
As a result, a visitor who visits the disputed domain name will falsely believe the website to be related to a higher-end segment of Complainant’s rental services. By using the disputed domain name in such a way, Respondent intentionally attempts to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source or affiliation, in accordance with paragraph 4(b)(iv) of the Policy.
Consequently, the Panel is of the opinion that the disputed domain name has been registered and is being used in bad faith under the paragraph 4(a)(iii) of the Policy.
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
Philippe Gilliéron
Sole Panelist
Date: October 29, 2021