ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION HomeAway.com, Inc. v. Jacques Cartier Case No. D2022-5000 1. The Parties The Complainant is HomeAway.com, Inc., United States of America ("United States"), represented by Kilpatrick Townsend & Stockton LLP, United States. The Respondent is Jacques Cartier, France. 2. The Domain Name and Registrar The disputed domain name
is registered with Wix.com Ltd. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 28, 2022. On December 28, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 5, 2023, 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 January 17, 2023 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 January 17, 2023. Because the Complaint has been submitted in English and the language of the registration agreement of the disputed domain name is French, the Center sent an email in relation to the language of the proceeding on January 17, 2023. On January 17, 2023, the Complainant submitted a request for English to be the language of the proceeding to which the Respondent has not replied. In response to a notification sent on January 27, 2023 by the Center that the Complaint was administratively deficient, the Complainant filed a second amended Complaint on January 27, 2023. 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"). page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in both French and English, and the proceedings commenced on January 30, 2023. In accordance with the Rules, paragraph 5, the due date for Response was February 19, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 22, 2023. The Center appointed Edoardo Fano as the sole panelist in this matter on February 28, 2023. 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. The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties. Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), "to employ reasonably available means calculated to achieve actual notice to Respondent". Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules, and the Supplemental Rules, and without the benefit of a response from the Respondent. 4. Factual Background The Complainant is HomeAway.com, Inc., a United States company owned by Expedia, Inc., operating in the field of travels and owning several trademark registrations for HOMEAWAY, among which the following: - United States Trademark Registration No. 3596177 for HOMEAWAY, registered on March 24, 2009; - European Union Trademark Registration No. 006609051 for HOMEAWAY, registered on November 11, 2008. The Complainant also operates on the Internet, its website being "www.homeaway.com", as well as "www.abritel.fr", a website dedicated to online vacation rental service primarily targeted at French speakers. The Complainant provided evidence in support of the above. According to the WhoIs records, the disputed domain name was registered on October 6, 2022, and when the Complaint was filed it resolved to a website in which luxury real estate and yachts rentals are supposedly offered in France, links to the Complainant's websites "www.vrbo.com" and "www.abritel.com" are included, and, in the "who are we?" section, a connection to the Complainant through the "abritel-prestige.com" website is claimed. The domain name was subject-matter of a prior UDRP proceeding, in which it was transferred from the Respondent to the Complainant (HomeAway.com, EG Vacation Rentals Ireland Limited v. Jacques Cartier, WIPO Case No. D2021-2669). 5. Parties' Contentions A. Complainant The Complainant states that the disputed domain name is confusingly similar to its trademark HOMEAWAY, as the disputed domain name wholly incorporates the Complainant's trademark with the addition of the word "prestige". Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain page 3 name or to use its trademarks within the disputed domain name, it is not commonly known by the disputed domain name, and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name is used by the Respondent to redirect Internet users to its website in which the same services as the Complainant are offered. The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant's trademark HOMEAWAY is distinctive and internationally known. Therefore, the Respondent targeted the Complainant's trademark at the time of registration of the disputed domain name and the Complainant contends that the use of the disputed domain name with the purpose to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's trademark as to an affiliation between the Respondent and the Complainant, falsely claiming to be associated with the Complainant, qualifies as bad faith registration and use. B. Respondent The Respondent has made no reply to the Complainant's contentions and is in default. In reference to paragraphs 5(f) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record. A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.3. 6. Discussion and Findings 6.1 Language of Proceeding According to paragraph 11(a) of the Rules, the Panel decides that the language of the proceeding will be English. The language of the Registration Agreement of the disputed domain name is French. The Complainant has requested English to be the language of the proceeding since the website at the disputed domain name is mainly in English and both the Respondent's disputed domain name and relevant website are hosted with a United States based company. The Panel finds that it would be not only unnecessary but also unfair, both economically and time wise, to request the Complainant to translate the Complaint. Furthermore, the Respondent did not comment to the Complainant's request to use English. See WIPO Overview 3.0, section 4.5.1. 6.2 Substantive Issues Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed: (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. A. Identical or Confusingly Similar The Panel finds that the Complainant is the owner of the trademark HOMEAWAY and that the disputed domain name is confusingly similar to the trademark HOMEAWAY. page 4 Regarding the addition of the term "prestige", the Panel notes that it is now well established that the addition of other terms (whether descriptive, geographical terms, letters, or otherwise) to a domain name does not prevent a finding of confusing similarity between the disputed domain name and the trademark. The addition of the term "prestige" does not therefore prevent the disputed domain name from being confusingly similar to the Complainant's trademark. See WIPO Overview 3.0, section 1.8. It is also well accepted that a generic gTLD, in this case ".com", is typically ignored when assessing the confusing similarity between a trademark and a domain name. See WIPO Overview 3.0, section 1.11.1. The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant's trademark, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following circumstances, in particular but without limitation: "(i) before any notice to you 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 (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 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." According to paragraph 4(a) of the Policy, the Complainant has the burden of proving the three elements of the Policy. However, satisfying the burden of proving a lack of the Respondent's rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite difficult, since proving a negative circumstance is generally more complicated than establishing a positive one. As such, it is well accepted that it is sufficient for the Complainant to make a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name in order to shift the burden of production to the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. The Complainant in its Complaint, and as set out above, has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent, who is not currently associated with the Complainant in any way, is not using the disputed domain name for a legitimate non-commercial or fair use or in connection with a bona fide offering of goods or services. The disputed domain name is used by the Respondent to redirect Internet users to its website in which the same services as the Complainant's are offered, falsely suggesting an affiliation with the Complainant. The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name. page 5 Moreover, the Panel finds that the composition of the disputed domain name carries a risk of implied affiliation as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1. Based on the facts of this case, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that "[f]or the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that [the respondent has] registered or [has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of [its] documented out-of-pocket costs directly related to the domain name; or (ii) [the 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 [the respondent has] engaged in a pattern of such conduct; or (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted 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 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". Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant's trademark HOMEAWAY in the field of travels is clearly established and the Panel finds that the Respondent likely knew of the Complainant, and deliberately registered the disputed domain name in bad faith, especially because the content of the website to which the disputed domain name resolves consists of purportedly offering for sale the same services as the Complainant, claiming a connection to the Complainant. The Panel further notes that the disputed domain name is also used in bad faith since on the relevant website the same services as the Complainant's are offered and a nonexistent connection to the Complainant is claimed, an activity clearly detrimental to the Complainant's business. The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in order both to disrupt the Complainant's business, in accordance with paragraph 4(b)(iii) of the Policy, and to attract, for commercial gain, Internet users to its website with the purpose of intentionally attempting to create a likelihood of confusion with the Complainant's trademark as to the disputed domain name's source, sponsorship, affiliation or endorsement, in accordance with paragraph 4(b)(iv) of the Policy. Furthermore, the Panel considers that the nature of the inherently misleading disputed domain name, which includes the Complainant's trademark in its entirety with the addition of the term "prestige", further supports a finding of bad faith. See, WIPO Overview 3.0, section 3.2.1. page 6 The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith. The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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. /Edoardo Fano/ Edoardo Fano Sole Panelist Date: March 1, 2023
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