ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION DER Touristik UK Ltd (t/a Voyages Jules Verne) v. LION Case No. D2024-3570 1. The Parties The Complainant is DER Touristik UK Ltd (t/a Voyages Jules Verne), United Kingdom, represented by Stevens and Bolton LLP, United Kingdom. The Respondent is LION, Thailand. 2. The Domain Name and Registrar The disputed domain name is registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2024. On September 4, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 5, 2024, 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 (“[unknown] BangkokThailand”) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 6, 2024, 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 amendment to the Complaint on September 6, 2024. The Center verified that the Complaint together with the amendment to the 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 September 12, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2024.
page 2 The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on October 10, 2024. 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 and its group companies are in the travel business, being one of the Complainant’s brands VOYAGES JULES VERNE, a tourism company established in 1978 which offers cruises, holidays, railway journeys, and tours worldwide. The Complainant, in addition to the domain name, at which its official webpage is available, is the owner of the following, amongst other, trademark registrations: - European Union Trade Mark No. 001085448, for VOYAGES JULES VERNE and device, filed on February 24, 1999, registered on January 22, 2003, successively renewed, in classes 39 and 42; - European Union Trade Mark No. 018123248, for JULES VERNE, filed on September 10, 2019, registered on January 11, 2020, in classes 39 and 43; and - United Kingdom Trade Mark No. UK00901085448, for VOYAGES JULES VERNE and device, filed on February 24, 1999, registered on January 22, 2003, successively renewed, in classes 39 and 42; The disputed domain name was registered on June 20, 2024, and presently does not resolve to an active webpage. The disputed domain name has been used in connection with a fraudulent email scheme in which the Respondent contacted at least three individuals, impersonating the Complainant to advertise false job opportunities and has used the disputed domain name as a platform through which such recipients could provide their personal information to sign up for such roles . 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant asserts to have promoted its services widely, presently enjoying a high-profile media and social media identity, having the VOYAGES JULES VERNE trademark acquired substantial goodwill and reputation through this extensive use, promotion and exposure in relation to travel and tourism services. The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark and prior domain name, being the Complainant’s trademark recognizable in the disputed domain name and the addition of a hyphen and of the term “world” not being capable of lessening the confusion, what is further corroborated by the use made of the disputed domain name in connection with fraudulent emails sent to individuals in an attempt to impersonate the Complainant. Also, according to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given the attempt to impersonate the Complainant in a fraudulent scheme as part of an illegal campaign to impersonate the Complainant and defraud innocent third parties. The Complainant thus contends that the registration of the disputed domain name was done clearly in bad faith given that the relevant part of the domain name is identical to the Complainant’s own domain name (used for the Complainant’s website and e-mail accounts) and that the Respondent intentionally registered the disputed domain name the domain name solely for the purpose of impersonating personnel of
page 3 the Complainant and/or to divert emails to false accounts. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant: (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 respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds that sufficient features of the mark, corresponding to an acronym used by the Complainant,1 are recognizable within the disputed domain name. Moreover, the Panel notes confusing similarity is affirmed by the fraudulent use made by the Respondent, discussed in further detail below. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of a hyphen and of the term “world” may bear on assessment of the second and third elements, the Panel finds the addition of such term[s] does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. 1 Pursuant to the Panel’s powers provided in paragraphs 10 and 12 of the Rules, the Panel searched the Complainant’s records in the European Union Intellectual Property Offices’ public trademark database and notes that the Complainant is also the owner of a figurative mark VJV, no. 001085273, registered on March 24, 2000.
page 4 Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. The Panel considers that the record of this case reflects that: - before any notice to the Respondent of the dispute, the Respondent did not use, nor has it made 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. Paragraph 4(c)(i) of the Policy, and WIPO Overview 3.0, section 2.2. - the Respondent (as an individual, business, or other organization) has not been commonly known by the disputed domain name. Paragraph 4(c)(ii) of the Policy, and WIPO Overview 3.0, section 2.3. - the Respondent is not 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. Paragraph 4(c)(iii) of the Policy, and WIPO Overview 3.0, section 2.4. - the record contains no other factors demonstrating rights or legitimate interests of the Respondent in the disputed domain name. Moreover, panels have held that the use of a domain name for illegal activity (e.g., phishing, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Respondent used the disputed domain name in an attempt to pass off as the Complainant in an illegal campaign to impersonate the Complainant and defraud innocent third parties, also showing clear knowledge of the Complainant and its trademark, and bad faith intent, at the time of registration. Panels have held that the use of a domain name for illegal activity (e.g., phishing, impersonation/passing off, or other types of fraud) constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. Based on the available record, the Panel finds the third element of the Policy has been established.
page 5 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. /Wilson Pinheiro Jabur/ Wilson Pinheiro Jabur Sole Panelist Date: October 24, 2024
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