Complainant is Onetwotrip Ltd. of Road Town, Tortola, British Virgin Islands, United Kingdom of Great Britain and Northern Ireland, represented by A & T Lawyers of Russian Federation.
Respondent is Aleksandr Mendel of Brestskaya, Belarus. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2013. On August 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 20, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and confirming Respondent’s contact details.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2013. A Response was not filed with the Center by the September 10, 2013 deadline. Respondent’s default was confirmed by the Center on September 11, 2013.
The Center appointed Clark W. Lackert as the sole panelist in this matter on September 27, 2013. 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
Complainant is a company based in the British Virgin Islands which provides agency services in the field of travel and hospitality. Complainant owns trademark rights in ONE TWO TRIP for services related to travel and travel agency services in classes 39 and 43 which date at least as early as February 18, 2011. The foregoing has been confirmed by the Memorandum of Association of Complainant and Russian Trademark Registration Certificate Number 461383 for a composite mark featuring ONE TWO TRIP, copies of which were submitted with the Complaint.
According to the WhoIs information associated with the disputed domain name which was confirmed by the Registrar, Respondent is based in Belarus and the disputed domain name was registered on March 27, 2012. 5. Parties’ Contentions A. Complainant
Complainant claims that the disputed domain name is likely to be confused with its ONE TWO TRIP service mark because the domain name incorporates Complainant’s ONE TWO TRIP mark in its entirety. Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because Respondent has not registered a trademark incorporating ONE TWO TRIP, has not been commonly known by the name “One Two Trip”, and has not made legitimate noncommercial or fair use of the disputed domain name. Complainant alleges that the disputed domain name has been used in bad faith, citing the use of its ONE TWO TRIP service mark, the advertisement of travel services, and the incorporation of links to third party websites providing travel related services on webpages displayed by the disputed domain name. Complainant has provided copies of webpages featured at the disputed domain name and a notarized affidavit confirming the content of the disputed domain name. It is the Complainant’s position that the content composition of the disputed domain name is likely to lead consumers to erroneously believe that the disputed domain name is related to Complainant. Additionally, Complainant suggests that the webpages associated with the disputed domain name may incorporate technologies which illegally acquire Internet users’ bank details.
Complainant has requested that the disputed domain name be transferred from Respondent to Complainant. B. Respondent
A Response to the Complaint was not submitted by the deadline set by the Center. Respondent sent a short e-mail to the Center on September 13, 2013, but it did not include any substantive or procedural comments. 6. Discussion and Findings A. Identical or Confusingly Similar
The record shows that Complainant has trademark rights in ONE TWO TRIP, specifically Russian Trademark Registration No. 461383 for a composite mark featuring ONE TWO TRIP dated May 11, 2012. The priority date of the registration is February 18, 2011, over one year prior to registration of the disputed domain name on March 27, 2012. The Panel notes that the disputed domain name was registered before the trademark was granted registration, however the priority date of the trademark registration precedes registration of the disputed domain name and there is online evidence from third parties of earlier use of the ONE TWO TRIP mark by Complainant. As noted in prior UDRP decisions, ownership of a trademark which is identical or confusingly similar to a domain name subject of a dispute is sufficient for the purposes of paragraph 4(a)(i) of the Policy. It is ownership of a trademark, not the date of priority or registration, which should be evaluated. See, e.g., MADRID 2012, S.A. v. Scott Martin-MadridMan Websites,WIPO Case No. D2003-0598 and Stoneygate 48 Limited and Wayne Mark Rooney v. Huw Marshall,WIPO Case No. D2006-0916 (citing the consensus view that the UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights for the first element of the Policy).
The dominant literal element of Complainant’s composite mark registration is ONE TWO TRIP, and it is clear from the record that Complaint uses ONE TWO TRIP as a source indicator for its services in advertising including on pages displayed at Complainant’s domain name. There is precedent for regarding literal elements of composite marks as the dominant element of such marks (see, e.g., Mentor ADI Recruitment Ltd. v. Teaching Driving Ltd.,WIPO Case No. D2003-0654 which cited the LET’S DRIVE literal portion of a composite mark as the prominent element of that mark in support of a finding of confusing similarity with the disputed domain name ). This view is supported by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, which cited the consensus view that “figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark”.
Based upon Respondent’s use of the literal element of Complainant’s ONE TWO TRIP composite mark in the disputed domain name , the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
Complainant has established rights in the ONE TWO TRIP service mark which precede the creation of the disputed domain name . There is no evidence in the record to indicate that Respondent is associated or affiliated with Complainant, or that Respondent has any other rights or legitimate interests in ONE TWO TRIP.
Complainant has made out its prima facie case, which Respondent has not rebutted. Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant indicates that the disputed domain name has been used to illegally acquire Internet users’ bank details. There is no evidence to support this claim and as such this claim cannot be evaluated. However, the record (Annex I to the Complaint) does show that the disputed domain name has been used in a manner which could cause Internet users to mistakenly believe that the content was posted by Complainant or that the services advertised are offered by, authorized by, or otherwise associated with Complainant. The content of the website at the disputed domain name has featured Complainant’s ONE TWO TRIP service mark and has incorporated information regarding travel agency services and links to third party websites offering service competitive to those provided by Complainant. The use of Complainant’s mark and the content of the websites displayed at the disputed domain name create a risk of consumer confusion, a risk which is compounded by the incorporation of Complainant’s ONE TWO TRIP mark in the disputed domain name and the similarity between this domain name and the domain name utilized by Complainant to promote its services located at “www.m”.
The record further shows that the disputed domain name has featured a link to the domain name which advertises inexpensive airline tickets. The incorporation of third party links regarding services competitive to those provided under another party’s trademark may support a finding that a domain name registrant was aware of the other party’s mark at the time the domain name was registered. See Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited,WIPO Case No. D2009-0728.
The content of the website at the disputed domain name suggests to the Panel that Respondent is aware of Complainant. Specifically, the record shows that Respondent’s website has been used to advertise travel reservation services and information regarding travel between the Russian Federation and former republics of the Soviet Union (Commonwealth of Independent States) (Annex I to the Complaint). Registration and use of a domain name incorporating another party’s trademark and content which expressly refers to services provided under that mark has been held to be indicative of a respondent’s knowledge of the services provided under the mark at issue. See Caesars World, Inc. v. Forum LLC,WIPO Case No. D2005-0517.
By registering the disputed domain name and offering links to third party services directly competitive with those of Complainant, Respondent is diverting traffic from Complainant’s domain name in violation of paragraph 4(b)(iv) of the Policy. There is no evidence in the record to refute this contention. Registration of a confusingly similar domain name for the purpose of displaying links offering competitive products or services has been found in prior UDRP cases to be indicative of bad faith in violation of paragraph 4(b)(iv) of the Policy. See, e.g., S.N.C. Jesta Fontainebleau v. Po Ser,WIPO Case No. D2009-1394, and Serta Inc. v. Charles Dawson,WIPO Case No. D2008-1474.
The Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have 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 Complainant.
Clark W. Lackert
Sole Panelist
Date: October 11, 2013
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