The Complainant is Fareportal Inc. of New York, New York, United States of America (“USA” or “US”), represented by Cowan, DeBaets, Abrahams & Sheppard, LLP, USA.
The Respondent is Nguyet Dang of Honolulu, Hawaii, USA. 2. The Domain Name and Registrar
The disputed domain name (the “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 4, 2016. On August 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 5, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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”), all of which apply to domain disputes in the “.co” country code Top-Level Domain (“ccTLD”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2016.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on September 5, 2016. 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 is a business corporation organized under the law of the US State of New York and headquartered in New York City. It provides the technology platform for several online travel businesses operated by its affiliates. One of these is the commercial website “www.m” operated by the Complainant’s affiliate WK Travel, Inc., a Nevada corporation that holds US trademark registration number 4545969 for the standard character mark ONETRAVEL (registered June 10, 2014). That website (the “Complainant’s website”) allows users to search and reserve airline flights, hotel rooms, car rentals, cruises, package tours, and related travel activities in much of the world.
The Complaint and the US trademark registration claim first use in commerce of the ONETRAVEL mark in December 1998. Screenshots from the Internet Archive’s Wayback Machine confirm that the Complainant’s website has been operated, with variations in design but using the ONETRAVEL name and some of the same toll-free telephone numbers, for at least several years before the Domain Name was created.
According to the Registrar, the Domain Name was registered on July 20, 2010 and last transferred on October 3, 2011. The Complaint attaches screenshots of websites to which the Domain Name formerly resolved. One is operated by TripHobo, a competitor of the Complainant’s affiliate in the online travel reservations business, another by Edmunds (used car sales), and another is simply a landing page for pay-per-click (“PPC”) links to third-party advertisers for airline tickets. At the time of this Decision, the Domain Name alternately resolves to the Edmunds website and to the Complainant’s own website. 5. Parties’ Contentions A. Complainant
The Complainant argues that the Domain Name is identical or confusingly similar to its affiliate’s ONETRAVEL mark, which the Respondent is using without permission and in bad faith, in an effort to mislead Internet users for commercial gain. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(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.
Under paragraph 15(a) of the Rules, “A Panel shall 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”. A. Identical or Confusingly Similar
The first element of the UDRP is “essentially a standing requirement” requiring “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. The Domain Name meets this test by comparison with the ONETRAVEL trademark registered by the Complainant’s affiliate.
The Domain Name also includes the ccTLD “.co”. In determining whether a domain name is identical or confusingly similar to a complainant’s mark, UDRP panels have typically disregarded the generic Top-Level Domain (“gTLD”) or the ccTLD. This is appropriate in most cases except in certain cases where the applicable top-level suffix may itself form part of the relevant mark. See WIPO Overview 2.0 paragraph 1.2. The Domain Name in this proceeding includes the ccTLD assigned to Colombia, which is not limited to residents of that country and has been widely advertised to Internet users in the United States and other countries, as indicated on the website of the registry operator. This ccTLD does not itself form part of the relevant mark, is not materially distinctive and does not avoid confusing similarity between the Domain Name and the relevant mark.
The Panel concludes that the first element of the Policy has been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this issue shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1.
Here, the Complainant has made a prima facie case by establishing trademark rights in ONETRAVEL and showing that the Respondent used an identical Domain Name to redirect Internet users to websites advertising competing services. The Respondent has not come forward to offer evidence of rights or legitimate interests in the Domain Name, such as a mark or business under a similar name, and the Panel does not find any indication in the case file. Thus, the Complainant prevails on the second element of the Complaint. C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (“you” refers to a respondent):
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
This example fits the circumstances of this case, absent any proffered or logical alternative explanation. The Domain Name has been used, even after notice of this proceeding, to redirect users to various online sites that advertise commercial goods and services, including those that compete directly with the offerings of the Complainant’s affiliate. This is sufficient to establish bad faith for purposes of the Policy. It has continued for nearly five years, even assuming the Respondent did not obtain the Domain Name until the most recent reported transfer date. The Complainant’s mark and online presence were well established in the online travel industry by then, and the Respondent selected a Domain Name in the ccTLD “.co” (differing from the Complainant’s gTLD “.com” by a single letter) and redirected it specifically to a competing travel website operated by TripHobo.
In these circumstances, the Panel finds it unnecessary to rely on the Complainant’s theory of “constructive notice” of its registered mark. Nor is this case properly viewed as an instance of “passive holding” (see WIPO Overview 2.0, paragraph 3.2), since the Domain Name has been used; it has been redirected to specific websites. Rather, the Respondent’s use has been commercial and illegitimate, exploiting the trademark value of the name, and for that reason the Panel finds that the third element of the Complaint is well grounded. 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 Domain Name be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Date: September 19, 2016
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