Complainant is T AG of Leipzig, Germany, represented by Bettinger Schneider Schramm Patent- und Rechtsanwälte, Germany.
Respondent is Travel TV/Travel Ltd. of Frankfurt, Germany, represented by Dorenz Ströll Rönneper & Partner Rechtsanwälte, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with Schlund + Partner (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2012. On October 4, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2012. On November 2, 2012, the Center received by email a request for extension to file a Response. The Center granted Respondent additional two days and extended the deadline of the due date for Response until November 7, 2012. The Response was filed with the Center on November 7, 2012.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on November 16, 2012. 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 German travel company incorporated as a stock corporation with legal domicile in Leipzig, Germany. Complainant’s business is to provide booking and vacation planning services through a network of online portals primarily in Germany, Austria and Switzerland as well as The Netherlands.
Complainant has submitted evidence that it is the registered owner of numerous trademarks relating to the designation “Travel 24”, inter alia:
- Word mark TRAVEL 24, German Patent and Trademark Office (Deutsches Patent- und Markenamt (DPMA)), Registration Number: 39745622, Registration Date: March 23, 1998; Status: Active;
- Word mark TRAVEL 24, Office for Harmonization in the Internal Market (OHIM), Registration Number: 001051226, Registration Date: September 1, 2000; Status: Active;
- Word/Design mark TRAVEL, Office for Harmonization in the Internal Market (OHIM), Registration Number: 010815091, Registration Date: September 7, 2012; Status: Active.
Complainant has further evidenced to own a number of domain names relating to the designation “Travel 24”, inter alia, , , , as well as . All of those domain names redirect to Complainant’s official websites at “www.t”, “www.”, “www.” as well as “www.”, respectively, under which Complainant offers its various online travel services.
The disputed domain name was created on March 28, 2008 and is registered under the following WhoIs contact information: “Travel Tv/T Ltd., Hessen, 60327 Frankfurt/Germany”. The disputed domain name redirects to a website at “www.t”, which provides, inter alia, travel videos as well as advertisements of airlines and hotels relating to a vast number of countries world-wide; the website is headlined “t” with the subtitle “See before you travel” and promotes the possibility to book advertising space relating to the travel and tourism market for less than € 1 per day.
Complainant has requested the disputed domain name to be transferred to Complainant, while Respondent has requested to deny this remedy. 5. Parties’ Contentions A. Complainant
Complainant states that its portfolio of German-language online portals covers all major German tour operators with a daily selection of up to 100 million last minute offers and travel packages as well as over 200,000 hotels and more than 750 airlines with scheduled, including chartered and budget flights. Complainant claims that it already had been founded in 1996 and listed on the Frankfurt Stock Exchange since 2000 and that it also had been part of the prime standard segment of the Frankfurt Stock Exchange since 2003. In the financial year 2011, Complainant’s revenues allegedly amounted to € 19,092,000 with an annual net profit of € 1,878,000. Complainant claims to have created its main website at “www.t” already in 1996 and currently attracts about 2.37 million unique visitors per month thereunder.
Complainant asserts to be well-known in the travel and tourism market place as it has been using its TRAVEL 24 trademarks in connection with its services already since 1996. Complainant states that the disputed domain name is identical with its TRAVEL 24 trademarks since the disputed domain name incorporates the entirety of the TRAVEL 24 trademarks in the exact same textual string with no additional text or any other distinguishing elements.
Complainant further suggests that Respondent has no rights or legitimate interests in respect of the disputed domain name because (1) Complainant is in no way affiliated with Respondent nor has it licensed or otherwise permitted Respondent to use any of its TRAVEL 24 trademarks or to register or use any such domain names; (2) Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services as Respondent registered the disputed domain name 11 years after the registration of Complainant’s TRAVEL 24 trademarks and has used the disputed domain name ever since in connection with a referral advertising scheme, which is similar in function to a standard pay-per-click (PPC) mechanism and ultimately nothing more than paid advertisements, submitted under a fee sharing arrangement by travel agencies, hotels and travel companies, thus generating unwarranted financial gain by trading on the good will associated with Complainant’s TRAVEL 24 trademarks and finally (3) there is no evidence apparent to suggest that Respondent legitimately trades under or is commonly known by a name correspondent to the disputed domain name nor is Respondent making a non-commercial or fair use thereof.
Also, Complainant claims that the disputed domain name was registered and is being used in bad faith since (1) Complainant is well-known in the travel and tourism market place already since 1996 and it is thus inconceivable that Respondent was unaware of Complainant and the TRAVEL 24 trademarks at the time it selected the disputed domain name, (2) Respondent’s use of the disputed domain name in connection with travel industry related advertising will likely result in significant disruption to Complainant’s business and damage the integrity of its trademarks, (3) Respondent has affirmatively misled visitors to its website, is intentionally riding on the fame of Complainant’s TRAVEL 24 trademarks and services in order to profit from the sale of advertising space to Complainant’s competitors in the travel sector and has thus generated revenues as a direct result of Internet user confusion and finally (4) Respondent does not provide any disclaimer or explanatory text to notify visitors of the lack of connection between Complainant and Respondent, thus makes no attempt to prevent visitors from taking away the false impression that the disputed domain name redirects to one of Complainant’s legitimate authorized websites. B. Respondent
Respondent claims that Complainant cannot rely on trademark rights in the term “Travel 24” as this term is only generic or descriptive, respectively, and has to be kept free for the use of anyone offering products or services that have to do with traveling. Respondent contests that Complainant’s trademarks TRAVEL 24 are well-known since Complainant did not present evidence such as a market research as proof of the high profile of Complainant’s name and trademark. Respondent points to the fact that there are numerous similar terms in use for travel agencies on the Internet such as , , or . Respondent further emphasizes that the services offered on the website at are mostly just informative videos, which would be classified in class 38 of the Nice Classification contrary to class 39 for which Complainant’s trademarks enjoy protection. Respondent also stresses that there are significant differences between Complainant’s website at “www.t” and Respondent’s website at “www.t”, in particular in their overall composition, colors, logos and other elements such as the slogan used by Respondent “See before you travel”, which makes clear that the website offers videos and is not a travel agency.
Respondent further asserts to use the disputed domain name in connection with a bona fide offering of its services which are different from those offered by Complainant. Respondent stresses that it selected a generic domain name for its website and had no intention to violate any third party’s rights, which must be derived, among others, from the fact that Respondent started using the disputed domain name long before any notice of this dispute, namely already in 2010. According to Respondent’s assertions, Complainant has not provided any evidence that the disputed domain name was selected opportunistically to create confusion and exploit Complainant’s trademarks. On the contrary, Respondent’s website is obviously not addressed to a German- or Dutch-speaking public for which Complainant claims use of the TRAVEL 24 trademarks in the first instance; Respondent’s English-language website offers up to now mainly video information about the Asian region addressed to a world-wide public which is mostly not even Complainant’s potential consumer. Respondent alleges not to have contracted to date any third parties for advertising on its website for commercial gain, but is broadcasting the videos especially for the Asian region without profit.
Finally, Respondent claims not to have registered and not to use the disputed domain name in bad faith because (1) there is no evidence showing that Respondent has tried to sell or transfer the disputed domain name but instead has been using it for video broadcasting services already since 2010, (2) the disputed domain name was not registered in order to prevent Complainant from reflecting its trademark in a corresponding domain name since the top-level-domain “.tv” has nothing to do with services provided by a travel agency and Respondent did not choose the second-level-domain “travel24” in order to damage Complainant, (3) Complainant and Respondent are no competitors on the travel business market, thus the disputed domain name was not registered by Respondent primarily to disrupt Complainant’s business, (4) Respondent did not register the disputed domain in an intentional attempt to attract for commercial gain Internet users to its website since the scope of the travel videos broadcasted by Respondent is completely different from the scope of the travel agency services offered by Complainant and finally (5) Complainant is not entitled to exclude all others from the use of the generic term “Travel24” in a descriptive sense. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that Complainant owns registered trademark rights in the designation “Travel 24”. Complainant has provided evidence of ownership of various registered trademarks (including word marks) for TRAVEL 24. Contrary to Respondent’s contentions, Complainant can rely on those validly registered trademark rights for purposes of this proceeding regardless of whether or not the designation “Travel 24” is generic and/or descriptive.
Furthermore, the disputed domain name is not only confusingly similar to, but even identical with Complainant’s TRAVEL 24 trademarks. The disputed domain name contains Complainant’s trademarks in its entirety with no additional text or any further distinguishing elements except for the top-level-domain “.tv” which, however, has long been held by many panelists to typically be irrelevant in an examination of identity (see e.g.: Credit Management Solutions, Inc. v. Collex Resource Management,WIPO Case No. D2000-0029).
Therefore, the first element under the Policy as set forth by paragraph 4(a)(i) in the case at hand is fulfilled. B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of both parties’ contentions, Respondent apparently has neither made use of the disputed domain in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent made a legitimate noncommercial or fair use without intent for commercial gain (Policy, paragraph 4(c)).
Complainant obviously has not authorized Respondent to use its TRAVEL 24 trademarks in any way.
Furthermore, there is no apparent reason to believe that Respondent has been commonly known by the disputed domain name, neither as an individual nor as a business within the meaning of the Policy, paragraph 4(c)(ii). Respondent itself has not come up with any argument or evidence that it has up to date obtained any recognition under “Travel TV” and/or “Travel Ltd.” which apparently is Respondent’s business name.
Moreover, the Panel takes the view that Respondent did not make a legitimate noncommercial or fair use of the domain name without intent for commercial gain in the sense of paragraph 4(a)(iii) of the Policy. Even though the Panel does not totally follow Complainant’s evaluation of Respondent’s website at “www.t” to be merely a referral advertising scheme similar in function to a standard pay-per-click (PPC) mechanism, the Panel at the same time may not subscribe to Respondent’s assertions that it has not contracted any third parties for advertising on its website for commercial gain, but is broadcasting its videos without profit. Respondent’s website obviously includes a considerable number of advertising elements such as the company logos of some major international airlines (e.g. Lufthansa or Vietnam Airlines) and also contains numerous videos that are not informative from a geographic point of view, but are advertising the services of individual hotels, tourism agencies or the like. The Panel has difficulties to believe that all of those company logos and advertising videos have been included into Respondent’s website for no revenue whatsoever. But even if this was the case, the commercial purpose of Respondent’s website still becomes apparent from the so-called “advertise with us” tab which redirects the reader to a careful explanation of how he or she might book advertising space relating to the travel and tourism market “for a good offer”, namely less than € 1 per day. Against this background, there can be no reasonable doubt that even if Respondent has not profited up to date from its website, Respondent still strives for commercial gain under the disputed domain name. Accordingly, Respondent has no rights or legitimate interests in the disputed domain name deriving from a scenario covered by paragraph 4(c)(iii) of the Policy.
Finally, the Panel also has come to the conclusion that Respondent cannot claim rights or legitimate interests in the disputed domain name by having used it in connection with a bona fide offering of goods or services as set forth by paragraph 4(c)(i) of the Policy.
It is undisputed that Respondent started using the disputed domain name to run its website at “www.t” already in 2010, thus long before the filing of the Complaint brought against it by Complainant. It is also of no question between the parties that Respondent has made use of the disputed domain name in connection with the offering of a service (except that with regard to the nature of such service Respondent claims to run a global video portal relating to traveling and holidays designed for a worldwide public while Complainant talks of a referral advertising scheme similar to a standard PPC website). Therefore, it can be found that Respondent in fact had been using the disputed domain name in connection with an offering of a service long time before it took notice of the dispute with Complainant.
The decisive question, however, remains as to whether or not such offering was made bona fide within the meaning of the Policy, paragraph 4(a)(i). Panelists have held that “bona fide” means “in or with good faith” (see e.g. Universal City Studios, Inc. v. G.A.B. Enterprises,WIPO Case No. D2000-0416 with reference made to the definition of “bona fide” provided in Black’s Law Dictionary).
In evaluating the parties’ contentions and all other facts to this case brought before the Panel relating to an acting of Respondent with or without good faith, it must be noted that once Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in respect of the disputed domain name, the burden of production shifts to Respondent to come forward with an appropriate allegation or evidence demonstrating to the contrary (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1).
Complainant asserts that its TRAVEL 24 trademarks are well-known in the travel and tourism market place as Complainant has been using them actively for eleven years prior to Respondent’s registering of the disputed domain name. Complainant concludes that it is inconceivable that Respondent was unaware of Complainant and its TRAVEL 24 trademarks at the time it selected the disputed domain name for its business. Complainant, furthermore, argues that the use of Complainant’s registered TRAVEL 24 trademarks in an identical domain name (by simply mirroring the format (trademark-dot-ccTLD/gTLD) of all of Complainant’s legitimate domain names) was meant to target Complainant, to deceive Internet users and to gather unwarranted financial gain by catching Internet traffic intended for Complainant’s authorized travel websites to its own Internet presence, thus capitalizing on Internet user confusion.
Respondent, in turn, points to the fact that it selected a generic domain name for its website and had no intention to violate any of Complainant’s rights. Respondent argues that there was no evidence that the disputed domain name was selected opportunistically to create confusion and to exploit Complainant’s trademarks. Respondent further submits that given the generic or descriptive nature of Complainant’s trademarks, Respondent has a legitimate interest in using the disputed domain name also for commercial purposes. Respondent claims that there are decisive differences between the look of both parties’ websites as well in relation to what both parties offer on the Internet. In particular, Respondent’s English-language website addresses not to a German- or Dutch-speaking public for which Complainant claims use of the term “Travel 24” in the first place.
The Panel follows Respondent in that Complainant’s TRAVEL 24 trademarks are of a somewhat generic or descriptive quality and that it is, therefore, possible in theory that someone else but Complainant might be entitled to legitimately use the designation “Travel 24” in a certain setting.
At the same time, it should be noted, that while Respondent argues that it had neither intended to target Complainant nor had it had the intention to violate any of Complainant’s rights, Respondent, however, has by no means disputed to have had actual knowledge of Complainant’s TRAVEL 24 trademarks at the time it registered the disputed domain name. On the contrary, Respondent merely stressed the fact that Complainant’s TRAVEL 24 trademarks are only generic or descriptive and had to be kept free for the use by everyone offering products or services that had to do with traveling, inclusive of Respondent. This taken all together allows the conclusion that Respondent in fact knew of Complainant’s TRAVEL 24 trademarks at the time of registration of the disputed domain name back in 2008. This assertion is also supported by the fact that Respondent is apparently located in and doing business from Germany where Complainant’s TRAVEL 24 trademarks apparently are being used and well introduced into the travel market in the very first place.
Moreover, the Panel has also taken into account that the designation “Travel 24” in fact is not a straight dictionary term (especially not from the point of view of both parties which are located in and doing business from Germany), but is a combination of an English dictionary term (“travel”) and the number “24” as an abbreviation of “24 hours” (indicating the “at-all-times-availability” of Internet services). It is undisputed that Complainant started its business under the TRAVEL 24 trademarks roughly 11 years before Respondent’s setting up of its website at “www.t”. Whether or not Complainant’s trademarks TRAVEL 24 are in fact well-known (as it has been contested by Respondent), and even given the existence of a number of similar terms in use for travel agencies on the Internet such as , , or , it still needs to be accepted that Complainant has established over the years a remarkable business with very considerable revenues under its TRAVEL 24 trademarks. In none of Respondent’s contentions, however, is explained why Respondent needed to rely for its business on the exact same word combination as Complainant’s trademarks TRAVEL 24 are composed of. Respondent primarily defends itself in saying that the term “Travel 24” is only generic or descriptive and has to be kept free for the use by everyone offering products or services that have to do with traveling, so that Respondent had a legitimate interest in using the domain name also for commercial purposes. In the absence of any other explanation brought forward by Respondent, the conclusion can in fact be drawn that Respondent chose the disputed domain name for its business not only with knowledge of Complainant’s TRAVEL 24 trademarks but having in mind the recognition which the TRAVEL 24 trademarks had already obtained on the travel market in 2008. Therefore, even if Respondent did neither intend to violate any of Complainant’s rights nor to harm Complainant’s business, apparently Respondent was still hoping to profit for its own business from the goodwill which Complainant’s trademarks TRAVEL 24 had established.
To sum up, the Panel finds that Complainant has made up a prima facie case that Respondent did not act in good faith when using the disputed domain name for its services offered under the website at “www.t” and that the mere defense line of argumentation by Respondent is not sufficient to overcome the shifted burden of production on the existence of any rights or legitimate interests of Respondent in the disputed domain name.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy. C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith since, by using the disputed domain name, Respondent intentionally attempted to attract, for commercial gain, Internet user to his website by creating a likelihood of confusion with Complainant’s TRAVEL 24 trademarks within the meaning of paragraph 4(b)(iv) of the Policy.
As has already been laid down in detail, it must be found that Respondent in fact knew of Complainant’s TRAVEL 24 trademarks at the time of the registration of the disputed domain name in 2008.
Furthermore and as discussed earlier, Respondent has not come up with any reasonable explanation as to why it needed to rely on the very exact designation for its website as it is reflected in Complainant’s TRAVEL 24 trademarks, except that Respondent has pointed to the fact that the designation “Travel 24” was merely generic or descriptive and needed to be kept free for the use of everyone.
Also, the Panel has found that contrary to Respondent’s allegations, there can be no reasonable doubt that even if Respondent has not profited up to date from its website at “www.t”, it still strives for commercial gain under the disputed domain name by trying to attract third parties to book advertising space relating to the travel and tourism market for less than € 1 per day.
Therefore, the Panel finds that regardless of whether or not Respondent’s Internet activities under the disputed domain name are able to result in significant disruption to Complainant’s business and notwithstanding Respondent’s allegations that it had no intent to violate any of Complainant’s rights, Respondent, by using a domain name identical with Complainant’s TRAVEL 24 trademarks, still attempted to attract Internet users for advertising purposes and thus for commercial gain to its own website by creating a likelihood of confusion with Complainant’s trademarks and Internet business TRAVEL 24.
In the eyes of the Panel, it also carries weight that Respondent in registering the disputed domain name apparently has provided incomplete WhoIs contact information (“Hessen” is not a street, but a state of the Federal Republic of Germany); moreover, that Respondent’s website at “www.t” neither has a decent imprint providing Respondent’s reliable contact information, nor does Respondent’s website contain any disclaimer or explanatory text to notify Internet users of the lack of connection of the parties to the case at hand. Those circumstances taken all together throw a certain light on Respondent’s behavior which further corroborates the finding of a registration and use of the disputed domain name in bad faith.
Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) of the Policy. 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.
Stephanie G. Hartung
Sole Panelist
Date: November 30, 2012
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