WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Donvand Limited trading as Gullivers Travel Associates v. Omniscience

Case No. D2002-0746

 

1. The Parties

The Complainant is Donvand Limited trading as Gullivers Travel Associates of London, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Omniscience of London, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name is <gulliverstravelassociates.com>.

The registrar is Intercosmos Media Group d/b/a directNIC.com.

 

3. Procedural History

The electronic version of the Complaint was filed on August 9, 2002. The hardcopies of the Complaint were received on August 13, 2002. This Complaint named the Respondent as "Lost in Space, SA" of Palma, Majorca.

On August 14, 2002, an electronic version of an amended Complaint was filed, due to the domain name being transferred to the Respondent from Lost in Space, SA. The hardcopies of the amended Complaint were received on August 16, 2002.

In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and Paragraph 5 of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), the Center verified that the Complaint satisfies the formal requirements of the Policy, Rules and Supplemental Rules.

Payment in the required amount was received by the Center.

On August 19, 2002, the Center formally notified the Respondent by courier and email of the Complaint and of the commencement of this administrative proceedings and sent copies to the Complainant, the Registrar and ICANN.

The Respondent failed to file a response. On September 11, 2002, the Center sent a Notification of Respondent Default by email to the Respondent and the Complainant.

The Center contacted John Swinson and requested that he act as Panelist in this case. Mr. Swinson accepted to act as Panelist in this case and submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

On September 20, 2002, the parties were notified that Mr. Swinson had been appointed and that a decision was to be, save exceptional circumstances, handed down on October 4, 2002.

The language of the proceeding was English.

The panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules; no Response was filed by the Respondent; the administrative panel was properly constituted.

 

4. Factual Background

The Complainant is one of the UKís leading travel wholesale companies. The Complainant has 25 offices and business associates located all over the world, including in Bangkok, Hong Kong, London, Los Angeles, Paris, New York and Sydney.

The Complainant and the Respondent are both situated in the United Kingdom.

The disputed domain name was transferred to the Respondent from Lost in Space, SA on August 6, 2002. The disputed domain name had been transferred from Stealth Commerce of British Virgin Islands to Lost in Space, SA on July 12, 2002.

At the time of writing this decision, the web site for the disputed domain name resolves to a web site for a prostitution service in Majorca, under the name of <sexysophie.com> or <sexyserena.com>, and includes semi-pornographic material.

 

5. Partiesí Contentions

A. Complainant

The Complainant is one of the UKís leading travel companies. The Complainant has 25 offices and business associates located all over the world.

The Complainant has been trading continuously in the travel industry since itís date of incorporation over 25 years ago. The Complainant has grown into the worldís leading independent global wholesalers of travel services.

The Complainant has an annual turnover of more than $700 million and a full time staff of over 1,700 professionals around the globe. Up until November 13, 2000, the Complainant traded as "Gullivers Travel Agency." On November 13, 2000, the Complainant changed its trademark to "GULLIVERS TRAVEL ASSOCIATES" and this mark has been used by the Complainant ever since.

On November 13, 2000, the Complainant published a press release detailing the change of trademark together with an information sheet to give maximum publicity to the launch of the new trademark GULLIVERS TRAVEL ASSOCIATES.

The press release coincided with the Annual World Travel Market event in the UK, which is a major international travel fair attended by persons in the trade from all over the world.

Between November 2000 and August 2001, the Complainant filed trademark applications for GULLIVERS TRAVEL ASSOCIATES throughout the world. Trademark registrations exist in Hong Kong and Switzerland, and applications for trademarks have been made in Canada and many Asian, European and Middle Eastern nations.

The Complainant is also using the GULLIVERS TRAVEL ASSOCIATES trademark on its web site accessible at <gta-travel.com> and <gta.co.uk>. Since at least November 13, 2000, the Complainant has been using the GULLIVERS TRAVEL ASSOCIATES mark on these web sites. The domain name <gta-travel.com> was registered for the Complainant on January 28, 1999.

The Complainant contends that:

(a) the disputed domain name is identical to the Complainantís trademark "GULLIVERS TRAVEL ASSOCIATES" and is likely to be confused with the domain name <gulliverstravelassociates.com>. Internet users looking for travel services provided by the Complainant will believe that the service provided by the Respondent under the domain name emanates from the Complainant;

(b) at the time of preparing the Complaint, the Respondent used the disputed domain name in connection with a web site advertising tailor made vacations to Las Vegas and "Mallorca," including rental of a villa, which are services identical to the services provided by the Complainant;

(c) given the well-known and widespread activities of the Complainant in the travel industry, the Respondent must be aware of the Complainantís activities in connection with the GULLIVERS TRAVEL ASSOCIATES mark;

(d) the circumstances surrounding the transfer of the disputed domain name to the Respondent are questionable. It was held by a previous Panel in Kraft Pizza Company and Kraft Foods Holdings, Inc. v. Stealth Commerce a/k/a Telmex Management Services a/k/a Lost in Space, SA a/k/a Drevil Claim No. FA0205000113289, that Stealth Commerce and Lost in Space, SA were one and the same entity. There is a strong inference that the disputed domain name was also registered and is being used in bad faith;

(e) the disputed domain name was registered on October 30, 2001, i.e. after the highly publicised launch of the Complainantís "GULLIVER TRAVEL ASSOCIATES" mark. It can be inferred that the disputed domain name was registered to direct traffic away from the legitimate business of the Complainant; and

(f) the disputed domain name appears to have no relationship to any aspect of the Respondentís business.

B. Respondent

The Respondent failed to file a Response within the time limit set by the Center.

In accordance with Rule 5(e) of the Rules, this dispute shall be decided on the basis of the Complaint alone.

 

6. Discussion and Findings

In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, as approved by on October 24, 1999 ("Policy"), namely:

(a) the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and

(b) the respondent has no rights or legitimate interests in respect of the domain name; and

(c) the domain name has been registered and is being used in bad faith.

The onus of proving these elements is that of the Complainant.

Identical or confusingly similar to a trade mark or service mark

The Panel finds that the Complainant owns the trademark "GULLIVERS TRAVEL ASSOCIATES," registered in Hong Kong and Switzerland and pending registration in many other nations throughout the world. The Complainant also owns common law rights in this trademark due to the well known reputation of the Complainant and the extensive use of the mark since November 13, 2000.

The disputed domain name is identical to the trademark owned by the Complainant. The only difference between the domain name and the trademark is the addition of the suffix ".com". See Microsoft Corporation v. Amit Mehrotra, WIPO Case No. D2000-0053."

Rights or Legitimate Interests

The Respondent did not file a Response. The Complainant is not entitled to relief simply by default, but the Panel can and does draw evidentiary inferences from the failure to respond. See Royal Bank of Canada v. D3M Domain Sales (eResolution Case No. AF-0147).

Under paragraph 4(c) of the Policy, the Respondent may demonstrate its rights and interests in the contested domain name by showing any of the following circumstances, in particular but without limitation:

(i) its use of, or demonstrable preparations to use, the contested domain name or a name corresponding to the contested domain name in connection with a bona fide offering of goods or services before any notice to it of the dispute; or

(ii) it (as individuals, a business, or other organization) has been commonly known by the contested domain name, even if it has acquired no trademark or service mark rights; or

(iii) it is making a legitimate non-commercial or fair use of the contested domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel accepts the Complainantís assertion that at the time of filing the Complaint, the disputed domain name was being used in connection with the advertising of tailor made vacations to Las Vegas and Mallorca. The undisputed submissions of the Complainant are that the disputed domain name resolved on August 6, 2002, to a web site at "www.majorcavillas.com". The materials submitted by the Complainant show a web site stating "we specialize in vacations in Las Vegas and Mallorca" and "We design [tailor] vacations specific to your requirements," and inviting users to send an email to "tellmemore@majorcavillas.com".

As stated above, at the time of writing this decision, the web site for the disputed domain name resolves to a web site for a prostitution service in Majorca, under the name of <sexysophie.com> or <sexyserena.com>, and includes semi-pornographic material. This web site includes a photograph of Sophieís place of business, which is the same photograph of the villa-for-rent as shown in the majorcavillas.com web site, and includes the email address "tellmemore@sexysophie.com". The <sexysophie.com> domain name is listed in the WhoIs database as being owned by:

"Mallorcair Ltd
box 29140
London, UK sw1x 9z
GB
07092243246
Fax: 07092243246"

with the administrative contact being Roberto Gourlay at the same address but with the email address of "howard@hempsons.com". This is the same address as listed for the Respondent of the disputed domain name. The registration details for <majorcavillas.com> are the same as those for <sexysophie.com>.

The Panel also notes that this is the same address as one of the respondents in Digital Channel Partners Ltd. v. Bilham Solutions and Marlies Bilham, WIPO Case No. D2000-1246.

The previous registrants of the disputed domain name were Stealth Commerce and Lost In Space, who have been respondents in previous decisions, including in Kraft Pizza Company and Kraft Foods Holdings, Inc. v. Stealth Commerce a/k/a Telmex Management Services a/k/a Lost in Space, SA a/k/a Drevil Claim No. FA0205000113289. Stealth Commerce was also the respondent in Rio Properties, Inc. v. Stealth Commerce Claim No. FA0203000105756 and in Reuters Limited v. Stealth Commerce (a/k/a Telmex Management Services) WIPO Case No. D2002-0223. In each of these cases, the disputed domain name has resolved to a web site featuring pornography and an escort service. It was decided in the Kraft Pizza Company case that Stealth Commerce and Lost in Space, SA were one and the same entity.

Similarly, the disputed domain name resolves to a web site that contains sexually explicit materials and describes an escort service. Given that the purpose for which the disputed domain name is being used is very similar to the way in which the domain names were used in earlier cases involving previous registrants of the disputed domain name, and the other information presented above, it is reasonable to infer that the Respondent is connected with the previous registrants Stealth Commerce and Lost in Space, SA, as well as Roberto Gourlay, sexysophie and Mallorcair Ltd.

The Panel finds that the Respondent is located in England, and is likely to have knowledge of the Complainant.

The Respondentís alleged use is not use of the disputed domain name in connection with any bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.

The Respondent cannot show a legitimate interest by demonstrating use of the disputed domain name to divert traffic to a web site for or to advertise a prostitution service which has no obvious connection to the disputed domain name.

As stated in Madonna Ciccone p/k/a Madonna v. Dan Parisi and "Madonna.com" WIPO Case No. D2000-0847, "use which intentionally trades on the fame of another can not constitute a Ďbona fideí offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy."

The Panel concludes that the Respondent knew of the Complainantís trademark rights at the time of registering the disputed domain name. The Panel concludes that the Respondent registered the contested domain name in order to divert consumers to the Respondentís web site in a way that was misleading and illegitimate. As a result, the Panel finds that the Respondentís offering of services (if it in fact did so) is not a bona fide offering of services in accordance with paragraph 4(c)(i) of the Policy. Compare The Nasdaq Stock Market, Inc. v. Green Angel, WIPO Case No. D2001-1010; and MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205, (it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainantís mark); Rio Properties, Inc. v. Stealth Commerce Claim No. FA0203000105756.

There is no evidence that the Respondent is commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy, nor that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name in accordance with paragraph 4(c)(iii) of the Policy. The Respondent has failed to respond to the Complaint, and so has not contended that either of these sub-paragraphs apply.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interest in the disputed domain name.

Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, 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 contested 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 that Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the contested domain name; or

(ii) the Respondent has registered the contested 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 Respondentís web site or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís web site or location or of a product or service on the Respondentís web site or location.

The Panel finds that the disputed domain name was registered and is being used in bad faith.

It is use in bad faith to use the disputed domain name to divert traffic to a web site for or to advertise a prostitution service and related travel services.

The disputed domain name has been registered and is being used in a way that is intended to disrupt the business of the Complainant and to prevent the Complainant from reflecting its mark in a corresponding domain name.

The Complainant and Respondent are both situated in the United Kingdom. Given the well known reputation and success of the Complainant in the travel industry and the fact that the disputed domain name was used to advertise services in the travel industry, it is reasonable to infer that the Respondent was aware of the Complainantís mark at the time the disputed domain name was registered.

 

7. Decision

For the reasons set forth above and pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the contested domain name be transferred to the Complainant.

 


 

John Swinson
Sole Panelist

Dated: October 4, 2002