WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Consultour Inc., dba TravelPlus v. Travel Options Inc.
Case No. D2003-0352
1. The Parties
The Complainant is Consultour Inc., dba TravelPlus of Montreal, Quebec, Canada, represented by Fasken Martineau DuMoulin, Toronto Dominion Bank Tower of Toronto, Ontario, Canada.
The Respondent is Travel Options Inc., of Steinbach, Manitoba. The Respondent also has an address c/o Larry Kehler of Kenora, Ontario , Canada.
2. The Domain Name and Registrar
The disputed Domain Name is <travelplus.net>. The registrar of the Domain Name is Tucows.com Inc. (hereinafter Tucows) of Toronto, Canada.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 7, 2003. The same day, the Center transmitted by email to Tucows a request for registrar verification in connection with the Domain Name at issue. On April 10, 2003, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 13, 2003. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 May 19, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2003. The Response was filed with the Center on June 4, 2003.
The Center appointed Jacques A. Léger Q.C. as the sole panelist in this matter on June 20, 2003. 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 corporation organised and existing under the laws of Canada, a division of Consultour Inc., a member of Transat A.T. Inc. Complainantís activities consists in the offering of travel services.
Respondent is a company located in Kenora, Ontario. Respondent operates also in the travel business.
Complainant is the owner of a Canadian trade-mark registration for TRAVEL PLUS, bearing Registration No. TMA 318,754, for use in association with airline travel promotion and sales, a well as a Canadian trade-mark registration for TRAVELPLUS Design, bearing Registration No. TMA 559,808, for use in association with design and provision of programmes and services in support of a national travel consortium of independently owned and operated retail travel agency locations and travel services. Complainantís trade-marks are referred to as the "TRAVELPLUS Marks".
The Domain Name <travelplus.net> was registered on September 14, 1998, by Respondent at a time it was not yet a licensee of Complainant, and the TRAVEL PLUS marks were then owned by Travel Distribution Resources Group Inc., predecessors in title of the Complainant.
Complainant has been using the Domain Name and the web site "www.travelplus.ca" since October 31, 2000. The web sites operated by Complainant and/or its licensees receive a significant amount of web traffic for travel services.
Complainant has licensed the use of the TRAVELPLUS Marks to various licensees, enabling such licensees to register Domain Names that include the TRAVELPLUS Marks.
Respondent entered into a License Agreement with a predecessor in title of Complainant on February 1, 2000. The terms of the agreement clearly set out Respondentís obligation to cease use of the TRAVELPLUS Marks at the termination of the agreement.
The License Agreement terminated on December 31, 2001, at which time Respondent was under a contractual obligation to transfer the Domain Name <travelplus.net> to Complainant.
Complainant wrote a letter to Respondent on June 10, 2002, in which it requested that Respondent initiate the transfer of the Domain Name <travelplus.net>.
On or about June 26, 2002, Complainant received a letter from Mr. Larry Kehler of CCCO Net Inc., agent for Respondent, suggesting that Complainant retract its demand for transfer of the Domain Name <travelplus.net>.
Since then, Respondent has continued to use the Domain Name.
5. Partiesí Contentions
A. Complainant alleges that :
Identical and Confusingly Similar
The domain name is identical and confusingly similar to the TRAVELPLUS marks, the trade name and the web sites of Complainant and its licensees. See AT&T Corp. v. Tala Alamuddin, WIPO Case No. D2000-0249 (May 18, 2000), wherein the domain name <att2000.com> was found to be confusingly similar to the ATT and AT&T marks. Likewise, in World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001 (January 14, 2000) the Panel concluded that it was "clear beyond question" that the domain name <worldwrestlingfederation.com> was confusingly similar to the mark WORLD WRESTLING FEDERATION, a situation where the domain name and mark differed only in spacing and the addition of "com".
Complainant has achieved a significant degree of consumer recognition. Moreover, the TRAVELPLUS Marks as well as the Domain Names of its licensees have become known as web sites originating from Complainant and its licensees.
Respondent entered into a License Agreement with a predecessor in title of Complainant, and as such, it was aware of Complainantís and its licenseesí on-line travel services and use of "travelplus" as Domain Names and trade-marks. Complainant licensed Respondent to use the TRAVELPLUS marks for the duration of the agreement. The terms of the agreement clearly set out Respondentís obligation to cease use of the TRAVELPLUS marks at the termination of the agreement. Respondent is no longer permitted to use the TRAVELPLUS Marks or any other confusingly similar marks.
The web site "www.travelplus.net" does not contain any references to any business or mark owned by Respondent relating to "travelplus". There is no connection to Travelplus using the domain name as it is linked to other web sites.
Rights and Legitimate Interests
The coined term "travelplus" is not the subject of any trade-mark registrations belonging to Respondent, who is a competitor of Complainant and its licensees, as it appears from the information contained at Respondentís web site which offers similar services to those of Complainant.
Respondent uses the Domain Name to divert Internet traffic intended for Complainant and its licensees.
Respondent was a licensee of Complainant however, the agreement entered into between the parties terminated on December 31, 2001, at which time Respondent was under an obligation to transfer the domain name to Complainant.
Respondentís actions constitute cybersquatting and U.S. Courts have held that the actions of cybersquatters damage the rights of legitimate trademark owners from using their names as domain names, trading on the value of the marks by attempting to sell them to their rightful owners. See Pananvision International, LP. v. Toeppen, 945 F. Supp. 1296 (C.D. Cal. 1996).
The domain name has been registered and is used in bad faith and Respondent has at no time had a legitimate offering of goods or services that bear any relationship to the domain name <travelplus.net>, and clearly bears no connection to the TRAVELPLUS marks.
Respondentís linking of the web site "www.travelplus.net" to other web sites demonstrates a complete lack of genuine commercial interest in the use of the domain name. The web site is clearly intended to divert Internet traffic intended for and to take advantage of this traffic to make profits at Complainantís expense.
Respondent obviously uses the domain name in a deliberate attempt to profit, for commercial gain, by the registration and continuous use of this domain name, creating a likelihood of confusion with the TRAVELPLUS Marks and licenseesí web sites and to disrupt the business activities of Complainant and its licensees.
Several panel decisions have ruled that Respondentís practice of registering the domain names of well-known third parties is evidence of bad faith registration. See Stella Díoro Biscuit Co., Inc. v. Patron Group Inc., WIPO Case No. D2000-0012 (February 17, 2000).
Respondent is disrupting Complainantís business and obstructing consumers on the Internet through the use of the domain name.
Respondentís use of the domain name is not a legitimate non-commercial or fair use in all of the circumstances.
B. Respondent alleges that:
The domain name was an original registration made by Respondent in 1998, as the result of a multi-year workup to web site development. At the time the domain name <travelplus.net> was developed, the TRAVELPLUS mark was owned by another firm - not Consultour - who had no presence on the web.
Respondent was a member of the Travel Plus consortium. It spent approximately $40,000CDN to develop an extensive web site for its own operation. Respondent uses the domain name for its ongoing business.
Complainant, at a time it was owned by Travel Distribution Resources Group, requested Respondentís presence at meetings in Toronto and Winnipeg at its own expense. Respondent attended and produced its entire web site plan, which was approved in principle by the board for development.
The parent company of Complainant excluded Respondent because it needed to employ its own employees in order to stay afloat. Even though Respondent was repeatedly promised compensation for developmental and practical costs, this never came to pass.
At the time Respondent sold its agency to another travel agency, Cross Road Travel, it made an offer to Complainant with regard to the domain name, however, Complainant was not interested and for that reason, Respondent moved on.
Since "travel plus" is a generic sounding name, Respondent incorporated it into its other travel business to sell "travel plus vacation ownership". Since that time, Respondent has never identified itself either as a member of any consortium or as being associated with the TravelPlus organization. Further, Respondent spent thousands of dollars in advertising and marketing under "travelplus.net", directing traffic to its vacation ownership web site which offers travel products.
Complainant could have reasonably negotiated back the domain name in 2001.
The domain name was purchased for Respondentís business, which has been actively marketing it since 1998, without interruption. There has never been a single incident of confusion as to what Respondent, who does not compete with Consultour on any level, represents.
Respondent has never had any discussion at any corporate level with Complainant, but it is not averse to discussing compensation after five years of continual use of the domain name with no challenges, indeed with a denial of interest.
6. Discussion and Findings
Pursuant to the Policy, the Complainant must convince the Panel of three elements if it is to succeed to have the Domain Name transferred. It is incumbent upon the Complainant to show cumulatively that :
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which it holds rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and used in bad faith.
These three elements are considered below.
A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in the TRAVELPLUS Marks through registrations for TRAVEL PLUS (Canadian registration No. TMA318,754 for use in association with airline travel promotion and sales) and TRAVELPLUS Design (Canadian registration No TMA559,808 for use in association with different travel services) since 1986 and 2002 respectively.
The Panel also finds that the <travelplus.net> domain name is confusingly similar to Complainantís TRAVELPLUS Marks. See. World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001 (January 14, 2000) wherein the domain name and mark differed only in spacing and the addition of "com". The Panel concluded that it was "clear beyond question" that <worldwrestlingfederation.com> is confusingly similar to the mark WORLD WRESTLING FEDERATION. See also AT&T Corp. v. Tala Alamuddin, WIPO Case No. D2000-0249 (May 18, 2000), wherein the domain name <att2000.com> was found to be confusingly similar to the ATT and AT&T marks.
As the domain name is for all intents and purposes identical to the Complainantís registered trademark, and Respondent did not deny this allegation, the Panel is of the opinion that the Complainant has met its burden of proof as required by paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests in Respect of the Domain Name
Respondent, who is a competitor of Complainant, uses the domain name to divert Internet traffic intended for Complainant. Therefore, Respondentís use of the domain name to promote competing travelling services cannot be said to be a bona fide offering of goods or services pursuant to the Policy, paragraph 4(c)(i) or a legitimate non-commercial or fair use of the domain name pursuant to the Policy, paragraph 4(c)(iii). See for example Chip Merchant, Inc. v. Blue Star Electronics d/b/a Memory World, WIPO Case No. D2000-0474 (August 21, 2000) wherein the disputed domain names were confusingly similar to Complainantís mark and Respondentís use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods; see also America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (December 11, 2000) wherein it was held that "[I]t would be unconscionable to find a bona fide offering of services in a respondentís operation of web-site using a domain name which is confusingly similar to the Complainantís mark and for the same business".
Moreover, Respondent is not "commonly known by" the disputed domain name pursuant to the Policy, paragraph 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA Case No. 96209 (National Arbitration Forum, January 23, 2001) wherein it was stated that Respondent does not have rights in a domain name when Respondent is not known by the mark.
Once Complainant successfully discharges its initial burden under the Policy, paragraph 4(a)(ii) with respect to rights and legitimate interests, then it is up to Respondent to present the Panel with some evidence that it has rights or legitimate interests in the domain name. See for instance Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (August 21, 2000) wherein it was stated that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain name, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name; see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, WIPO Case No. D2000-1228 (November 28, 2000) wherein it was held that under certain circumstances, the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist.
Besides contending that it has spent a lot of money in the development of its web site and that "travel plus" is a generic sounding name, Respondent has not presented in rebuttal any substantial evidence to justify that it has rights or a legitimate interest in the domain name. Its mere assertions about its relations with Complainant are not sufficient per se to establish any rights or legitimate interest in the domain name, and consequently Panel finds that Complainant has met its burden in that regard.
C. Registered and Used in Bad Faith
Regarding this element, it has been repeatedly stated that it is quite difficult, usually, if not impossible, to actually show bad faith with concrete evidence. It has been held that the Panel can, in some cases, take into consideration surrounding circumstances and draw inferences to determine whether or not Respondentís actions are captured by the Policy, paragraph 4(b). For example, the Panel may consider surrounding circumstances to decide whether or not Respondent has registered the Domain Name primarily for the purpose of selling it to Complainant or a competitor. To require Complainant to provide direct evidence of Respondentís bad faith intentions would allow a Respondent with a certain level of skill to easily evade the application of the Policy, hence rendering its application moot or irrelevant.
Therefore, once Complainant has presented sufficient evidence to establish one of the situations in paragraph 4(b), it is incumbent upon Respondent to either respond or explain why its conduct should not be considered bad faith. The Panelís understanding of the Policy is that although the initial burden to prove (on a balance of probabilities) Respondentís bad faith in the registration of the disputed domain name lies squarely on the shoulders of Complainant, such an obligation does not need to be more than to make out a prima facie case, and once it has done so, the Panel may find in certain circumstances, that there is a shift of onus and it belongs to Respondent to either justify or explain its conduct, if not to demonstrate the contrary.
Firstly, the Panel is of the view that Complainantís registered TRAVELPLUS Marks have provided Respondent with constructive notice of the Complainantís rights in those marks, which leads to the conclusion that the domain name was registered in bad faith. See for instance Comweld Group Pty. Ltd. v. Comco Industries Co. Ltd., WIPO Case No. D2001-0290 (August 31, 2001); see also Express Servs., Inc. v. Harold Brown/Ted Waitt, FA Case No. 97725 (National Arbitration Forum, July 25, 2001) wherein it was held that "Respondent showed bad faith registration because the disputed domain names are confusingly similar to Complainantís EXPRESS family of marks, and Respondent had constructive notice of Complainantís marks; see also Korn/Ferry Intíl. v. The CareerMosaic Cornperry, Inc., FA Case No. 97117 (National Arbitration Forum, June 7, 2001) wherein it was stated that "as the Respondent and Complainant are engaged in the same industry, the Respondent should have been aware of the Complainantís famous mark. Its registration of the domain names at issue clearly constitutes bad faith"; see also Orange Glo Intíl v. Jeff Blume, FA Case No. 118313 (National Arbitration Forum, October 4, 2002) wherein "Complainantís OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof."
Secondly, it has been shown that Respondent was once a licensee of Complainant, but uncontested evidence was adduced to the effect that the License Agreement had terminated on December 31, 2001, at which time Respondent was under a contractual obligation to transfer the domain name to Complainant. This extrinsic component, which is not denied by Respondent is strong evidence in and of itself that the domain name is used in bad faith.
Moreover, paragraph 4(b) of the Policy provides a number of circumstances which, if found to be present, are evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(iv) of the Policy holds that, if the circumstances indicate that by using the Domain Name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site, by creating likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation, or endorsement of Respondentís web site, then this is evidence of bad faith registration and use on behalf of Respondent. See for instance America Online, Inc. v. Tencent Comm. Corp., FA Case No. 93668 (National Arbitration Forum, March 21, 2000) wherein bad faith was found where Respondent registered and used an infringing domain name to attract users to a web site sponsored by Respondent; see also Express Servs., Inc. v. Personnel Plus a/k/a Tony Mayer, FA Case No. 112624 (National Arbitration Forum, June 20, 2002) wherein it was stated that "[I]n view of the fact that each partyís services relate to assisting job-seekers to find employment, it is apparent that Respondent registered each of the disputed domain names in order to gain more internet users and to disrupt Complainant's business of providing job placement related services".
In the case at hand, the disputed Domain Name <travelplus.net> does not contain any references to any business or mark owned by Respondent relating to TRAVELPLUS Marks.
The fact that Respondent, on his "www.travelplus.net" web site, merely provides links to other web sites tends to show that its web site is potentially intended to divert Internet traffic intended for Complainant and to take advantage of this traffic to make profits at the expense of someone else, i.e. Complainant. The Panel is also of the opinion that the passive holding of the Domain Name since its registration (no use other than linking it to other web sites), combined with the lack of explanation or evidence provided by the Respondent to demonstrate the good faith registration or usage of this Domain Name, all infer bad faith on the part of the Respondent, pursuant to paragraph 4(a)(iii) of the Policy. (See Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000)). There is no evidence submitted by Respondent that would tend to show any intention to use the domain name as a web site, which leads the Panel to presume that the domain name is used in bad faith. Several panel decisions have ruled that Respondentís practice of registering the domain names of well-known third parties is evidence of bad faith registration. See Stella Doro Biscuit Co., Inc. v. Patron Group Inc., WIPO Case No. D2000-0012 (February 17, 2000).
Additionally, the fact that Respondent offered directly to sell or to make an arrangement regarding the domain name can contribute to a finding of bad faith. See La Chemise Lacoste v. M. Lee Ji Hong, - (September 26, 2001).
The Panel is of the opinion that the domain name is so obviously connected with Complainantís trademark and its services that their very use by someone with no connection with Complainant suggests "opportunistic bad faith" (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net WIPO Case No. D2000-0226 (May 17, 2000) and Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (May 1, 2000)).
Since Complainant has established prima facie that Respondent has registered and is using the domain name in bad faith, Respondentís failure to address this issue leads the Panel to find a negative inference and to conclude in favor of Complainant.
For the foregoing reasons, the Panel finds that:
(1) Respondentís <travelplus.net> domain name is confusingly similar to Complainantís TRAVELPLUS Marks.
(2) Respondent does not have any rights or legitimate interests in the <travelplus.net> domain name.
(3) Respondent registered and used the <travelplus.net> domain name in bad faith.
In accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <travelplus.net> be transferred to Complainant.
Jacques A. Léger
Dated: July 10, 2003