WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LíTUR Tourismus AG v. Juergen Frey
Case No. D2003-0665
The Complainant is LíTUR Tourismus AG, Baden-Baden, Germany, represented by GRAEFE Rechtsanwalte, Germany.
The Respondent is Juergen Frey who trades as el tour CxA, Sosua, Puerto Plata, Dominican Republic, represented by Cavada-Kuth und Kollegen, Germany.
2.The Domain Name and Registrar
The disputed domain name is <eltour.net> which is registered with Melbourne IT Limited trading as Internet Name Worldwide.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 25, 2003. On August 25, 2003, the Center transmitted by email to Melbourne IT Ltd trading as Internet Name Worldwide a request for registrar verification in connection with the domain name at issue. On August 26, 2003, Melbourne IT Ltd trading as Internet Name Worldwide transmitted by email to the Center its verification response confirming the Respondent is listed as the registrant and providing the contact details for the administrative, billing and technical contact.
The Center verified that the Complainant 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 September 5, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 25, 2003. The Response was filed with the Center on September 23, 2003. The Center appointed Mr. Clive Duncan Thorne as the Sole Panelist in this matter on October 7, 2003. 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 of paragraph 7.
4. Factual Background
The Complainant specialises in offering last minute tours throughout the world and has done so since 1987. In this period about 4.3 million holiday makers have booked with the Complainant. It apparently owns 130 shops in 7 European countries including Germany, France, Holland, Austria, Switzerland, Poland and Spain and sold 663,000 holidays in 2001. Details of the activities of the Complainant are set out at Annex 11 to the Complaint. It also appears that the Complainant trades online using, inter alia, the website "www.ltur.de". It asserts that this is Germanyís most popular travel site on the Internet.
The Complainant has a number of trademark registrations and a large number of domain name registrations.
The trademark, LíTUR was registered in Germany at the German patent and trademark office on September 18, 1996, under registration number 39632495 in Class 39 in respect of travel agency services. A copy of the certificate of registration is annexed at Annex 3 to the Complaint. At Annex 4 to the Complaint is a copy of an extract from the German trademark Gazette. The mark is also registered internationally under the Madrid Protocol for Austria, Benelux, Czech Republic, Denmark, Finland, France, Hungary, Italy, Poland, Portugal, Spain, Sweden, Switzerland and the United Kingdom. A copy of the Madrid protocol registration is annexed at Annex 5. In addition, this trademark is internationally extended to a number of other countries; Bosnia-Herzegovina, Bulgaria, China, Croatia, Egypt, Kenya, Latvia, Liechtenstein, Morocco, Slovakia, Slovenia and Yugoslavia. A copy of the International Certificate of Registration is annexed at Annex 6.
At Annex 7 is attached the complete list of domains registered by the Complainant. It should be noted that there are a large number incorporating the name "lítur". Although the Complainant does not draw attention to this it also appears to have registered domain names for, inter alia, <eltour.de>, <eltour.de>, <eltours.de>, <el-tours.de>, <elturs.de>, <el-tours.de>, <eltur.de>, <l-tur.de>, <elturs.de> and <el-turs.de>.
The Complainant is also owner of the trademark consisting of a palm tree like device and the mark LíTUR LAST MINUTE URLAUB. This is registered in Germany at the German Patent and Trademark office as of July 25, 1996, under registration number 39632496 in Class 39 in respect of travel agency services. A copy of the certificate of registration is annexed at Annex 8. It should be noted that the colour of this trademark is apparently pink. This trademark is also internationally registered under the Madrid protocol for Austria, Benelux, Czech Republic, Denmark, Finland, France, Hungary, Italy, Poland, Portugal, Spain, Sweden, Switzerland and United Kingdom. A copy of this certificate of registration dated April 3, 1997, is annexed at Annex 10 to the Complaint.
The Respondent appears to trade through the medium of a Dominican Republic company registered in the Dominican Republic on December 15, 1999. At Annex 1 to the Response is a copy of a certificate of registration. The commercial name EL TOUR was registered at the Dominican Republic government registry on September 15, 2000, under registration number 122287. A copy of the certificate of registration is exhibited to the Response at Annex 2. At Annex 3 to the Response is a trademark certificate in respect of EL TOUR plus logo registered on December 30, 2001, by El Tours SA. At Annex 4 to the Response is a published version of the Respondentís trademark EL TOUR in device form incorporating a palm tree device in a roundel which is not dis-similar to the Complainantís device mark number 39632496 referred to above. The Respondentís device mark also appears to be pink in colour not unlike the Complainantís mark. According to the Respondent, it offers travel excursions in the Dominican Republic and to Haiti. At Annex 6 to the Response are exhibited copies of the services offered by the Respondent. The Respondent asserts that most of its customers come from the United States and South America.
It should be noted that at Annex 12 to the Complaint is a hard copy of an extract from the Respondentís website prepared by the Complainant on which it can be seen that the Respondent uses its device mark. It appears that the travel services offered by the Respondent relate to the Dominican Republic rather than elsewhere. This is also borne out by the map of the Dominican Republic contained in this print out.
5. Partiesí Contentions
The Complainant contends:
(i)that it has trademark or service mark rights in the marks LTOUR and LíTOUR. It asserts that the apostrophe in LíTOUR is irrelevant;
(ii)that the domain name in dispute <eltour.net> is phonetically confusingly similar to the Complainantís marks so that internet users are likely to be mis-led or confused as to the Complainantís relationship to, affiliation with or endorsement of the travel related websites which can be located through the disputed domain name;
(iii)the Respondent has no right or legitimate interest in respect of the domain name. It asserts that the Respondent has not:
(a)used the disputed domain name in connection with any bona fide offering of goods and services;
(b)been commonly known by the disputed domain name; or
(c)made any legitimate, non-commercial or fair use of the disputed domain name;
(iv)the domain name in dispute was registered and is being used in bad faith;
(v)the Respondent must have known of the Complainantís mark while registering the disputed domain name and that therefore it is using the domain name primarily to disrupt the business of a competitor;
(vi)the use of the disputed domain name has been deliberately designed to create customer confusion and that the only plausible purpose for the Respondentís registration and use of the disputed domain name is to attract for commercial gain internet users to the Respondentís travel website;
(vii)there is no relationship between the Complainant and the Respondent.
The Respondent contends:
(i)that the Respondentís domain name is not phonetically similar to the Complainantís trademark;
(ii)that the Respondent has rights or legitimate interests in respect of the domain name and in particular with regard to a bona fide offering of goods and services and that the Respondent is well known by the disputed domain name;
(iii)the Respondent has not acted in bad faith but rather has registered the domain name with "the one and only reason to offer his products under his legal commercial name and with his registered logo and design in the internet as well as he does in his offices in the Dominican Republic";
(iv)the Respondent has not expressed or given any impression of a relationship or connection or sponsorship with the Complainant;
(v)there is no evidence that the domain name is used to attract for commercial gain Internet users to the Respondentís websites.
6. Discussion and findings
In order to succeed in its Complaint, the Complainant has the burden of proof under paragraph 4(a) of the Policy to show that the following three elements are proved:
(i)the domain name registered by the domain name registrant is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii)the domain name registrant has no rights or legitimate interests in respect of the domain name in question; and
(iii)the domain name has been registered and is being used in bad faith.
The Panel proceeds to deal with each of these elements in turn.
A.Identical or Confusingly Similar
Having considered the evidence of the Complainantís trademark rights set out in Section 4 above, the Panel is satisfied that the Complainant has trademark/service mark rights in respect of the marks LíTUR and LTUR. The Panel is also mindful of the fact that the Complainant trades in respect of shops under the trading name "Lítur".
The Complainant asserts that the domain name <eltour.net> is confusingly similar to the Complainantís trademark LíTUR. It submits that the lack of an apostrophe in the domain name is irrelevant.
It appears to the Panel that the main plank of the Complainantís submission with regard to confusing similarity is that even though there is a visual difference arising from the use by the Respondent in its domain name of the letters "e" and "o" in the domain name there is nevertheless a phonetic likelihood of confusion. The Complainant asserts that the addition of the "e" at the beginning of the second level domain makes for a phonetic confusion with the "l" in the Complainantís trademark. As far as the use of the letter "o" is concerned the Complainant submits that it is a common mis-spelling of the term "tur" in the Complainantís trademark. The Complainant cites two previous UDRP decisions as support for the concept that a domain name can be confusingly similar if it is identical in pronunciation.
By contrast the Respondent submits that its name is phonetically not similar to the Complainantís trademark due to the fact that the name in the Spanish language would be pronounced as "eltoud/" while the Complainantís name would be pronounced "elle tour". It submits that even in English the Complainantís name would be pronounced differently like "lítar". It points out that there are two letters out of the four letters that are quite different to the Complainantís domain name.
Having considered the matter carefully, the Panel is of the view that on balance and approaching the matter from the point of view of visual confusing similarity the Complainantís trademark LíTUR is not confusingly similar to the domain name <eltour.net>. The panel considers that the additional letters "e" and "o" in the domain name are materially different.
The Panel is, however, prepared to accept that phonetic similarity can constitute confusing similarity for the purpose of this element. The Panel is mindful of the fact that in most systems of trademark law provision exists for infringement by way of phonetic similarity.
The Panel therefore finds that the domain name <eltour.net> is confusingly similar to a service mark in which the Complainant has rights.
B.Rights or Legitimate Interests
The Complainant has the burden of proof in showing that the Respondent has no rights or legitimate interests in respect of the domain name, <eltour.net>. The Complainant asserts firstly that the Respondent does not use the domain name with any bona fide offering of goods or services and submits that the Respondentís use of the name in connection with travel related services tarnishes and dilutes the Complainantís mark by suggesting to users that the Complainant endorsed sponsored or was otherwise affiliated with the disputed domain name.
It then submits that the Respondent has not been commonly known by the disputed domain name and finally, that the Respondent has not made any legitimate non-commercial or fair use of the disputed domain name. The Complainant asserts that the Respondent chose a domain name so similar to the Complainantís domain name that it cannot be inferred "without benefit of explanation" that he has a valid right or legitimate interest in the domain name and that the Respondent used the domain name with an attempt to take commercial gain by misleadingly diverting customers from the Complainantís home page.
The Respondent takes a different view and contends that it is offering one-day and two-day tour excursions around the Dominican Republic and to Haiti using the trading name "El Tour". It relies upon Annex 6 to the Response as evidence of this. Moreover, it points that it has been commonly known by the name "El Tour" and used the disputed domain name for more than two and a half years.
The Respondent accepts that it has no rights in Germany corresponding with its domain name but contends that it still has legal rights in the Dominican Republic.
Having considered the evidence as to the corporate name "El Tour" and the Dominican Republic trademark EL TOUR, the Panel accepts that there is evidence that the Respondent has a legitimate interest in respect of the domain name arising from its trading name in the Dominican Republic and the fact that it trades apparently legitimately offering travel tours in respect of the Dominican Republic and Haiti.
The Panel must have in mind that the burden of proof in showing the existence of this element is upon the Complainant. The Complainantís contentions in respect of this element rely heavily upon presumption rather than evidence of lack of rights or lack of legitimate interests on the part of the Respondent. It may be true as the Complainant asserts that the Respondent has no rights whatsoever corresponding with his domain name in Germany or any other European country but in the Panelís view this does not detract from any rights that the Respondent has arising from its trading activity in the Dominican Republic.
The Panel finds for the Respondent in respect of this element.
C.Registered and Used in Bad Faith
Taking into account the Panelís finding that the Complainant has failed to show that the Respondent has no rights or legitimate interests in respect of the domain name in question under paragraph 4(a)(ii) of the Policy, it is not necessary for the Panel to consider the issue of bad faith.
For all the foregoing reasons the Complainant is denied.
Clive Duncan Thorne
Dated: October 21, 2003