WIPO Arbitration and Mediation Center
Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc.
Case No. D2006-1137
1. The Parties
The Complainant is Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH, Berlin, Germany, represented by Rechtsanwälte Karsten & Schubert, Germany.
The Respondent is Keyword Marketing, Inc., Charlestown, West Indies, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <giata-hotelguide.com> is registered with DomainDoorman, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2006. On September 8, 2006, the Center transmitted by email to DomainDoorman, LLC a request for registrar verification in connection with the domain name at issue. On September 18, 2006, DomainDoorman, LLC 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. The Center verified that the 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 September 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 10, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2006.
The Center appointed Lone Prehn as the sole panelist in this matter on October 26, 2006. 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 German provider of digital tourism information, such as hotel pictures, hotel descriptions, climate and geographic maps and country information.
The Complainant owns the German Service and TradeMark (wordmark) GIATA Reg. No. 39867433.7 with priority from November 23, 1998 and the European Community Service Mark (wordmark) GIATA, Reg.No. 3375136 with priority from September 29, 2003. The trademark registrations cover goods in class 9 and services in classes 35, 38, and 42, including goods and services relating to tourism and hotels.
The Complainant is the holder of the domain names <giata.de>, <giata.com>, and <giata-hotelguide.de> since 1998, 1997 and 2000 respectively.
The disputed domain <giata-hotelguide.com> resolves to a web-site that displays sponsored links to companies of the touristic branch.
5. Parties’ Contentions
The Complainant contends that the following:
The domain name <giata-hotelguide.com> is confusingly similar to the German trade- and servicemark and the European Community servicemark in which the Complainant has rights. The domain name contains the whole wording of those trademarks. The term “hotel guide” is a descriptive component. The additional descriptive component is not enough to avoid the likelihood of confusion. On the contrary, the descriptive element “hotelguide” added to the domain name increases the likelihood of confusion, because it relates directly to the Complainant´s widely known core business in providing a database with tourism content, especially hotel descriptions. The Complainant first established the connection between “giata” and “hotelguide” by using the working title “Giata-Hotelguide” and choosing the domain <giata-hotelguide.de> for the internet presentation of this product.
There is no evidence of 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.
The disputed domain was registered only for the purpose of monetarizing it. Respondent intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant's marks and widely known company.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The contested domain name contains the Complainant’s distinctive trademark GIATA in its entirety. Neither the addition of the descriptive word “hotelguide”, nor the insertion of the hyphen between the words “Giata” and “hotelguide”, alters the fact that the domain name is confusingly similar to the Complainant’s trademark. Likewise, the inclusion of the gTLD denomination “.com” shall be disregarded for the purpose of these proceedings.
The Panel finds that the disputed Domain Name is confusingly similar to the Complainant’s registered trademark and that the requirements in paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the Complainant’s trademark.
The Complainant alleges and has made a prima facie showing that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not rebutted this and, based on the record of this case, it is unlikely that any such rights or interests exist.
In this context the Panel notes that GIATA is an invented word that has no specific meaning. It can therefore be ruled out that the Respondent could plausibly claim to use the disputed domain name together with the descriptive element “hotelguide” for any purpose unrelated to the Complainant or its goods and services.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must prove the Respondent’s registration and use of the domain name in bad faith. Paragraph 4(b) sets out, by way of example, a number of circumstances which may be taken as indicative of bad faith.
Given the coined nature of the word GIATA, the fact that the Complainant offers “hotel guide” products and services, and holds the domain names <giata.de>, <giata.com>, and <giata-hotelguide.de>, it is inconceivable to the Panel that the Respondent registered the domain name without prior knowledge of the Complainant and the Complainant’s mark.
The disputed domain name is used for a website that contains search facilities and in addition appears to contain sponsored links, which possibly generate click-through revenues for the holder of the website. It is therefore evident to the Panel that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The Panel finds that the domain name is being used in bad faith.
Therefore, the Panel finds that the domain name was registered and is being used in bad faith. Considering all the facts and evidence, the Panel therefore finds that the requirements of the Policy, paragraph 4(a)(iii) of the Policy, are also fulfilled in this case.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, and in accordance with the Complainant’s claim, the Panel orders that the domain name <giata-hotelguide.com> be cancelled.
Dated: November 9, 2006