WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SmarTours, Inc. v. Vertical Axis, Inc./ c/o Whois IDentity Shield
Case No. D2007-0964
1. The Parties
The Complainant is SmarTours, New York, the United States of America, represented by Cooley Godward Kronish LLP, United States of America.
The Respondent is Vertical Axis, Inc. / c/o Whois IDentity Shield, Gyeonggi-do, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <smarttours.com> (the “Domain Name”) is registered with Nameview Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2007. The Complaint originally named Smarttours.Com, c/o Whois IDentity Shield, of Canada as the Respondent. The applicable “Whois” information indicated Smarttours.Com as the listed registrant with the note: “This registrant uses an Identity Shield service to keep some or all of their information private”. On July 4, 2007, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue. On July 10, 2007, Nameview Inc. transmitted by email to the Center its verification response indicating Vertical Axis, Inc. as the registrant for the Domain Name, and providing contact details. In response to a notification by the Center that the registrant information provided by Nameview Inc. was different to the Respondent named in the Complaint, the Complainant filed an amendment to the Complaint on July 21, 2007, naming Vertical Axis, Inc. as the new Respondent. The Center verified that the Complaint together with the amendment to 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 July 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2007.
The Center appointed Alfred Meijboom as the sole panelist in this matter on August 24, 2007. 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 tour operator and travel agency based in New York, United States of America. The Complainant’s corporate website is located at “www.smartours.com”. This domain name was registered in July 2001. At the website the name “SmarTours” is used in combination with the registered trademark notice “®”.
The Domain Name <smarttours.com> was registered on May 5, 2002. The Domain Name leads to a so called commercial “click through” website with a focus on the travel industry.
5. Parties’ Contentions
The Complainant requests the Panelist to order the transfer of the Domain Name to the Complainant, based on the following arguments.
Common law trademark
The Complainant asserts that:
- its President, Elazar Milbaur, has operated the travel agency under the SmarTours name for over ten years;
- the first use of this name occurred in December 1995 with the mailing of brochures bearing the SMARTOURS mark;
- it has operated extensively in Hong Kong and South Korea over the past decade, arranging tours for thousands of customers visiting these countries;
- it registered the domain name <smartours.com> in July 2001 and has actively used it ever since;
- the name SMARTOURS is a coined, suggestive mark and is therefore inherently distinctive;
- it has expended substantial resources in acquiring secondary meaning and goodwill associated with its trade name and trademark;
- it engages in substantial direct mailing and print advertising, as well as maintaining an elaborate website of its own to market and advertise its travel services offered under its SMARTOURS mark.
As evidence of these assertions the Complainant has provided a 6-page printout of its website at “www.smartours.com”, dated June 28, 2007 and a 2-page brochure of before July 31, 2007.
Identical or confusingly similar
The Domain Name consists of the Complainant’s company name and trademark SMARTOURS, with the addition of the second “T” that was intentionally omitted in the Complainant’s mark. The pronunciations of the Domain Name and the mark are identical. According to the Complainant this is a “typo-squatting” or “typo-piracy” case because the Domain Name is a foreseeable mistyping of the Complainant’s mark using the conventional spelling.
No rights or legitimate interests
The Complainant has never authorized, licensed or permitted the Respondent to use its trademark. To the best of the Complainant’s knowledge the Respondent is not known as SMARTOURS or SMARTTOURS. Furthermore, the Complainant contended that the operation of a “click through” site is not a bona fide use within the meaning of the Policy, with reference to Therapro, Inc. v. Administrator, Domain/Therapro, WIPO Case No. D2006-0883.
The Complainant further stated that the Respondent Vertical Axis, Inc. is a Korean entity which apparently is engaged in the serial registration of domain names. In prior UDRP disputes the Respondent asserted that it only registers domain names which incorporate descriptive and generic terms, or words and terms to which it believes no single party has exclusive rights. The Complainant states that this is not supported by the facts and refers to four UDRP cases in which Vertical Axis was the respondent and the panel decided that the domain names at issue should be transferred to the complainants. The Complainant contended that “smart” nor “smarttours” are merely descriptive or generic terms in the United States, Korea or Hong Kong SAR of China for international travel services. A person interested in finding information on international travel packages or sightseeing tours is not likely to use the search phrases “smart tours” or “Tours That Are Smart”. The Respondent does not operate a tour company or travel agency, but, according to the Complainant, merely is a serial cybersquatter who is attempting to trade off the Complainant’s goodwill.
Registered and being used in bad faith
The Complainant considered the fact that this is a typo-piracy case evidence that the Respondent has registered and used the Domain Name in bad faith. It stated that misspellings alone are sufficient to prove bad faith under the Policy. The Complainant asserted that it has been harmed by the Respondent’s diversion of web traffic from the Complainant’s website to direct competitors. The Complainant claimed to have received numerous calls from frustrated customers and would-be customers who attempted to reach the Complainant’s website and were ‘ensnarled’ in the Respondent’s “click through” site. The Complainant has, however, not provided any evidence thereof.
In addition, the Complainant contended that use of the Whois Identity Shield is further evidence of bad faith, since it proved to be a vexation to the Complainant who expended considerable resources attempting to identify the registrant before filing the original Complaint.
Finally, the Complainant is of the opinion that the Respondent’s continued bad faith is supported by the fact that the Respondent has refused to respond to the Complainant’s cease and desist letters.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to the Policy, paragraph 4(a) the requested remedy can be granted if the Complainant asserts and proves each of the following:
A. that the Domain Name is identical or confusingly similar to a trademark or a service mark in which Complainant has rights; and
B. that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
C. that the Domain Name has been registered and is or was being used in bad faith.
A. Identical or Confusingly Similar
Trademark rights may be established by presenting evidence of a valid trademark registration. Although on its website the Complainant uses the name “SmarTours” in combination with the registered trademark notice “®”, the Complainant has not claimed or shown ownership of any trademark registration.
Nevertheless, it is not necessary that a complainant holds a valid registration to establish rights in a trademark. In cases decided under the Policy a complainant may demonstrate common law trademark rights if it can show the reputation and goodwill in the mark as used in its products and services and the association of the mark in the mind of the purchasing public with the complainant’s particular business (See Polaron Engineering Limited v. Yeremia Prihandono, WIPO Case No. D2004-0106 and Simon Docker d/b/a Sat-Europa Group v. Jan Saggiori, WIPO Case No. D2004-0301). Under United States trademark law, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner (See Lilian Vachovsky, COO, Aplus.Net Internet Services v. A+ Hosting Inc., WIPO Case No. D2006-0703 with reference to United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918)).
The Panelist accepts that the Complainant is a tour operator, that its corporate website is located at “www.smartours.com”, and that it claims rights in the mark SMARTOURS. But it is nevertheless incumbent on a Complainant in a UDRP proceeding to provide sufficient evidence of its claimed rights, particularly where such rights may be unregistered. In the event that a claimed trademark contains a descriptive element, the evidentiary onus is generally higher.
The Panelist finds, however that the Complainant in this case has presented insufficient evidence of the use of SMARTOURS as a common law trademark. The Panel has taken note of the provided six page printout of its website “www.smartours.com”, dated June 28, 2007 and the provided two page holiday brochure requesting reservations by July 31, 2007. But these materials are not in the circumstances sufficient evidence of use in a way and to an extent which would justify a finding of trademark rights under the Policy.
The Complainant’s statements that it has operated the travel agency under the SmarTours name “for over ten years”, that “the first use of the name occurred in December 1995”, that it has operated “extensively in Hong Kong and Korea over the past decade”, that it has “actively used” it registered the domain name <smartours.com> since its registration in July 2001, that it has expended “substantial resources” in acquiring secondary meaning and goodwill associated with its trade name and trademark” and that it engages in “substantial direct mailing and print advertising”, may be true, but they are insufficient of themselves to establish common law rights in the term SmarTours without supporting evidence thereof. It is well established that mere assertions of common law rights in a mark are insufficient without accompanying evidence to demonstrate that the public identifies the Complainant’s mark exclusively or primarily with the Complainant’s products or services (See Saint Francis Hospital and Medical Center v. Registrant (187640), WIPO Case No. D2006-0543 and Lilian Vachovsky, COO, Aplus.Net Internet Services v. A+ Hosting Inc WIPO Case No. D2006-0703).
For these reasons the Panelist finds that the Complainant has not succeeded in these proceedings in establishing trademark rights in the name SmarTours. Accordingly, the Panelist finds that the Complainant has failed to meet its burden of proof under paragraph 4(a)(i) of the Policy that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
It is undisputed that the Complainant has not authorized the Respondent to use the term “SmarTours” or to register and use the Domain Name. The Respondent uses the Domain Name for attracting visitors to a “click-through” website. The Panelist disagrees with the Complainant that such use cannot be bona fide use under the Policy per se. Bona fides may very well be lacking where such use reflects a clear intent to benefit from confusion with the Complainant’s mark. However, given also the Panelist’s findings on the Complainant’s trademark claims, this case presents insufficient indication of such intent. The Panelist also notes in this regard that the Domain Name appears to contain two fairly common dictionary terms.
C. Registered and Used in Bad Faith
The Complainant is based in the United States of America. It alleged that it holds common law trademark rights in the name “SmarTours”. However, the Complainant has not specifically indicated the geographic location of its alleged common law trademark rights. Even if the Complainant’s evidence had been sufficient to establish common law trademark rights under the Policy, which the Panelist in this proceedings finds was not, the Panelist doubts if the use of the mark had been sufficient to have established a reputation outside the United States of America, e.g. in the Republic of Korea where the Respondent is located. The name SmarTours may be known by those engaged in the travel industry, but the Respondent does not appear to fit into that category (See WIPO Case No. D2006-0250 Jet Marques v. Vertical Axis, Inc). The Panelist is of the opinion that and “tours” is a generic and descriptive term in the travel industry, as may be “smart”. They are not particularly distinctive as such, nor is the combination “smarttours” (as used in the Domain Name).
Although the Panelist does not rule out the possibility that the Respondent was familiar with the term “SmarTours” as used by Complainant at the time of registration, there is no evidence to justify the Complainant’s assertion that the Respondent was actually familiar or must have been familiar with the term. Nor is there any evidence to support the Complainant’s contention that the Respondent chose the Domain Name as an intentional misspelling of the term “SmarTours” as used by Complainant so as to attempt and trade off the Complainant’s goodwill.
The Panelist does, however, agree with the panel in WIPO Case No. D2007-0417 Nursefinders, In. v. Vertical Axis, Inc /NURSEFINDERD.COM c/o Whois Identity Shield, that the Respondent’s credibility is not above doubt. In that case the panel considered that the Respondent asserted that it registered only generic names that do not infringe trademarks, but that earlier UDRP panels had ordered the Respondent to transfer domain names such as <mbnaaccess.com>, <harveys-tahoe.com>, and <pearljams.com>, finding that the Respondent more likely than not was aware that these domain names were confusingly similar to famous and distinctive marks (See, respectively, NAF Claim No. FA133632 MBNA Bank America, N.A. v. Vertical Axis, Inc.; NAF Claim No. FA117320 Harveys Casino Resorts v. Vertical Axis, Inc.; NAF Claim No. FA593325 Pearl Jam v. Vertical Axis, Inc.). In this regard, albeit in connection with a different kind of domain name, the Panel also refers to the discussion of wilful blindness’ in Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. On the other hand, the Panel considered that UDRP panels had found in favour of the Respondent when it registered domain names based on generic words or short strings of letters (See, e.g., WIPO Case No. D2007-0017 HSM Argentina S.A. v. Vertical Axis, Inc.; WIPO Case No. D2006-0250 Jet Marques v. Vertical Axis, Inc.; WIPO Case No. D2006-0625 Shoulderdoc Limited v. Vertical Axis, Inc.; NAF Claim No. FA385881 Intune Media Group LLC v. Vertical Axis, Inc.; NAF Claim No. 629222 Aquascape Designs, Inc. v. Vertical Axis, Inc c/o Domain Adminstrator; WIPO Case No. D2003-0041 Vernons Pools Limited v. Vertical Axis, Inc.). Considering these cases, the Panelist is of the opinion that each case must nevertheless be judged on its own merits.
Furthermore, the Complainant relies on the concealment of the Respondent’s identity on the WHOIS database. In the Panelist’s view, the Respondent’s use of an identity shield, although perhaps not entirely above suspicion in light of the Respondent’s apparent growing history of UDRP involvement, is not yet a decisive indicator of bad faith, noting that there can also be legitimate reasons for using a proxy registration service and it has not prevented the Complainant from commencing these proceedings (See WIPO Case No. D2006-0975 WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks and WIPO Case No. D2006-0250 Jet Marques v. Vertical Axis, Inc.).
The Panelist considers that the failure by the Respondent to reply to cease and desist letters the Complainant claims to have sent, cannot in itself be determinative of a bad faith finding in this case (See WIPO Case No. D2003-0041 Vernons Pools Limited v. Vertical Axis, Inc.).
All in all, the Complainant has on balance failed to meet the burden of proof of the Policy, paragraph 4(a). Consequently, the Complaint must fail, this being said without prejudice to any claims that might be made before national tribunals.
For all the foregoing reasons, the Complaint is denied.
Dated: September 7, 2007