WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TUI AG v. igor golub
Case No. D2007-1410
1. The Parties
The Complainant is TUI AG, Hannover, Germany, represented by Bettinger Schneider Schramm Patent- und Rechtsanwälte, Germany.
The Respondent is igor golub, Florida, United States of America.
2. The Domain Names and Registrar
The disputed domain names:
are registered with Go Daddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2007. On September 25, 2007, the Center transmitted by email to Go Daddy.com, Inc. a request for registrar verification in connection with the domain names at issue. On September 25, 2007, Go Daddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 October 3, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2007. The Response was filed with the Center first on October 3, 2007. After the Center notified the Respondent that the language of the administrative proceeding is English on October 4, 2007, the Respondent provided its Response in English on October 14, 2007.
The Center appointed Zbynek Loebl as the sole panelist in this matter on November 20, 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 one of the largest tourist companies worldwide. The Complainant covers the entire spectrum of tourist-related business. It owns travel agents, hotels, airlines, cruise ships, retail stores etc. In addition, the Complainant owns a lot of subsidiaries concentrating on various sectors, including shipping, logistics, etc.
The Complainant has registered many trademarks for the mark TUI and applied for many trademarks for the marks TUI TRAVEL in many countries worldwide, including North America, where the Respondent is domiciled.
The Complainant also owns more than 100 domain name registrations containing the names “TUI” and “TUI Travel”.
In March 2007, the Complainant’s tourism division merged with First Choice Holidays PLC to form TUI Travel PLC. TUI Travel PLC is a leading international leisure travel group which operates in approximately 180 countries worldwide.
The Respondent, according to the Whois database of concern, has registered the disputed domain names <tuitravelplc.biz>; <tuitravelplc.info>; <tuitravelplc.net>; and <tuitravelplc.org>. The disputed domain names were registered on March 19, 2007, the same day and only few hours after the Complainant announced the establishment of the new company TUI Travel PLC.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are confusingly similar to the registered trademarks, in which the Complainant has exclusive rights. The Complainant’s highly distinctive marks TUI are wholly included in the disputed domain names. According to the Complainant, the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent on the products for which the domain name is used or other marketing and use factors. The Complainant refers to a number of UDRP decisions illustrating this approach, e.g. BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480, <kool.com>.
In addition, even though additions of the words “Travel” and “PLC” are added to the Complainant’s registered trademarks, this is not relevant for the confusing similarity test because both words are descriptive components. The Complainant again quotes a number of UDRP decisions confirming that the test of confusing similarity under the Policy disregards such descriptive elements as mentioned above, e.g. Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363, <dellcustomer.com> et al.
The Complainant also contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant contends that the Respondent has never been a representative or a licensee of the Complainant, and that the Respondent has not been otherwise connected with the Complainant or authorized to use the Complainant’s marks.
Also, the Respondent does not use, and does not make bona fide preparations to use, the disputed domain names for bona fide offering of goods or services and is not making a legitimate, non-commercial, or fair use of it. The Respondent uses the domain names to divert Internet users to websites which contain various links to websites of third parties offering travel services such as Thomas Cook, E Flights etc.
Finally, the Complainant contends that the disputed domain names were registered and are being used in bad faith. The Complainant refers to the above mentioned notion that the domain names redirect users to websites of competitors of the Complainant. In addition, registration of the disputed domain names prevent the Complainant from using the TLD domain names containing its mark and corporate name TUI TRAVEL PLC and in this way the Respondent disrupts its business. The Complainant again quotes UDRP decisions, e.g. the often quoted, WIPO Case No. D2003-0003, <telstra.org>.
The Respondent filed only a very short Response, stating that he bought the disputed domain names on “free sale”, that he did not use these domain names for any purpose and that “tuitravelpls” can represent anything.
6. Discussion and Findings
The Panel came to the following conclusions, after reviewing the Complaint and the Response:
A. Identical or Confusingly Similar
The Panel considers that the disputed domain names are confusingly similar to the registered trademarks TUI of the Complainant. The Complainant’s highly distinctive marks TUI are wholly included in the disputed domain names. In addition, even though additions of the words “Travel” and “PLC” are added to the Complainant’s registered trademarks, both these words are descriptive components and not relevant for the confusing similarity test.
B. Rights or Legitimate Interests
The Respondent has not established his rights or legitimate interests in the use of the disputed domain names. In particular, none of the circumstances listed under paragraph 4(c) of the Policy, which would serve as a proof of rights or legitimate interests in the domain name, have been presented by the Respondent. The domain names do not appear to be in use for any bona fide offerings of goods and services and there is no indication that the Respondent was known by the name “TUI Travel” prior to registration of the disputed domain names. The Respondent is not authorized or licensed to use the Complainant’s marks. The Panel has concluded that the Respondent does not have rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
There has been no legitimate use of the disputed domain names by the Respondent. Given the worldwide fame of the Complainant’s trademarks TUI and the timing of the registration of the disputed domain names just after the announcement of the establishment of TUI Travel PLC, the Panel considers as proven that the Respondent has registered the domain names with the intent to benefit from the reputation of the famous trademarks, the newly announced company name and the Complainant’s business. This is further evidenced by the Respondent’s use of the disputed domain names in connection with parking websites providing advertising links to third parties’ websites, including direct competitors of the Complainant. Such use brings unfair advertisement revenues to the Respondent.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <tuitravelplc.biz>; <tuitravelplc.info>; <tuitravelplc.net>; and <tuitravelplc.org> be transferred to the Complainant.
Dated: December 6, 2007