ADMINISTRATIVE PANEL DECISION
Hotel Connect Ltd. v. Bob Martin
Case No. D2008-1229
The Complainant is Hotel Connect Ltd., of London, United Kingdom of Great Britain and Northern Ireland, represented by SafeNames Ltd., of the United Kingdom of Great Britain and Northern Ireland.
The Respondent is Bob Martin, of Wyoming, United States of America.
The disputed domain name <hotelsconnect.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2008. On August 13, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On August 13, 2008, GoDaddy.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 for the Domain Name. 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 August 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 10, 2008.
The Center appointed Warwick Smith as the sole panelist in this matter on September 23, 2008. 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.
In view of the fact that the Respondent did not file any response, the Panel has checked to ensure that the Center has discharged its responsibility to notify the Complaint to the Respondent in accordance with the Rules, paragraph 2(a). While the notification of the Complaint to the “postmaster” email address at the Domain Name could not be delivered, and there were delays in effecting delivery of the hard copies of the Complaint by courier, it appears that the Notification of Complaint document, and the Complaint itself, were successfully transmitted by email to the Respondent at the email address provided by him in the Whois particulars for the Domain Name. The Panel is accordingly satisfied that the Respondent has had actual notice of the Complaint.
The following uncontested facts are taken from the Complaint.
The Complainant is a hotel booking agency, providing bookings for hotels, and similar services, in over 150 cities around the world. It was created in 1993, and has traded since that date.
The Complainant is the proprietor of a number of registered trade marks consisting of or including the expression “Hotelconnect”. The various registrations include a United States service mark numbered 2752237 filed on May 15, 2002, and registered on August 19, 2003. That United States registration is for the word mark HOTELCONNECT, in respect of travel agency services, namely, providing information relating to tourist destinations, travel booking agencies, and information relating to reservations and bookings for transportation, all in international class 39. The registration also covers reservations and bookings for temporary lodgings, making restaurant reservations, and providing information relating to catering services (being services in international class 43).
The Complainant is also the proprietor of the Community Trade Mark HOTELCONNECT, registered with effect from November 10, 1998 (for the same or similar services), and of the word mark HOTELCONNECT registered in Australia with effect from March 30, 2004.
The Complainant also owns numerous domain name registrations which either consist of or incorporate the expression “hotelconnect”. Those include the domain names <hotelconnect.org>, <hotelconnect.biz>, and <hotelconnect.us>. The Complainant says that it has a presence in the United States of America, where the Respondent appears to reside, and where the Complainant has registered the domain name <hotelconnect.us>. The Complainant has also registered a subsidiary corporation in the United States of America, HotelConnect USA LLC.
The Respondent and the Domain Name
The Domain Name was registered on June 11, 2003.
As at January 22, 2008, the Domain Name resolved to a website (“the Respondent's website”) which contained numerous click-on search categories, generally related to travel, hotels, or holidays (e.g. “beach holidays”, “airline”, “travel agent”, “activity holidays”, and so on). The visitor to the Respondent's website was greeted with a welcome to the Respondent's website, and the words: “the Largest Hotel Search with Millions of Hotels Deals”. In addition to the travel/holiday related click-on links, there were also click-on links grouped under a “Popular Categories” heading, and these included the more general topics one typically finds on a landing page (e.g., under the heading “Lifestyle”, links to “personals”, “fitness”, and “pets”).
According to the Complaint, the Respondent has no relationship or nexus with the Complainant, and he has not been licensed or permitted to use the Complainant's trade marks for the registration of the Domain Name. Nor have the parties shared any relationship which might have given rise to such permission.
Searches carried out by the Complainant on Google (from the United States) did not yield any results linking the Respondent with the expression “Hotels Connect”, within the first 20 results (although there were results corresponding to the Complainant). Similarly, a search of the United States trade mark register on the expression “Hotels Connect”, did not produce any results corresponding to the Respondent as an individual, or to “Hotels Connect”, as a proprietor of an actual trade mark, and a search run through the American Dun and Bradstreet Inc. company database did not yield any results showing registered companies called “Hotels Connect”, or that corresponded to the Respondent as an individual.
The Complainant produced a page printed from the Respondent's website on July 24, 2008, showing a click-on link “Accommodation and Hotels in the UK”. The link was to the Complainant's United Kingdom website. The Complainant did not consent to this link appearing on the Respondent's website. The Respondent has also used the Respondent's website to provide links to the sites of certain of the Complainant's competitors.
The Panel has itself visited the Respondent's website. When the Panel visited the Respondent's website on October 6, 2008, the Respondent's website did not appear to be materially different from the screenshots of the Respondent's website which were produced with the Complaint.
The Complainant contends:
1. The Domain Name is confusingly similar to the Complainant's HOTELCONNECT mark.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following:
(i) The Respondent is not licensed or permitted to use the Complainant's HOTELCONNECT mark. The use of pay-per-click advertising to derive click-through revenue, does not constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.
(ii) Because revenue has been generated from misdirected traffic to the Respondent's website, the Respondent's use of the Domain Name does not constitute legitimate noncommercial use of the Domain Name, within paragraph 4(c)(iii) of the Policy. The overt use of the Complainant's trade mark in the registration of the Domain Name, and the use of click-through revenue sponsored link advertising, cannot constitute fair use within the scope of the Policy.
(iii) The Respondent is not known as “Hotelsconnect.com”. Paragraph 4(c)(ii) of the Policy therefore does not apply.
(iv) The Respondent is an unaffiliated, unrelated, third party, who has no conceivable legitimate reason to utilize the Complainant's trade marks.
3. The Domain Name was registered and is being used in bad faith:
(i) The Respondent purposefully registered the Domain Name to generate revenue for himself and divert traffic from the Complainant's legitimate website. The Respondent was aware of the Complainant's HOTELCONNECT brand at the time of registration of the Domain Name.
(ii) The use of a pay-per-click and sponsored link advertising through a Domain Name that corresponds to a complainant's trade mark, is itself indicative of bad faith registration (citing Movado LLC v. Titan Net, WIPO Case No. D2006-0824).
(iii) The Respondent has been guilty of “typo squatting” – that is, the intentional misspelling of words with intent to intercept and redirect consumers who make typing errors, from the consumer's intended destination to the typo squatter's (or an affiliate's) website. Typo squatting is in itself sufficient to justify a finding of bad faith (citing Amazon.com Inc. v. Steven Newman aka Jill Wasserstein aka Pluto Newman, WIPO Case No. D2006-0517).
(iv) In addition to the foregoing, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of products or services available at the Respondent's website. The Respondent's web page reproduces (by a link) the Complainant's home page, without the Complainant's consent, and creates an illusion of affiliation or relationship between the Respondent and the Complainant. The Respondent is purposefully utilizing the fame and notoriety of the Complainant and its brand, to the Complainant's detriment.
(v) The Respondent's direct promotion and endorsement of the Complainant's competitors (through the Respondent's website), brings the Respondent's actions into the sphere of a competitor. (A competitor includes one who acts in opposition to another, and the context does not imply or demand any restricted meaning, such as a commercial, or business, competitor (citing Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279)). As the Respondent and the Complainant have provisions on their respective websites to sell similar products, they are in competition against one another, in a narrow, commercial context. The Respondent purposefully registered the Domain Name to disrupt the Complainant's business, and subsequently to promote his own pay-per-click website.
The Respondent did not reply to the Complainant's contentions.
A. What the Complainant must prove – General
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable.”
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
B. Identical or Confusingly Similar
The Complainant has proved that it is the registered proprietor of the word mark HOTELCONNECT in a number of jurisdictions, including the United States of America. The Complainant therefore has “rights” in that mark for the purposes of paragraph 4(a)(i) of the Policy.
The Domain Name is clearly confusingly similar to the Complainant's HOTELCONNECT mark. The only difference is the inclusion in the Domain Name of the letter “s”, and that would be easily missed by many Internet users. The Domain Name is almost identical to the Complainant's mark, both visually and phonetically, and it conveys the same impression, or “idea.”
In those circumstances, the Complainant has established that the Domain Name is confusingly similar to the HOTELCONNECT mark in which the Complainant has rights.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest in the Domain Name.
That approach is summarized at paragraph 2.1 of the Center's online resource, the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP.”
In this case, the Complainant has not authorized the Respondent to use its HOTELCONNECT mark (or any confusingly similar expression), whether in a domain name or otherwise. There is nothing in the evidence to suggest that the Respondent might be commonly known by the Domain Name, so paragraph 4(c)(ii) of the Policy cannot apply. Nor can paragraph 4(c)(iii) of the Policy apply – the Respondent is not making a noncommercial use of the Domain Name, without intent for commercial gain.
In those circumstances, the Complainant has made out a sufficient prima facie case, and the evidentiary onus shifts to the Respondent to show that he has some right or legitimate interest in respect of the Domain Name.
The Respondent has not filed any Response, and has therefore failed to discharge that onus. The Complainant has therefore made out its case on this part of the Complaint.
For completeness, the Panel notes that its findings in section 6.D. of this decision on the question of bad faith registration and use, effectively rule out any possibility that the Respondent might have claimed a right or legitimate interest on the basis of use of the Domain Name (or demonstrable preparations to use it), prior to receiving any notice of the present dispute, in connection with some bona fide offering of goods or services. For the reasons set out in the next section of this decision, the Panel finds (in the absence of any explanation from the Respondent), that the Respondent's actions with respect to the Domain Name have not been bona fide.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) where [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) where the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) where [the respondent has], by using the disputed domain name, intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the respondent's] website or location.
The Panel is satisfied that the Respondent has registered and used the Domain Name for the bad faith purpose described at paragraph 4(b)(iv) above. The Panel has come to that view for the following reasons:
1. The Domain Name is virtually identical to the Complainant's HOTELCONNECT mark, and the Complainant has not authorized the Respondent to use its mark (or any expression confusingly similar thereto), whether in a domain name or otherwise.
2. In the absence of any Response, the Panel infers that the Respondent was aware of the Complainant and its HOTELCONNECT mark when the Respondent registered the Domain Name on June 11, 2003. First, the Complainant's registered mark number 2752237, HOTELCONNECT, had been filed with the United States Patent and Trademark Office on May 15, 2002, over one year before the Domain Name was registered. Any search of the United States trade mark register would have alerted the Respondent to the Complainant and its mark. Secondly, the Respondent has held the domain names <hotelconnect.org>, <hotelconnect.biz>, and <hotelconnect.us>, since July 2001, May 2002, and April 2002 respectively. All of those dates pre-date the date of registration of the Domain Name, and it seems to the Panel to be more likely than not that any person such as the Respondent who intended to acquire and use a domain name for the purpose of establishing a commercial website, would have been interested to know before proceeding with the acquisition, who held the same or very similar domain names in other general top level domains. Thirdly, the Complainant carries on business in numerous countries around the world, including in the United States of America, where the Respondent resides. As the Domain Name suggests, the Respondent's website is substantially concerned with hotel and travel bookings, and it seems improbable that the Respondent would have been unaware of the Complainant, a major international player in the same field, with a name almost identical to the Domain Name, when he registered the Domain Name. Finally, the Respondent has included on the Respondent's website, click-through links to numerous third party websites, one of which is the Complainant's website at “www.hotelconnect.co.uk”. While there is no evidence of when that link first appeared on the Respondent's website, in the absence of any denial of knowledge from the Respondent, the existence of the link tends to support the inference that the Respondent was aware of the Complainant and its business when he registered the Domain Name.
3. The Respondent's website has certain of the characteristics typically found with “landing page” websites operated by cybersquatters. In particular, the provision of links to third party websites, grouped under the broad heading “popular categories” and providing links with no apparent relevance at all to the supposed primary function of the website, are commonly found on landing page sites operated by cybersquatters. In this case, the bulk of the Respondent's website appears to have been directed at the hotel and travel market, but there are “popular category” links grouped under various subtopics, including “personals”, “fitness”, “pets”, “mortgage”, “used cars”, and “auto repairs”. The only point of including those links on the Respondent's website, would have been be for the Respondent to derive click-through revenue from visitors to the Respondent's website who clicked on one of the links.
4. If (as the Panel has found) the Respondent was aware of the Complainant and its business when he registered the Domain Name, he could not have failed to appreciate that he would attract to the Respondent's website a number of Internet users looking for sites associated with the Complainant. Having regard to the near identity between the Domain Name and the Complainant's HOTELCONNECT mark, the Panel infers (in the absence of any explanation from the Respondent) that the Respondent intended that such confusion would arise, and sought to derive benefit from it, either by attracting customers to his own hotel and travel booking operation (assuming one exists), or by deriving click-through revenue from site visitors who might click on one of the “popular category” links. Those circumstances fall squarely within paragraph 4(b)(iv) of the Policy – by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website, or of the products offered through the Respondent's website.
5. Before leaving the question of bad faith registration and use, the Panel notes that the Complainant's mark does appear to be well towards the descriptive end of the spectrum of trade marks (i.e. the range of marks from invented words at one end of the spectrum, to purely descriptive or generic expressions at the other). However, the Complainant has clearly satisfied the trade mark registration authorities in the United States, Australia, and the European Union, that its mark is capable of distinguishing and/or does distinguish the Complainant's services from those of other traders, and it is not for the Panel in an administrative proceeding such as this to second guess the decisions of those territorial authorities. Sometimes in the case of a relatively weak, substantially descriptive, mark, only minor variations will suffice for a respondent to avoid a finding that he or she has been guilty of bad faith exploitation of the complainant's goodwill in its trade mark. That might have been a matter for consideration in this case had the Respondent elected to file a Response. He has not done so, and in those circumstances the Panel draws the inference that the Respondent had no answer to the Complainant's allegations of bad faith, and that his intention was indeed to use the Domain Name for the bad faith purpose described at paragraph 4(b)(iv) of the Policy.
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 Name, <hotelsconnect.com> be transferred to the Complainant.
Date: October 6, 2008