WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ezeego One Travels and Tours, Ltd. v. Demand Domains, Inc.
Case No. D2010-1347
1. The Parties
The Complainant is Ezeego One Travels and Tours Ltd. of Mumbai, India, represented by W.S. Kane & Co, India.
The Respondent is Demand Domains, Inc. of Washington, United States of America (“USA”), internally represented.
2. The Domain Name and Registrar
The disputed domain name <ezeego1.net> (the “Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was originally filed with the WIPO Arbitration and Mediation Center (the “Center”) against Enom INC on August 9, 2010.
The Center transmitted its request for registrar verification to the Registrar on August 10, 2010. The Registrar replied the same day, confirming that the Domain Name had been placed under locked status to prevent transfers or changes during this proceeding, and that its registration agreement was in English and required the registrant to consent to the jurisdiction of the courts in King County, Washington, USA. The Registrar identified the registrant as Demand Domains, Inc. and stated that the current contact information could be found by a WhoIs lookup at its website.
The Center informed the Complainant by email of August 13, 2010, that the registrant as identified by the Registrar differed from the entity identified as the Respondent in the Complaint; that at the time of the Complaint, the Domain Name appeared to be registered under a privacy service called “Whois Privacy Protection Service, Inc.” but the Registrar had now identified the registrant as Demand Domains, Inc.; and that the Complaint would have to be amended by August 18, 2010, to name one or both of these as the Respondent. The Complainant submitted an Amended Complaint on August 17, 2010, naming Demand Domains, Inc. as the Respondent.
The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 19, 2010. In accordance with paragraph 5(a) of the Rules, the due date for Response was September 8, 2010. The Response was filed with the Center on September 8, 2010.
The Center appointed Jonathan Turner as the sole panelist in this matter on September 21, 2010. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Amended Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant provides travel services, in particular relating to adventure tourism, under the name “Ezeego1”. The Complainant has registered EZEEGO1 and numerous variants and homonyms thereof as marks for various goods and services in India. The Complainant has also registered numerous domain names comprising “ezeego1” or similar names, including <ezeego1.com> and <ezeego1.co.in> which are directed to the Complainant’s website. This website has been operated by the Complainant since November 2005.
The Respondent registered the Domain Name on May 4, 2008. As at August 13, 2010, the Domain Name was directed to a web page which displayed links apparently to websites offering or promoting various travel services. The web page also stated “This domain may be for sale.”, followed by a link with the wording “Buy this Domain”. The Domain Name currently resolves to a different web page which displays a series of buttons linked to websites offering a variety of goods and services, including travel services.
5. Parties’ Contentions
The Complainant claims that it has acquired tremendous goodwill and reputation in its business and that it has incurred over 66.21 crores of expenses in promoting its trade marks. It exhibits examples of its advertisements. It also refers to its trade mark and domain name registrations. It states that its website provides a virtual market place for travel services.
The Complainant submits that the Domain Name is confusingly similar to its marks and that the Respondent does not have any rights or legitimate interest in it. The Complainant contends that the Respondent adopted the Domain Name in order to take undue advantage of the reputation and goodwill that has accrued to the Complainant’s marks and that it is using the Domain Name to try to mislead and divert unwary customers to its website. The Complainant submits that this does not constitute a bona fide offering of goods or services.
The Complainant alleges that the Respondent registered and is using the Domain Name in bad faith. The Complainant states that after seeing the Complainant’s advertisements, customers and potential customers mostly access the Internet to learn details of the Complainant’s offerings, but that they may have an imperfect recollection of the Complainant’s advertised domain name and therefore land up on the Respondent’s web page. The Complainant contends that its business is thereby disrupted and that the Respondent is using the Domain Name to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship affiliation or endorsement of its website. The Complainant states that it has reason to believe that when a customer is so diverted, the Respondent stands to gain commercially through revenue sharing. Furthermore, since the Respondent’s website displays links to other websites offering or promoting travel services, the Complainant suffers direct economic loss when Internet users are thus diverted as well as the risk of further damage from being associated with poor quality services provided by other parties.
The Complainant requests a decision that the Domain Name be transferred to it.
The Respondent points out that, according to the certificates annexed to the Complaint, the Complainant’s registered trade marks are for stylized script representations, not for the words “Ezeego” or “Ezeego1” themselves. On this basis, the Respondent submits that the Domain Name is not confusingly similar to the Complainant’s marks. The Respondent also asserts that the Domain Name is not confusingly similar to the Complainant’s marks on the further ground that the Complainant’s marks are very diluted.
The Respondent states that others are using homonyms of “ezeego” in connection with travel and travel-related services and goods and maintains that the Complainant’s marks are not famous or well known, particularly in the USA where the Respondent is located. Given that the Domain Name comprises common words or a descriptive term, the Respondent submits that it has legitimate rights and interests since it was the first to register it.
The Respondent maintains that it did not register the Domain Name with any bad faith intent. In particular, the Respondent states that it did not register the Domain Name with any intent to divert Internet traffic from the Complainant. The Respondent points out that the Complainant’s website is still in its beta version and regards this as evidence that the Complainant’s mark is not famous. The Respondent also observes that a standard trademark search in the USA would not have put it on notice of the Complainant’s marks. The Respondent further comments that previous decisions under the UDRP have recognized that the provision of sponsored links is a common business practice and constitutes a bona fide offering of a service.
The Respondent requests the Panel to deny the Complaint.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.
These are cumulative requirements and it is therefore necessary to consider each of them in turn.
A. Identical or Confusingly Similar
The Panel finds on the evidence that the Complainant has registered and unregistered rights in the mark EZEEGO1. The evidence does not make it clear whether the Complainant’s registered marks include EZEEGO1 as a word mark. However, this is immaterial since the Panel is satisfied that the Complainant has unregistered rights in this mark protected by the law of passing off in India by virtue of its use and promotion as the branding of the Complainant’s business.
The Domain Name is effectively identical to this mark. It is well established that the generic top level domain suffix is discounted when comparing a domain name with a complainant’s mark for the purpose of this element of the UDRP. The first requirement of the Policy is satisfied.
B. Rights or Legitimate Interests
The Panel considers that the use made by the Respondent of the Domain Name does not constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the UDRP. On the contrary, the Panel is satisfied that the Respondent has used and is using the Domain Name in bad faith to divert Internet users seeking the Complainant’s website through sponsored links to other websites, including websites of the Complainant’s competitors, thereby profiting from the deception of Internet users.
It is evident that the Respondent is not commonly known by the Domain Name within the meaning of paragraph 4(c)(ii) of the UDRP. Nor is the Respondent making legitimate noncommercial or fair use of the Domain Name in accordance with paragraph 4(c)(iii) of the UDRP. On the contrary, the Respondent is making unfair commercial use of the Domain Name by misleadingly diverting consumers.
The circumstances identified in paragraph 4(c) of the UDRP are not exhaustive of those in which a right or legitimate interest may be found in a disputed domain name, but the Panel is satisfied on the evidence that there is no other basis on which the Respondent in this case could claim to have a right or legitimate interest in the Domain Name. The second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
The Panel finds on the evidence that the Respondent is using the Domain Name intentionally to attract Internet users to its web page for commercial gain in the form of click-through commissions on sponsored links by creating a likelihood of confusion with the Complainant’s mark as to the source of the Respondent’s web page. The Panel is satisfied that Internet users seeking the Complainant’s website, whether as a result of seeing one of the Complainant’s advertisements or a personal recommendation or some other factor, may well land on the Respondent’s web page due to the virtual identity of the Domain Name and the Complainant’s primary brand. Whether or not they then realize that it is not the Complainant’s website, they may click on one of the sponsored links triggering a commission for the Respondent and potentially lost business for the Complainant.
In accordance with paragraph 4(b)(iv) of the UDRP these circumstances constitute evidence of registration and use of the Domain Name in bad faith. The Respondent has not adduced evidence sufficient to displace this presumption. The Panel concludes that the Domain Name was registered and is being used in bad faith. The third requirement of the UDRP is satisfied.
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 <ezeego1.net> be transferred to the Complainant.
Dated: September 23, 2010