WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WorldVentures Ltd. v. EWORLDVENTURES.COM
Case No. D2010-1797
1. The Parties
Complainant is WorldVentures Ltd. of Indianapolis, Indiana, United States of America, represented by Gowling Lafleur Henderson, LLP, Canada.
Respondent is EWORLDVENTURES.COM of Cheverly, Maryland, United States of America.
2. The Domain Names and Registrar
Each of the four disputed domain names, <eworldventures.biz>, <eworldventures.com>, <eworldventures.info>, and <eworldventures.net> is registered with GoDaddy.com, Inc. (“GoDaddy”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on October 26, 2010. On October 26, 2010, the Center transmitted a request for registrar verification to GoDaddy, by email, in connection with each of the disputed domain names. On November 27, 2010, GoDaddy transmitted to the Center, by email, its verification response, which disclosed registrant and contact information for the disputed domain names that differed from the respondent named and contact information provided in the Complaint. The Center notified the Complainant, by email, on October 28, 2010, providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 29, 2010.
The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 24, 2010.
The Center appointed Debra J. Stanek as the sole panelist in this matter on December 6, 2010. 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
Complainant has offered travel-related services under its WORLDVENTURES trademark since 1995. The mark is the subject of a United States federal trademark registration that issued in May 2007. Complainant also operates a website at <worldventures.com>, a domain name that it registered in 2002.
In 2007, Respondent registered the four domain names at issue. Currently, two of them redirect visitors to the home page of a website of one of a competing travel service company, while the other two resolve to a page that offers travel services from that same competitor. Respondent did not respond to Complainant’s cease and desist letter, sent in February 2010.
5. Parties’ Contentions
1. Identical or Confusingly Similar
Complainant owns the mark WORLDVENTURES, which is registered in the United States and has been in use since 1995.
Each of the disputed domain names is confusingly similar to Complainant’s mark because: (1) it incorporates the whole of Complainant’s mark, (2) the addition of the letter “e” at the beginning of a mark to create a domain name does not diminish confusion as the domain name remains nearly identical in appearance, sound, and idea suggested; instead, because the letter “e” is associated with online electronic commerce, its presence enhances confusion because visitors will expect it to be used with Complainant’s online travel services.
2. Rights or Legitimate Interests
There is no evidence that Respondent has ever used any of the domain names in connection with a bona fide offering of goods or services. There is no relationship between Complainant and Respondent, and Complainant has not authorized or licensed Respondent to use its mark in a domain name.
Respondent is using the domain names to direct to websites that compete with Complainant, which cannot be considered bona fide use.
There is no evidence to suggest that Respondent is commonly known by any of the domain names or is making or intends to make noncommercial or fair use of the domain names.
3. Registered and Used in Bad Faith
Complainant asserts that the registration of four domain names that contain marks to which Respondent has no right shows a pattern of engaging in such conduct that justifies a finding of bad faith registration and use. Further, Respondent’s registrations prevent Complainant from registering the domain names.
Complainant also asserts that Respondent registered the domain names in order to disrupt its business by redirecting visitors to Complainant’s competitors.
Complainant also asserts that Respondent, by redirecting visitors to its competitors, is using the domain names to attract visitors to Respondent’s website for commercial gain.
Complainant also points to the following as further evidence of bad faith: (1) Respondent had constructive knowledge of Complainant’s rights in its WORLDVENTURES mark as a result of Complainant’s United States trademark registrations, and likely had actual knowledge in light of the fact that the domain names are identical to Complainant’s mark except for the addition of the letter “e.” (2) Respondent failed to respond to Complainant’s transfer request.
Respondent did not respond to the Complaint.
6. Discussion and Findings
In order to prevail, Complainant must prove, as to each disputed domain name, that:
(i) It is identical or confusingly similar to a mark in which Complainant has rights.
(ii) Respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent’s bad faith registration and use, see Policy, paragraph 4(b).
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements as to each of the disputed domain names. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Rules, paragraph 14(b).
The primary consequence of Respondent’s failure to respond is that it has not made any argument or offered any evidence described in paragraph 4(c) of the Policy, such as using (or preparing to use) the domain name before the dispute, being known by the domain name, or making legitimate noncommercial or fair use of the domain name, that might support a finding that Respondent has rights or legitimate interests in the domain name. Nor has Respondent provided any evidence on the issue of bad faith.
A. Procedural Matters
The Complaint seeks relief as to four domain names. The Rules provide that: “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” See Rules, 3(c). Here, each of the domain names is registered to the same holder.
B. Substantive Discussion
1. Identical or Confusingly Similar
Complainant has established its rights in the mark WORLDVENTURES by virtue of the evidence of its United States. federal trademark registration.
The disputed domain names differ only as to the generic top-level domain (.com, .net, .biz, and .info), which is not relevant for purposes of this comparison. The domain names are not identical to Complainant’s mark. Complainant asserts that each is nonetheless confusingly similar because it includes Complainant’s entire mark, preceded by the letter “e”, which is commonly used to refer to electronic or “e”-commerce.
The Panel agrees that, as a general matter, a domain name is likely to be deemed confusingly similar to a mark if it incorporates the mark or a variation of the mark. The Panel also agrees that the addition of the letter “e” clearly has a connotation relating to the Internet and e-commerce and does nothing to effectively differentiate or distinguish any of the domain names from Complainant’s mark, which makes up the dominant portion of each domain name.
The Panel finds each of the domain names is confusingly similar to a mark in which Complainant has rights.
2. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes a prima facie case, the Respondent carries the burden of showing rights or legitimate interests in the domain name).
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that Complainant has made a prima facie showing as to the examples set out in paragraphs 4(c)(ii) and (iii) of the Policy.
It does not appear that Respondent or Respondent’s business is known by EWORLDVENTURES.COM. As discussed above, the domain names themselves redirect to other sites which are operating other different domain names and which do not appear to use the EWORLDVENTURES.COM name.1 The named registrant for each domain name is EWORLDVENTURES.COM; however, under these circumstances, the Panel does not find this to be credible evidence that Respondent is commonly known by that name.
The printouts showing the pages displayed when visitors try to access any of the domain names establish that Respondent is not making a noncommercial or fair use of the domain names.
It is less clear that Complainant has made a prima facie showing as to the example set out in paragraph 4(c)(i) of the Policy. Respondent’s registration of the domain names in March 2007 predates Complainant’s United States trademark registration, which did not issue until May 2007. Moreover, although the Complaint asserts common law rights in the mark dating back to 1995, Complainant has not provided evidence regarding length of use and amount of sales, the nature and extent of its advertising, consumer surveys, or media recognition, that would establish trademark rights in a mark that is not registered. See Overview of WIPO Panel Views on Selected UDRP Questions, Paragraph 1.7 (complainant asserting rights in unregistered trademark rights must show that the mark has become a distinctive identifier associated with complainant or its goods and services, such as by providing evidence of length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition). Further, the allegations of common law rights are supported only by the certification of Complainant’s counsel. As a general matter, the Panel gives little or no weight to unsupported statements by a party’s representative as to factual matters that would not, in ordinary circumstances, be within the representative’s personal knowledge, and that are easily established by documentary evidence.
However, the Panel’s review of the public records pertaining to Complainant’s trademark registration, available through the U.S. Patent and Trademark Office online Trademark Electronic Search System (“TESS”) database, disclosed the verification by Complainant that the specimen of the mark provided with the application (which bears the term WORLDVENTURES) was in use in commerce as of the January 2006 filing date of the application.
Under these circumstances, which include the close resemblance of the domain names to Complainant’s mark, Respondent’s use of the domain names to redirect visitors to websites associated with Complainant’s competitor in the travel industry, and the adverse inferences that arise from Respondent’s failure to respond, the Panel concludes that Respondent’s offering is not bona fide.
Accordingly, the Panel concludes that Complainant has established that Respondent has no rights or legitimate interests in respect of any of the disputed domain names.
3. Registered and Used in Bad Faith
Complainant must also establish that each domain name was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which may establish bad faith, (see Policy, paragraph 4(b)(i)-(iv)):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs (see Policy, paragraph 4(b)(i)).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct (see Policy, paragraph 4(b)(ii)).
(3) Registering the domain name primarily to disrupt the business of a competitor (see Policy, paragraph 4(b)(iii)).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or a product or service on [the respondent’s] web site or location, (see Policy, paragraph 4(b)(iv)).
Given the resemblance between the domain names and Complainant’s mark and the nature of Respondent’s use, the Panel finds that it is most probable that Respondent had actual knowledge of Complainant’s trademark rights at the time the domain names were registered, constituting bad faith registration and use under paragraph 4(b)(iv). In addition, the registration of four domain names establishes a pattern under paragraph 4(b)(ii). Therefore, the Panel concludes that Complainant has established that the domain names were registered and are being used in bad faith
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that each of the domain names, <eworldventures.biz>, <eworldventures.com>, <eworldventures.info>, and <eworldventures.net> be transferred to Complainant.
Debra J. Stanek
Dated: December 20, 2010
1 Consistent with the consensus view, the Panel undertook limited factual research to confirm some of the assertions in the Complaint. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 4.5 (Panel may visit site linked to disputed domain name and may undertake limited factual research into the public record).