WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Octopustravel Group Limited v. Alexander Rosenblatt aka Yana Belkova
Case No. D2011-0417
1. The Parties
The Complainant is Octopustravel Group Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Boult Wade Tennant, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Alexander Rosenblatt of Singapore aka Yana Bolkova of Sydney, Australia, represented by Hazan Hollander, Australia.
2. The Domain Name and Registrar
The disputed domain name <octopus.com> is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and MediationCenter (the “Center”) on March 3, 2011. On March 4, 2011, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the disputed domain name. On March 4, 2011, Dotster, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 8, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 22, 2011.
The Center verified that the Complaint together with 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 March 25, 2011. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 14, 2011. The Response was filed with the Center on April 14, 2011.
The Center appointed Brigitte Joppich, Gordon Harris and Philip Argy as panelists in this matter on May 4, 2011. The Panel finds that it was properly constituted. Each member of 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.
4. Factual Background
The Complainant is doing business as a retailer of hotel accommodation and related services throughout the world and has been trading under the name OctopusTravel since 1999. Accommodation booked through the Complainant and its retailers covered more than 700,000 nights in 2010, and the Complainant’s global revenue amounted to USD 217.9 million in 2010 with marketing expenses in the amount of USD 4.8 million. The Complainant provides its services on the Internet at “www.octopustravel.com”.
The Complainant is the registered owner of numerous trademark registrations for “OCTOPUSTRAVEL”, inter alia International Registration No. 823144 OCTOPUSTRAVEL registered on November 24, 2003 (hereinafter referred to as the “OCTOPUSTRAVEL Mark”). The Complainant’s trademark covers services in international classes 39, 41, 42 and 43.
The disputed domain name was first registered in 1986 and was acquired by the Respondent on June 9, 2006. The disputed domain name has been used in connection with a website providing information on octopi and travel related advertising.
On November 18, 2008, the Complainant sent a cease and desist letter to a certain Mikhail Doublinski and a certain Yury Sharafutdinov.
The Respondent’s lawyer formally advised the Center that the person in control of the disputed domain name is Ms. Yana Belkova of Sydney, Australia and that Alexander Rosenblatt of Singapore is a fictitious name and address used by Ms. Belkova to mask her true identity.
5. Parties’ Contentions
The Complainant named ten Respondents in the present proceedings, including several companies, which are all, according to the Complainant, related somehow to the disputed domain name.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are made out in the present case:
(1) The disputed domain name is identical or confusingly similar to the Complainant’s OCTOPUSTRAVEL mark as the word “travel” is descriptive and the distinctive part of the Complainant’s trademark is “octopus”, which is identical to the disputed domain name.
(2) The Respondents have no rights or legitimate interests in respect of the disputed domain name as they are using the disputed domain name to trade off the goodwill and reputation of the Complainant by using the disputed domain name to redirect Internet users to third parties’ websites providing services identical to those of the Complainant, as they are not commonly known as “octopus” or “OctopusTravel”, and as the Respondents’ use of the disputed domain name is not bona fide under the Policy.
(3) The disputed domain name has been registered and is being used in bad faith. The Complainant contends that there is a high number of persons and companies related to the disputed domain name, that the Respondent Alexander Rosenblatt, who is currently listed, does not exist, that the Respondents’ use of a false name as registrant is fraudulent, that the Respondents have acted together to hide the identity of the person or persons who actually control the disputed domain name, that the disputed domain name has been used to generate income through links to third parties’ websites, that the Respondent Yana Beklova, who at one stage worked for the Complainant, requested an amount between USD 500,000 and USD 1,000,000 for the transfer of the disputed domain name, that the registrant of the disputed domain name sought to hide its identity through a WhoIs privacy protection service, that the Respondents tried to transfer the disputed domain name out of the reach of the Australian courts to avoid legal proceedings after having received the cease and desist letter, that some of the Respondents named by the Complainant have been involved in previous UDRP proceedings, which suggests a pattern of conduct, and that the disputed domain name was registered to intentionally attract customers looking for the Complainant’s website for commercial gain by creating a likelihood of confusion.
The Respondent contends that Yana Belkova is the owner of the disputed domain name, and that Yana Belkova chose the name Alexander Rosenblatt as an alias to hide her identity during the time when she tried to sell the disputed domain name, as she did not want her friends and family to discover that she would be earning a substantial sum of money from the sale of such name.
The Respondent states that she has been a website developer and considered purchasing a generic domain name as a result of her marketing and website design studies and that she acquired the disputed domain name on June 9, 2006 for a substantial sum of money. She contends that she registered the disputed domain name because the term “octopus” is generic and because she wanted to use her skills and expertise to create and develop her own website providing information related to octopi. Furthermore, the Respondent states that she received many spam emails and therefore decided to use a privacy service for the disputed domain name.
With regard to the three elements specified in paragraph 4(a) of the Policy, the Respondent contends that none of the three elements specified in paragraph 4(a) of the Policy are proven in the present case:
(1) The Respondent contends that the disputed domain name is not confusingly similar or identical to the Complainant’s trademarks, that it is a generic term which is descriptive of octopi and that it has not acquired any distinctiveness in a trademark sense and is not exclusively associated with the Complainant. The Respondent further states that there is substantial third party use of the term “octopus”.
(2) The Respondent has rights and legitimate interests in respect of the disputed domain name as she has continuously used the disputed domain name in its descriptive sense by operating a website providing information on octopi, as the disputed domain name is a common and descriptive word considered to be legitimately subject to registration on a first come, first served basis, and as she purchased the disputed domain name for its commercial value. The Respondent contends that the Complainant offered to purchase the disputed domain name for USD 100,000 and thereby acknowledged the legitimate ownership rights of the Respondent.
(3) The Respondent admits that she used the disputed domain name to sell advertising space and has tried to sell the disputed domain name but states that any profits made with the disputed domain name were made as a result of the generic value of the disputed domain name, without any intention to profit from trademark rights of the Complainant. The Respondent states that the disputed domain name has not been registered in bad faith and is not being used by the Respondent in bad faith, that the Respondent purchased the disputed domain name based on its value as a generic domain name, that she is using it in its descriptive sense, that she sells advertising space and that there is no likelihood of confusion with the Complainant when Internet users visit the website. The Respondent submits that an amount between USD 500,000 and USD 1,000,000 in return for the transfer of the disputed domain name would not be excessive.
The Respondent finally contends that the Complaint was brought in an attempt at Reverse Domain Name Hijacking.
6. Discussion and Findings
The first point to be dealt with is the identity of the Respondent. The Complainant named a total number of ten Respondents all allegedly being related somehow to the disputed domain name, including Alexander Rosenblatt and Yana Belkova. According to the information in the concerned registrar’s WhoIs database, the disputed domain name is registered in the name of Mr. Alexander Rosenblatt only. As per the Respondent’s plausible contentions, Alexander Rosenblatt is an alias of Yana Belkova. Therefore, the Panel will treat Yana Belkova aka Alexander Rosenblatt as sole Respondent in this proceeding. The Complainant’s contentions regarding the relations of the other alleged Respondents to the disputed domain name are irrelevant.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trade mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name consists of the term “octopus”, which is included in the Complainant’s OCTOPUSTRAVEL Mark.
The fact that the Complainant’s trademark contains an additional element, namely the word “travel”, does not hinder a finding of confusing similarity. It is well established that the similarity between a trademark and a disputed domain name is not eliminated only by the fact that the trademark includes additional generic elements which are not included in the disputed domain name (cf. La Societé des Autoroutes Paris Rhin Rhône v. Keyword Marketing Inc., WIPO Case No. D2006-1270: omission of the word “autoroutes”; Corcom, Inc. v. Jazette Enterprises Limited, WIPO Case No. D2007-1218: omission of the word “sports”; Intesa Sanpaolo S.p.A. v. George Papadakos, WIPO Case No. D2008-1531: omission of the word “bank”; Pieter de Haan v. Orville Smith Ltd., WIPO Case No. DNL2008-0017: omission of the word “international”; Nishan Systems, Inc. v. Nishan Ltd., WIPO Case No. D2003-0204: omission of the word “systems”; General Growth Properties, Inc. v. Baker Ballantine, WIPO Case No. D2005-0919: omission of the word “mall”).
Furthermore, it is well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the Complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent denied the Complainant’s assertions.
However, based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent. Although the disputed domain name consists only of a generic term, the Respondent has not provided any persuasive evidence under paragraph 4(c) of the Policy for the following reasons:
The website available at the disputed domain name contains advertising links to the Complainant’s competitors (i.e., bookings.com). It is well established that there is no bona fide offering of goods and services where the use of the disputed domain name for such offering constitutes a trademark infringement (cf. Serta, Inc. v. Maximum Investment Corporation, WIPO Case No. D2000-0123). Furthermore, the Respondent has not shown that she is commonly known by the disputed domain name or is making a legitimate noncommercial or fair use of the domain name.
In addition, the Respondent, having once worked for the Complainant, was obviously aware of the Complainant at the time when she purchased the disputed domain name and therefore registered the disputed domain name in bad faith. The mere registration of a generic word as a domain name will only be sufficient in and of itself to create a legitimate interest if the domain name is registered in good faith (cf. WIPO Overview 2.0: “Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase).”; Gibson, LLC v. Jeanette Valencia, WIPO Case No. D2010-0490; “In response, Respondent claims that the term ‘Modern Cowgirl’ is a descriptive term and therefore that she has a legitimate interest in using this descriptive term for her website. Although that assertion might be accurate with respect to a website that blogs about modern cowgirls, it is not true with respect to the portion of the site that advertised the sale of goods under a name that infringes Complainant’s registered trademark. A trademarked descriptive term may be used for its descriptive value, but it is not legitimate to use the term ‘because of its value as a trademark.’ See HSBC Finance (sic) Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062; cf. 15 U.S.C. § 1115(b)(4).”; Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset, WIPO Case No. D2002-1058: “Whilst the Complainant’s trading name ‘Complete Sports Betting’ may be descriptive, the Respondent knew of the reputation and goodwill that the Complainant had established in this name and registered the disputed domain name with knowledge of the Complainant’s rights and reputation. Under these circumstances, it cannot be concluded that the Respondent is offering bona fide goods or services or making a ‘fair’ use of the disputed domain name when the goods and services that the Respondent intends to offer using the disputed domain name are in direct competition with those of the Complainant. The intention appears to be to cause confusion amongst the gaming community so that those who are interested in the Complainant’s services are diverted to a web site of the Respondent or a competitor of the Complainant.”; Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016: “Therefore, although the registration and offering for sale of allocation.com as a domain name may constitute a legitimate interest of Respondent in the domain name, this is different if it were shown that allocation.com has been chosen with the intent to profit from or otherwise abuse Complainant’s trademark rights.”; Jet Marques v. Vertical Axis, Inc, WIPO Case No. D2006-0250.
Finally, the Panel is not satisfied that the website at the disputed domain name can seriously be considered as providing bona fide information on octopi; rather, it strikes the Panel as (at least) pretextual The generic use of “octopus” could well be plausible if for example combined with credible other supporting evidence, but even a superficial Google search reveals that the text about the cephalopod species that appears on the Respondent’s website appears wholly copied from other sites.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out of pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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 its website or location.
The Panel finds that the Respondent registered the disputed domain name in bad faith. As noted above, the Respondent registered the disputed domain name in 2006, by virtue of an acquisition from a third party. It is well established that a transfer of a domain name to a third party amounts to a new registration under the Policy (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions; Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), WIPO Case No. D2001-0782; PAA Laboratories GmbH v. Printing Arts America, WIPO Case No. D2004-0338). The Respondent, a former employee of the Complainant, admitted that she was aware of the Complainant at the time when she purchased the disputed domain name. In the absence of the Respondent having established rights or legitimate interests in the disputed domain name, her claims of having no intention to capitalize on likely confusion with the Complainant’s trademark lacks persuasiveness in the circumstances.
As to bad faith use, by using the disputed domain name in connection with a website offering advertising from the Complainant’s direct competitors, which constitutes an infringement of the Complainant’s right in its OCTOPUSTRAVEL Mark, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain. Such use and exploitation of trademarks to obtain commercial profit from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met.
The Panel points out that, although the disputed domain name has been first registered back in 1986, the Complainant’s trademark registrations predate the Respondent’s acquisition of the disputed domain name by many years. Furthermore, although the disputed domain name may have a substantial value based on its generic meaning, this for itself is no basis to deny the Complaint. Even if a domain name is generic, there is always the possibility of a trademark infringement and the registrant of such domain name, especially one with such clear prior knowledge of a relevant rights holder’s trademark rights, has to be aware of this.
7. Reverse Domain Name Hijacking
The Respondent requests a finding of reverse domain name hijacking. This is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Moreover, paragraph 15(e) of the Rules provides as follows: “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
In the present case, where the Complainant owns several registered marks in a name confusingly similar to the second level of the disputed domain name and where the Complainant’s rights clearly predate the Respondent’s domain name acquisition, and the Panel’s below finding that the Complainant has made out its case under the Policy and is accordingly entitled to its requested remedy, the Panel finds that there is no room for a reverse domain name hijacking order.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <octopus.com> be transferred to the Complainant.
Philip N. Argy
Dated: May 23, 2011