WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
I-TO-I International Projects Limited v. Quantec, LLC / Novo Point, LLC
Case No. D2011-1492
1. The Parties
The Complainant is I-TO-I International Projects Limited of Leeds, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by SafeNames Ltd., United Kingdom.
The Respondents are Quantec, LLC / Novo Point, LLC (the “Respondents”) of Dallas, United States of America (“US”).
2. The Domain Name and Registrar
The disputed domain name <itoitravel.com> (the “Disputed Domain Name”) is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) against Whois Privacy Services Pty Ltd on September 5, 2011. On September 6, 2011, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the Disputed Domain Name. On September 7, 2011, Fabulous.com 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 September 9, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. This email communication was copied to Ondova Limited, the administrative contact of the registrants, as disclosed by the Registrar. The Complainant filed an amended Complaint on September 12, 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”).
On September 12, 2011, the Center received an email communication from an individual named Peter Loh, who identified himself as counsel to federal court appointed receiver Peter S. Vogel (the “Receiver”), and notified the Center that the Disputed Domain Name was subject to the jurisdiction of the Receiver, as they were part of the assets of the Respondents, who were now in liquidation. In the same email communication, Peter Loh introduced, amongst others, an individual named Joshua Cox as an attorney assisting the Receiver, to whom such communication was copied.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on September 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2011. The Respondents did not submit any Response. Accordingly, the Center notified the Respondents of their default on October 4, 2011.
Although no formal Response was submitted, the Center did receive various communications from third parties not named as Respondents regarding the present dispute, principally from Joshua Cox (as detailed below under Respondents’ contentions).
The Center appointed Gabriela Kennedy as the sole panelist in this matter on October 13, 2011. 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.
Following the Panel’s review of the correspondence and documents received from Mr. Cox and other relevant parties, the Panel issued Administrative Panel Procedural Order No. 1 on October 26, 2011, in which the Panel raised a requisition for documentary evidence from the Respondents as follows:
“In respect of the Respondents, the Panel requests submission of evidence:
(a) of the date(s) upon which Quantec, LLC and Novo Point, LLC became the registrants of the Disputed Domain Name; and
(b) that the Disputed Domain Name is within the scope of "Receivership Assets" for the purposes of the Receivership Order entered on November 24, 2010 by United States District Court Judge Royal Ferguson in the lawsuit styled In re Ondova Limited Company, Case No. 3; 09-cv-0988 by no later than November 2, 2011.”
Such Administrative Panel Procedural Order also invited supplemental submissions in response from the Complainant, to be submitted by November 9, 2011. The Center received supplemental submissions from Mr. Cox (on behalf of the Respondents) on November 3, 2011 and from the Complainant on November 9, 2011
4. Factual Background
The Complainant is an English company and subsidiary of TUI Travel PLC, incorporated in 1994, and is a provider of Teaching English as a Foreign Language (TEFL) / Teaching English to Speakers of Other Languages (TESOL) courses, which are offered to students in combination with opportunities for volunteer work abroad. The Complainant owns numerous trademark registrations for the I-TO-I mark around the world, including registrations in Canada dating from March 2004, Community Trademarks dating from May 2003, and registrations in the US dating from January 2005. The Complainant also registered various domain names incorporating I-TO-I as far back as 1996, including <i-to-i.com> and <i-to-i.co.uk>.
According to various court documents submitted by Mr. Cox (as discussed below in relation to submissions from Mr. Cox), the Respondents are companies incorporated in the US Virgin Islands and are amongst numerous other companies under the direct or indirect control of an individual named Jeffrey Baron and/or the company Ondova Limited Company, named as debtors in these documents.
The Disputed Domain Name was registered on December 31, 2005 or January 1, 2006 (depending on the relevant time zone). On the basis of the observations contained in the Complaint, it can be inferred that as at September 5, 2011 (the date of filing the Complaint), the Disputed Domain Name was active and resolved to a parking page featuring pay-per-click (“PPC”) sponsored links. On September 20, 2011, the Center received another email communication from Peter Loh asserting, amongst other things, that the Receiver had decided to deactivate the Disputed Domain Name in an effort to address the Complainant’s concerns. On November 3, 2011, Mr. Cox confirmed in his supplemental submissions to the Center that such deactivation had been accomplished. As at the date of this decision, the Disputed Domain Name does not resolve to an active website.
5. Parties’ Contentions
The Complainant’s contentions can be summarised as follows:
(a) The Disputed Domain Name is confusingly similar to the Complainant’s I-TO-I mark:
(i) the Complainant is the sole proprietor of numerous trademark registrations for or incorporating I-TO-I, including in Europe, US, Canada and Australia. The Complainant also has common law rights in respect of the I-TO-I mark by virtue of its use of the mark for over 15 years;
(ii) the Complainant, its affiliates, subsidiaries and associated companies own domain names which incorporate the term “i-to-i”, all of which were registered before the registration of the Disputed Domain Name;
(iii) the Disputed Domain Name can be said to be a derivative of the famous mark “I-TO-I”, which it wholly incorporates, and the presence or absence of punctuation marks such as hyphens does not alter a finding of confusing similarity; and
(iv) the Respondents used the terms “itoi” and “travel” in the Disputed Domain Name, to cause confusion between the Disputed Domain Name and the Complainant’s well-known mark as the word “travel” is not only a generic word but it is also descriptive of Complainant’s business. The inclusion of the word “travel” in the Disputed Domain Name increases the likelihood of confusion between the Disputed Domain Name and the Complainant’s I-TO-I trademark.
(b) The Respondents do not have rights or legitimate interests in the Disputed Domain Name:
(i) the Disputed Domain Name was registered in 2006, 8 years after the Complainant created and developed their I-TO-I mark;
(ii) the Respondents have no registered trademarks for I-TO-I and as far as the Complainant is aware, the Complainant is the sole owner of the I-TO-I trademarks for products and services relating to travel;
(iii) before the notice of this dispute to the Respondents there was no use of, or demonstrable preparation 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;
(iv) the Respondents attempted to increase the likelihood of confusion in the minds of Internet users directed to the PPC website by the addition of the word “travel” to ensure that users would be misled into believing the website is associated with the Complainant;
(v) the Disputed Domain Name was selected in order to take unfair advantage of and to trade on the fame of the Complainant’s mark and such use does not establish rights or legitimate interests;
(vi) the Respondents have not been licensed or given permission by the Complainant to use any of its trademarks, or to incorporate any of those trademarks in a corresponding domain name;
(vii) the Respondents are acting solely as a conduit to third party goods and services, and are receiving click-through revenue by linking to such third party offers. The Respondents have registered the Disputed Domain Name in order to misleadingly divert consumers to their web page for commercial gain. Such use tarnishes the Complainant’s trademarks as it creates a gateway between users who are more likely than not to be looking for the Complainant but instead are directed towards a website where the Complainant’s competitors are advertised and where their services are freely available;
(viii) the Respondents are not making legitimate, noncommercial use of the Disputed Domain Name; and
(ix) the use of the Disputed Domain Name in connection with a PPC parking page does not constitute a bona fide offering of goods and services.
(c) The Disputed Domain Name has been registered and is being used in bad faith:
(i) the Respondents registered the Disputed Domain Name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, and the Respondents have engaged in a pattern of such conduct;
(ii) the Respondents [sic.] have been involved in previous WIPO UDRP cases where they were found to have infringed upon the intellectual property rights of third parties (the Panel notes that the documentary evidence submitted in support of this contention relates to Texas International Property Associates (“TIPA”), the relevance of which entity the Complainant explains in its supplemental submissions, as set out below);
(iii) the Respondents are no ordinary innocent Internet users but are professional domainers. Thus the burden is on the Respondents to check that the domain names that they register do not infringe upon third party intellectual property rights. An inference can be drawn from such conduct and is evidence that the Respondents were aware of the Complainant’s trademark rights prior to registration of the Disputed Domain Name and intentionally registered the Disputed Domain Name in apparent bad faith;
(iv) the Respondents have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor. The Respondents are disrupting the Complainant’s business as the Respondents are currently achieving financial gain through the click through links;
(v) the Respondents are trading on the value of the Complainant’s I-TO-I mark and are deriving an economic benefit from the use of the Disputed Domain Name, either by attracting Internet users to the 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 website or location or a product or service on the website or location;
(vi) the Respondents are responsible for all data on the web page to which the Disputed Domain Name resolves;
(vii) an inference of bad faith can be drawn from the fact that the Respondents, when registering the Disputed Domain Name have used the privacy setting on the WhoIs details, thereby withholding their details;
(viii) a simple cursory search of “itoi” on Yahoo or Google website would have revealed that it is a trademark and due to the Complainant’s extensive use of the mark an inference can be drawn that at the time of registration the Respondents must have known of the Complainant’s interest;
(ix) the Respondents did not simply create the term “itoi” adding the descriptive term “travel” and then decide to register <itoitravel.com> creating a website which offers PPC links providing services of the Complainant and the Complainant’s competitors without first having knowledge of the Complainant. On the balance of probabilities, it can be inferred that the Respondents knew or should have known of the Complainant’s trademark rights prior to the registration of the Disputed Domain Name; and
(x) the Complainant’s trademark has a strong reputation and is widely known as is evidenced in its substantial use globally.
The Respondents did not reply to the Complainant’s contentions.
The fact that the Respondents have not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondents to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).
Although no formal Response was submitted, submissions were made to the Center by the individual Joshua Cox on behalf of the Respondents, both before the Panel’s issue of the Administrative Panel Procedural Order No. 1 (“Submissions from Mr. Cox”) and thereafter (”Supplemental Submissions from Mr. Cox”).
Submissions from Mr. Cox
On September 14, 2011, the Center received a letter from Mr. Cox notifying the Center of an ongoing US District Court for the Northern District of Texas lawsuit, Netsphere v. Baron et al., Case No. 3; 09cv988, in which the Respondents were named as “Receivership Parties” and the Disputed Domain Name was alleged to be part of the “Receivership Assets”. Copies of the relevant Order Appointing Receiver (dated November 24, 2010), Order Granting the Receiver’s Motion to Clarify the Receiver’s Order with Respect to Novo Point, LLC and Quantec, LLC (dated December 17, 2010) and Notice of Employment of Joshua Cox as Consultant to Receiver (dated December 29, 2010) (collectively the “Receivership Documents”), in respect of the US District Court for the Northern District of Texas Dallas Division lawsuit Netsphere, Inc et al v. Jeffrey Baron and Ondova Limited Company / In re; Ondova Limited Company, Case No. 3; 09-cv-0988[-F] (the “Lawsuit”), were also received by the Center. According to Mr. Cox, the Order Appointing Receiver mandated a stay of all actions against “Receivership Assets”, including the Disputed Domain Name, during the pendency of the relevant receivership.
On October 6, 2011, the Center received a second letter from Mr. Cox in response to receipt of the Center’s Notification of the Respondents’ Default, in which Mr. Cox alleged that in accordance with the terms of the Order Appointing Receiver, the Center was prohibited from continuing any action with respect to the Disputed Domain Name during the pendency of the receivership, and requested that the Center suspend the present administrative proceedings. On October 6, 2011, the Center informed Mr. Cox through email communication of a panel’s discretion to determine the effect of any court proceedings commenced prior to or in the course of any UDRP proceedings, under paragraph 18 of the Rules.
C. Parties’ Supplemental Submissions in Accordance with Administrative Panel Procedural Order No. 1
Supplemental Submissions from Mr. Cox
The Supplemental Submissions from Mr. Cox reiterate the view that pursuant to the terms of the Order Appointing Receiver, the Center and the Complainant were prohibited from continuing to prosecute any action with respect to the Disputed Domain Name during the pendency of the receivership. Separately, Mr. Cox submitted that as an accommodation to the Center and the Complainant, the Receiver had authorised the deactivation of the Disputed Domain Name during the pendency of the receivership and confirmed that such deactivation had been accomplished.
The above submissions were accompanied by four enclosures. In addition to re-submitting two of the Receivership Documents, Mr. Cox also submitted two WhoIs history records for the Disputed Domain Name as of September 29, 2010 and September 12, 2011 respectively (discussed below under Receivership).
Supplemental submissions from the Complainant
The Complainant’s supplemental contentions can be summarised as follows:
(a) Issues pertaining to the registrant of the Disputed Domain Name:
(i) the WhoIs history for the Disputed Domain Name provided by Joshua Cox (as a supplemental submission) provides that the WhoIs details were updated on September 6, 2011 to reflect the Respondents as the registrants of the Disputed Domain Name, which reflects a date subsequent to the filing of the Complaint on September 5, 2011. The Complainant asserts the exact true details of the registrant is questionable and on a balance of probabilities most likely to be false;
(ii) the registrant listed on the WhoIs details dating back to the registration date of the Disputed Domain Name is TIPA, prior to the use of Whois Privacy Services Pty Ltd. It is more than probable that the registrant details were changed upon notice of the dispute to reflect Quantec, LLC / NOVO Point, LLC (the current information) where previously it reflected the registrant TIPA (the information prior to the privacy shield being lifted);
(iii) it was held in prior WIPO UDRP cases (filed against TIPA) that there was no connection between TIPA and the Receivership Order and neither was there a connection between the Disputed Domain Name and the Receivership Order. It is possible that the registrant details may have been altered at the time of receipt of the Complaint to reflect Quantec, LLC and Novo Point, LLC, Domain Admin; Damon Nelson - Manager, so as not to encounter the same problem in this current dispute as was encountered by Joshua Cox in previous disputes. Joshua Cox has intervened in numerous cases involving TIPA; and
(iv) TIPA is a well-known habitual cybersquatter and its illegitimate and treacherous acts have been highly noted by panels in previous WIPO UDRP cases.
(b) The Receivership Order is irrelevant to the present dispute:
(i) the Disputed Domain Name is not a named asset in the Receivership Order, as decided by a prior WIPO UDRP panel given that the Receivership Order relates to a portfolio of Internet domain names for which Ondova Limited acted as registrar. In the Receivership Order, movement and transfer of the domain names relate to domain names registered with Ondova Limited. The Disputed Domain Name is registered with Fabulous.com and not Ondova Limited;
(ii) the Receivership Order does not extend to the Disputed Domain Name licensed for use by Fabulous.com. The relationship that exists in relation to the Disputed Domain Name is between Fabulous.com and the registrant, for which Ondova Limited has no relation. The Respondents do not have any proprietary rights in the Disputed Domain Name and merely are granted a licence of use by Fabulous.com which was expressed in the registration agreement; and
(iii) the UDRP Policy which is adopted by Fabulous.com is between the registrar and the registrant of the Disputed Domain Name <itoitravel.com>. The Disputed Domain Name and the registrar Fabulous.com are not named in the receivership and therefore the jurisdiction of the court does not extend to either.
6. Discussion and Findings
Prior to discussing the Panel’s findings under paragraph 4(a) of the Policy, the Panel will address the effect of the Lawsuit and the submissions from Mr. Cox (as mentioned under Procedural History). The Panel notes that there are a number of domain name disputes decided by WIPO panels this year, in which the individual Joshua Cox has made submissions on behalf of the relevant respondents (which repeatedly involve the Texan entities URDMC LLC and/or TIPA) similar to those made in the present proceedings, including the submission of the Receivership Documents (in whole or in part) and assertions to the effect that the Disputed Domain Name in question constitute “Receivership Assets” and consequently cannot be transferred (see Amica Mutual Insurance Company v. Texas International Property Associates, URDMC LLC, WIPO Case No. D2010-2144; Eli Lilly and Company v. Texas International Property Associates, WIPO Case No. D2010-1985; Judah Smith v. Whois Privacy Services Pty. Ltd. / URDMC LLC, WIPO Case No. D2011-0397; American Woodmark Corporation v. Whois Privacy Services Pty Ltd, Texas International Properties Associates, URDMC LLC, WIPO Case No. D2011-0804; and Eli Lilly and Company v. URDMC LLC, WIPO Case No. D2011-0715 (the “Previous Cases”)). In each instance, no formal response was submitted by the named respondent, the disputed domain name resolved to a parking page containing what appears to be sponsored links (including links to competitors of the relevant complainant) and in each instance, a decision to transfer in favor of the relevant complainant was rendered.
Although the general facts of the present case are similar to the facts of such Previous Cases, an important distinguishing feature is that the Respondents are in fact named in the Order Appointing Receiver as “Receivership Parties” (whereas in the Previous Cases they were not). However, in line with the Previous Cases, the Panel found insufficient evidence to establish that the Disputed Domain Name comes within the scope of “Receivership Assets” or otherwise fell within the scope of the court Order, which merely makes reference to a “portfolio of internet domain names” belonging to a number of companies, including the Respondents, without providing a schedule or otherwise particularising the relevant domain names and/or whether they were registered in the name(s) of any of the Receivership Parties at the date of the court Order. As such, the Panel issued the Administrative Panel Procedural Order (mentioned above) in order to afford the Respondents the opportunity to provide supplemental submissions to redress this deficiency.
The Supplemental Submissions from Mr. Cox on behalf of the Respondents failed to satisfactorily answer the specific requisitions raised by the Panel. In addition to re-submitting two of the Receivership Documents, Mr. Cox submitted two WhoIs history records for the Disputed Domain Name, as of September 29, 2010 and September 12, 2011 respectively. The first purportedly shows that the Respondents registered the Disputed Domain Name on September 28, 2010 using a privacy service, but in fact, such record merely shows the WhoIs privacy service as the registrant as at September 28, 2010 and does not prove that the Respondents were the underlying registrants on this date. The second WhoIs record is likewise unsatisfactory, showing only that the Respondents were the registrants of the Disputed Domain Name as at September 12, 2011 (that is, after the Complaint was filed). As such, Mr. Cox (on behalf of the Respondents) has failed to prove that as at the date of the Order Appointing Receiver (November 24, 2010), the Disputed Domain Name came within the scope of “Receivership Assets” by virtue of being held in the name of “Receivership Parties”, namely the Respondents. Further, no evidence has been forthcoming to prove that the Disputed Domain Name constitutes a part of the “portfolio of internet domain names” mentioned in the same Order.
It is therefore plausible, as argued by the Complainant, that the Respondents only became the registrants of the Disputed Domain Name on a date after November 24, 2010, such that it does not come within the scope of the relevant court Order. This argument is not without its merits given that; (i) a WhoIs record submitted by the Complainant as part of its supplemental submissions shows that TIPA (a frequent respondent in the Previous Cases) was the registrant of the Disputed Domain Name as at October 19, 2007; (ii) the WhoIs results indicate that a change was made to these results one day after the Complaint was filed in the present proceedings; and (iii) the individual Damon Nelson (identified as the Receiver’s operations manager in Peter Loh’s email communication to the Center, mentioned above) is named as the administrative contact in the latest WhoIs records for the Disputed Domain Name, which suggests that the WhoIs record was altered on or after the date of the Order Appointing Receiver. The Panel thus agrees with the Complainant in finding on balance that these cumulative facts indicate an attempt by the Respondents, or those acting on their behalf, to “close the loop” by creating a link between the “Receivership Assets” and the Disputed Domain Name as a lesson learned from the Previous Cases, in which such precise link was found wanting by the relevant panel, resulting in the transfer of the relevant domain name to the complainant in each case.
In light of the above and given that the Respondents’ failure to prove that the Disputed Domain Name is a “Receivership Asset” arises despite being invited to do so by the Panel and despite Mr. Cox’s extensive experience in such proceedings in the past year, and also given that access to and production of the requested documentary proof can reasonably be expected to be within the means of Mr. Cox, an attorney appointed as consultant to the Receiver specifically on domain name issues relating to the Respondents, the Panel finds that Mr. Cox has not provided sufficient evidence to substantiate his arguments in relation to the Lawsuit. The Panel shall therefore proceed to render its decision on this dispute, in exercise of its discretion to do so under paragraph 18(a) of the Rules.
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondents have 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 by the Respondents in bad faith.
B. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of the I-TO-I trademark on the basis of the numerous trademark registrations owned by the Complainant for such marks, the earliest of which predates the registration of the Disputed Domain Name by 4 years. The Panel further notes that the Complainant’s rights in the “i-to-i” name and I-TO-I mark were accepted by the Panel in i-to-i UK / i-to-i International Projects Limited v. Alan Thomas of the Alan and Miriam Thomas School of English and Cultural Exchange, WIPO Case No. D2006-1087 on the basis of the Complainant’s history of use of the “i-to-i” name in trade since at least 1996, and the present Panel accepts that the Complainant has the requisite rights on the same basis.
It is a well established rule that in making an enquiry as to whether a trademark is identical or confusingly similar to a domain name, the domain extension, in this case “.com”, should be disregarded (Rohde & Schwartz GmbH & Co. KG v Pertshire Marketing Ltd, WIPO Case No. D2006-0762).
The Disputed Domain Name incorporates the I-TO-I mark in its entirety. The only difference between the Disputed Domain Name and the Complainant’s mark is the former’s inclusion of the descriptive word “travel” as a suffix. It is well established that in cases where the distinctive and prominent element of a disputed domain name is the complainant’s mark and the only variation is the addition of a generic word, such variation does not negate the confusing similarity between the disputed domain name and the mark. See Oakley, Inc. v Joel Wong/Blue Host.com- INC, WIPO Case No. 2010-0100; Diageo Ireland v. Guinessclaim, WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service, WIPO Case No. D2010-0088. The Panel accordingly finds that “i-to-i” is the distinctive and prominent component of the Disputed Domain Name, such that the addition of the word “travel” does nothing to distinguish the Disputed Domain Name from the Complainant’s I-TO-I mark.
The Panel further finds that given that the Complainant offers travel-related services under the I-TO-I mark, the “travel” component of the Disputed Domain Name, if anything, effects to increase the likelihood of confusion that the Disputed Domain Name is somehow associated with the Complainant (see Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd, WIPO Case No. D2001-0110; and Christie’s Inc. v. Tiffany’s Jewelry Auction Inc., WIPO Case No. D2001-0075, which support a finding that a domain name’s incorporation as a suffix, of a word that describes the goods or services in respect of which the complainant’s mark(s) are registered, increases the likelihood of confusion between such domain name and the complainant’s mark(s)).
The Panel accordingly finds that “i-to-i” remains as the distinctive and prominent component of the Disputed Domain Name, which is confusingly similar to the Complainant’s I-TO-I mark, such that paragraph 4(a)(i) of the Policy is satisfied.
C. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that there is no evidence to show that the Respondents have any rights in any trademarks or service marks which are identical, similar or related to the Disputed Domain Name. Therefore, the Panel will assess the Respondents’ rights in the Disputed Domain Name (or lack thereof) based on the Respondents’ use of the Disputed Domain Name in accordance with the available record.
The Panel accepts that the Complainant has not authorised the Respondents to use the I-TO-I trademark and that there is otherwise no connection between the Complainant and the Respondents. The Panel further accepts that the Respondents have not become commonly known by the Disputed Domain Name and notes in this regard that the “i-to-i” name is not an ordinary word with a dictionary meaning and further, is not commonly used in conjunction with the word “travel.”
At the time of this decision, the Disputed Domain Name does not resolve to an active website. An archived search for the Disputed Domain Name also failed to yield any results due to the operation of “robots.txt.” However, a printout from the website to which the Disputed Domain Name resolved (the “Website”) enclosed with the Complaint filed on September 5, 2011, shows that the Website contained numerous sponsored links to other websites involving travel-related services, including those of the Complainant. Although such Website printout is undated, the Panel finds it proper to infer that such printout accurately depicts the contents of the Website on or about September 5, 2011, considering the submissions contained in the Complaint regarding the Website contents, the absence of objections to the same from the Respondents or Mr. Cox, and considering the fact that the Disputed Domain Name and corresponding Website were not deactivated until at least September 20, 2011 (as mentioned above under Factual Background), which indicates that they were operational up until this point. Previous WIPO panels have found it proper to infer from the existence of such “link farms” that the relevant website operator collects financial remuneration for every sponsored link that is activated by Internet users, and such panels have established that such practice constitutes bad faith. The Panel concurs with such inferences, the drawing of which precludes a finding that any offering of services by the Respondents on the Website was bona fide (see Madonna Ciccone p/k/a Madonna v Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847; and Viacom International, Inc., Paramount Pictures Corporation, and Blockbuster Inc. v TVdot.net, Inc. f/k/a Affinity Multimedia, WIPO Case No. D2000-1253, which support such principle), and also precludes a finding that the Respondents’ use of the Disputed Domain Name constitutes noncommercial or fair use.
The Panel accordingly finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name.
D. Registered and Used in Bad Faith
In the Complainant’s supplemental submission (and supporting WhoIs history record), the Complainant asserts that the registrant of the Disputed Domain Name as at October 19, 2007 was TIPA. According to the other WhoIs records for the Disputed Domain Name submitted by both the Complainant and Mr. Cox, the Disputed Domain Name was subsequently registered under a privacy service (namely Whois Privacy Services Pty Ltd) as at September 29, 2010. The first record of the Respondents as the registrants of the Disputed Domain Name (as supplied by its registrar) is dated September 7, 2011 (according to which record the Complainant submitted the amended Complaint on September 12, 2011 to replace Whois Privacy Services Pty Ltd as respondent with the present Respondents). The Complainant’s contentions, including those relating to bad faith, directed at TIPA would thus appear inapplicable as at the date of the Complaint, TIPA was not the registrant of the Disputed Domain Name. However, the Panel notes from the Previous Cases that TIPA is a frequently named respondent and in each such case, submissions made on TIPA’s behalf (by Mr. Cox) include evidence relating to the present Respondents with respect to the Lawsuit, despite the fact that the relevant respondent in such cases is TIPA, which indicates some relationship or connection between TIPA and the Respondents. Taking into account this relationship or connection, together with the fact that TIPA was the former registrant of the Disputed Domain Name and the lack of concrete evidence of the actual date when the Respondents became the registrants of the same (despite the Panel’s specific request for such evidence), it is reasonable to infer that as at November 24, 2010, the date of the Order Appointing Receiver, it was TIPA and not the Respondents who was the registrant of the Disputed Domain Name. Considering TIPA’s experience in the Previous Cases (pursuant to which various domain names held under TIPA’s registration were transferred to the relevant complainants due to the fact that TIPA is not one of the “Receivership Parties” named in the Receivership Documents) and the similarities between the facts of the Previous Cases and those of the present dispute in relation to the use of the relevant domain name, it can further be inferred that TIPA transferred the Disputed Domain Name to the Respondents (who are “Receivership Parties”) in an attempt to safeguard the domain name under the guise of a “Receivership Asset” and thereby avert a transfer to the Complainant. As such, the Panel finds that the registration of the Disputed Domain Name by the Respondents was clearly made in bad faith. On the basis of the relationship or connection between TIPA and the Respondents, the Panel is further prepared to find that TIPA’s pattern of bad faith registration and use of domain names (discussed above under Receivership) as determined by various panels in various domain name disputes, can be imputed on the Respondents, who could not have been unaware of TIPA’s history of bad faith registration and use at the time of assuming the registration of, and subsequently operating, the Disputed Domain Name.
Bad faith registration on the part of the Respondents can also be found independent of any relationship or connection with TIPA. The Panel is willing to accept that the Complainant’s mark was well-known at least to the online community (which is where the Complainant appears to conduct a large part of its business) as at the date the Disputed Domain Name was registered, given the conduct of regular and significant online advertising by the Complainant (for example through “Google AdWords”), given that online search results (from Google and Yahoo) for “itoitravel” (and variations thereof) show that the overwhelming bulk of the results relate to the Complainant, and also given the size of the Complainant's business in value terms, with revenue of nearly GBP 5,000,000 as at 2006 (that is the year in which the Disputed Domain Name was registered). On balance, it would thus appear reasonable to infer that the Respondents did have notice of the Complainant’s mark at the time of registration (see Samsonite Corp. v. Colony Holding, NAF Case No. FA 94313; Caesar World, Inc. v. Forum LLC, WIPO Case No. D2005-0517 and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113, which support findings of bad faith registration on the part of a respondent based on actual or constructive knowledge of a complainant’s mark at the time of registration). The fact that I-TO-I is a made-up mark coined by the Complainant and not commonly applied in the context of travel services, serves to strengthen the grounds for such presumption of bad faith registration (see Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409).
Bad faith use on the part of the Respondents can also be found independent of any relationship or connection with TIPA. As discussed above (in relation to rights and legitimate interests), the Panel accepts that the Respondents’ use of the Website as a link farm (which includes links to other business providers of volunteer travel services that would be, at least, indirect competitors of the Complainant, as well as links to various pages of the Complainant’s website at “www.i-to-i.com”) is, in the absence of justifiable reasons to the contrary, sufficient evidence of bad faith use of the Disputed Domain Name. The Panel also considers the use of “robots.txt” as a means to circumvent access to archived website content (for instance from “www.archive.org”) to be further supporting evidence of the Respondents’ bad faith. Whilst the Panel notes that use of such circumvention mechanisms does not constitute conclusive evidence of bad faith, the Panel considers it proper to find that their employment in the present case, in combination with the other relevant facts as discussed above, is on balance suggestive of bad faith on the part of the Respondents (see The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services , WIPO Case No. D2007-1438).
The Panel accordingly finds that the Respondents have registered and used the Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.
For 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 <itoitravel.com> be transferred to the Complainant.
Dated: November 24, 2011