WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tui AG v. Sado Dokmeci
Case No. D2012-1663
1. The Parties
The Complainant is Tui AG of Hannover, Germany, represented by Bettinger Schneider Schramm Patent- und Rechtsanwälte, Germany.
The Respondent is Sado Dokmeci of Turkey.
2. The Domain Names and Registrar
The disputed domain names <tuihollyaward.com>, <tui-holly.com>, <tuiholly.com>, <tuihollyhotels.com>, <tuiholly.info>, <tuiholly.net> and <tuiholly.org> are registered with IHS Telekom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2012. On August 20, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 20, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On August 27, 2012, the Center transmitted the language of the proceedings document to the parties in both English and Turkish. On August 28, 2012, the Complainant requested English to be the language of the proceedings. The Respondent did not submit its comments.
The Center verified that the 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2012. The Respondent did not submit any formal response. However, the Center received an email communication from the Respondent on September 13, 2012 where the Respondent made comments on some of the Complainant’s claims. Accordingly, the Center notified the parties about the commencement of the panel appointment process on September 25, 2012.
The Center appointed Kaya Köklü as the sole panelist in this matter on October 2, 2012. 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
The Complainant is one of Europe’s largest travel group companies, which offers vacation and travel services worldwide for many years. It is well-known in Europe and in Turkey, where the Respondent is apparently located. The TUI Group operates its business through three major divisions, namely TUI Travel, TUI Hotels & Resorts and TUI Cruises.
Since 1994, the Complainant celebrates the top 100 holiday travel hotels with an award of a “TUI Holly”. The TUI Holly award is granted to hotels, which are selected by TUI customers through a major survey process.
The Complainant is the registered owner of various TUI trademarks. In connection with its TUI Holly awards program, the trademark TUI HOLLY has been registered as a Community trademark in the EU since 2003 and as an international trademark under the Madrid Protocol for Switzerland since 2008.
Since 2006, the Complainant further owns and operates several webpages such as “www.tui.com”, “www.tui-group.com”, “www.tui.de” and “www.tui-group.de”.
The Respondent is an individual, apparently located in Turkey.
The disputed domain names were all registered between April 2010 and September 2011. The registration data are as follows:
<tuiholly.com> on April 29, 2010;
<tui-holly.com>, <tuiholly.info>, <tuiholly.net> and <tuiholly.org> on August 29, 2011;
<tuihollyaward.com> and <tuihollyhotels.com> on September 5, 2011.
As evidenced by the Complaint, all disputed domain names were being auto-redirected to another webpage of the Respondent at “www.awardwinnerhotels.com”, a travel-ranking site through which the Respondent apparently earns click-through revenue. By clicking on the name of a hotel on the Respondent’s website, an Internet user is directed to a page titled “adchoices for award winner hotels”. These pages offer the respective hotel owners an opportunity to set up an advertising referral arrangement.
On March 29, 2012, the Complainant’s legal counsel sent a cease-and-desist letter to the Respondent and requested him to cease the use of the disputed domain names. A series of email communications followed between the Complainant and the Respondent. In the course of these communications, the Respondent replied that he would only cease from using the disputed domain names for a payment of EUR 210,000.00. In its email communication with the Complainant, the Respondent alleged that it had been using the disputed domain names for more than 10 years. The Respondent also threatened to spread defamatory content about the Complainant and its business activities on the websites linked to the disputed domain names, in case the Complainant did not cease from asserting its rights.
Following the communication with the Complainant, the Respondent disabled the auto-redirection of the disputed domain names to its “www.awardwinnerhotels.com” webpage. At the time of the Decision, each disputed domain name displays the notice that the disputed domain name is for sale.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain names.
First, the Complainant argues that the disputed domain names are confusingly similar to the Complainant’s trademark TUI HOLLY.
Second, the Complainant is of the opinion that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It is argued that the textual string “tui holly” is not a dictionary or generic term, which may form legal basis for a right or legitimate interest to use the disputed domain names. Furthermore, the Complainant alleges that it has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not permitted the Respondent to register or use any domain name incorporating its TUI HOLLY trademark. The Complainant additionally asserts that the Respondent has never used the disputed domain names, nor made any demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services. Finally, the Complainant sees no evidence or indication that the Respondent trades under or is commonly known by any name corresponding to the disputed domain names.
Third, the Complainant is convinced that the Respondent has registered and is using the disputed domain names in bad faith. It is argued that the Complainant was already well-known in the travel and tourism industry many years prior to the date of registration of the disputed domain names by the Respondent. Additionally, the Complainant argues that in particular the Respondent’s offer to sell the disputed domain names to the Complainant at a price of EUR 210.000,00 needs to be assessed as a clear indication of the bad faith use of the disputed domain names. The Complainant sees further indication for the Respondent’s bad faith in the Respondent’s threat to publish defamatory or harmful materials on the Internet if the Complainant does continue asserting prevailing rights.
The Respondent did not formally reply to the Complainant’s contentions.
However, the Center received an informal email communication on September 13, 2012. The Panel notes that in this email communication, the Respondent did not disclose its real name and further copied its email communication to different third parties such as newspapers, lawyers and public institutions, none of which related to the present case.
In its email communication, the Respondent requests the denial of the Complaint.
The Respondent argues that it “honestly registered [the disputed domain names] long before [the Complainant] put a patent to this word”. It is of the opinion that, if the Complainant wants to have the disputed domain names, it “should pay the prize for it, like many other firms World wide do so!”
To underline its position, the Respondent provides “[a]n example to WORDS & their RIGHTS to teach ICANN & WIPO the right path”. Literally, the Respondent argues:
“Not long ago the word TENNIS was created by players to do some sport activities, or the word SPORT itself was created by our ancestors. Today it is clear that nobody (No living creature) Nobody of us can claim those example two words. The one who was first just took it, not true ICANN? What I mean is that nobody have rights to a word or phrases, unless rich men pay the price. Sometimes, even if they pay as Google TM did (by buying all TLDs in every Country), another word will still be opensource and free like the Top Level Domain extension dot .google created these days or the google book earlier etc. No one can claim nothing for free, if you understand this lesson.”
In its email communication, the Respondent even issues a threat, by noting: “stay away from my domain names which I honestly bought and registered over my Registrar IHS or I will send you all to hell with my wrath and tweet on twitter, facebook, wordpress, etc. about this case! TUI should pay the price if they want the mentioned domain names! I was always open to an agreement with the lawyers of TUI. I have the emails as an proof and will send if needed or/and will simply put online somewhere after this case.”
The Respondent concludes its words by stating that “Words and Names in the World Wide Internet are freedom to all of us and should stay free to all nations. I am not talking about trademarks!”
6. Discussion and Findings
To begin with, the Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be the English language. Although the language of the Registration Agreement is the Turkish language, the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceedings in Turkish and request a Turkish translation of the Complaint while the Respondent has failed to raise any objection or even to respond to the Complaint or the Center’s communication with regard to the language of the proceedings, even though communicated in Turkish and in English. The Panel is convinced that the Respondent will not be prejudiced by a Decision being rendered in English, as the Respondent is apparently capable to read, write and understand the English language, as evidenced by its email in the English language sent to the Center on September 13, 2012.
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain names are identical or confusingly similar to the trademark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not formally or properly replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may as appropriately accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
In this context, the Panel finds that the informal email communication received by the Center on September 13, 2012 does not qualify to be a formal response to the Complaint. However, as it indicates a sort of argumentation on the merits of the case, the Panel will nevertheless consider this informal email communication in its Decision.
It is further noted that independent research, i.e., visiting the Internet sites linked to the disputed domain names, has been performed by the Panel on October 6, 2012. The competence of the Panel to perform such independent research is in line with previous UDRP decisions (see, e.g., Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038).
Finally is noted that the Panel has taken note of WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistent with the WIPO Overview 2.0.
A. Identical or Confusingly Similar
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having relevant trademark rights. As evidenced in the Complaint, the Complainant is, since 2005, the registered owner of the TUI HOLLY trademark in the EU and, since 2008, in Switzerland.
Second, the Panel finds that the disputed domain names <tuiholly.com>, <tuiholly.info>, <tuiholly.net> and <tuiholly.org> are identical to the Complainant’s trademark TUI HOLLY. These disputed domain names are an identical adoption of the registered trademark TUI HOLLY and do not incorporate any amendments or additions.
The Panel finds that the disputed domain names <tuihollyaward.com>, <tuihollyhotels.com> and <tui-holly.com> are confusing similar to the Complainant’s trademark TUI HOLLY. Although not identical, these disputed domain names fully incorporate the trademark TUI HOLLY. In the Panel’s view, the addition of the terms “award” or “hotels” or the implementation of a dash do not negate the confusing similarity between the Complainant’s trademark and these disputed domain names. The Panel finds that these incorporations do not create a new distinctiveness separate from the Complainant’s trademark TUI HOLLY. On the contrary, the full inclusion of the Complainant’s well-known trademark in combination with the terms “award” or “hotels” may even enhance the false impression that the Internet site linked to the disputed domain names are somehow officially linked to the Complainant or one of its group members.
The Panel points out that the addition of a generic top level (“gTLD”) has no distinguishing effect and, as being a prerequisite of a domain name registration, may not be considered within the assessment of identity or confusing similarity between the disputed domain names and the trademark in question.
Given the findings above, the Panel concludes that the first requirement under paragraph 4(a) of the Policy is fulfilled.
B. Rights or Legitimate Interests
The Panel further believes that the Respondent has no rights or legitimate interests in the disputed domain names.
While the burden of proof remains with the Complainant, the Panel recognizes that this would result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is primarily within the knowledge and sphere of the Respondent. Therefore, the Panel agrees in line with prior UDRP panels that the Complainant is required to make out a prima facie case before the responsibility shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain names in order to meet the requirements in paragraph 4(a)(ii) of the Policy, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement by providing uncontested prima facie evidence that the Respondent has no trademark, license or any similar right to use the Complainant’s trademark in the disputed domain names.
The Respondent has failed, in its informal response, to provide any evidence demonstrating a right or legitimate interest or any other evidence of a right or legitimate interest in the disputed domain names according to the Policy, paragraphs 4(a)(ii) and 4(c).
In particular, the Panel notes that the Respondent cannot claim any priority rights in the disputed domain names. According to the information provided in the case file, all disputed domain names were created in 2010 or 2011, and consequently, many years after the Complainant acquired registered trademark rights in the term TUI HOLLY. Hence, the Panel concludes that the Respondent’s assertion in its email communication of September 13, 2012, concerning priority rights in the disputed domain names is incorrect.
The Panel further confirms that the Respondent does not provide (nor does the case file contain) any evidence of a bona fide use of the disputed domain names or any legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy. There is also no evidence or indication to assess that the Respondent trades under or is commonly known by any name corresponding to the disputed domain names. On the contrary, the Panel believes that the Respondent tries to gain benefit from click-through revenue only.
In light of the above, the Panel concludes that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is convinced that the Respondent has registered and is using the disputed domain name in bad faith.
First, the Panel has no doubt that the Respondent must have known the Complainant and its well-known TUI trademarks, including the TUI HOLLY trademark, when it registered the disputed domain names many years after the Complainant’s trademarks were registered and recognized worldwide, including in Turkey.
It is further apparent to this Panel that the Respondent tries to monetize on the prominence of the Complainant’s company name Tui and the respective trademark TUI HOLLY. In the Panel’s view, the Respondent’s sole purpose in registering the disputed domain names was to tarnish the Complainant’s trademark and/or to put pressure on the Complainant to purchase the disputed domain names in excess of the Respondent’s registration fees. In particular, the Respondent quoted a price of EUR 210.000,00 for the transfer of the disputed domain names in his email communication with the Complainant prior to this UDRP proceeding. The Respondent’s bad faith is also indicated by the fact that the Respondent explicitly threatened the Complainant with defamatory measures in case the Complainant does not stop asserting rights in the disputed domain names.
In its email communication to the Center on September 13, 2012, the Respondent’s threats continued when the Respondent stated apparently false information on priority rights and copied several third parties such as newspapers, lawyers and public institutions into his email communication, although these third parties are not involved in the present case. In its email communication, the Respondent further explicitly repeats its warning that “I will send you all to hell with my wrath and tweet on twitter, facebook, wordpress, etc. about this case”. In the Panel’s view, all this is a clear indication for the Respondent’s bad faith registration and use of the disputed domain names.
In light of the above, the Panel cannot conceive of any good faith use of the disputed domain names by the Respondent. Overall, the Panel finds that the above demonstrates a typical cybersquatting case.
The Panel therefore concludes that the disputed domain names were registered and are being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.
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 names <tuihollyaward.com>, <tui-holly.com>, <tuiholly.com>, <tuihollyhotels.com>, <tuiholly.info>, <tuiholly.net> and <tuiholly.org> be transferred to the Complainant.
Dated: October 13, 2012