WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AIDA Cruises - German Branch of Costa Crociere S.p.A. v. Jaewan Lee
Case No. D2012-1772
1. The Parties
The Complainant is AIDA Cruises - German Branch of Costa Crociere S.p.A. of Rostock, Germany, represented by Selting+Baldermann, Germany.
The Respondent is Jaewan Lee of Gwangju, Seo-Gu, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <seetour.com> is registered with Inames Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2012. On September 4, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 5, 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 September 12, 2012 the Center notified the Parties that the Complaint was filed in English but that according to the information received from the Registrar the language of the Registration Agreement is Korean. Accordingly, the Complainant submitted a request for English to be the language of the proceedings on September 17, 2012. The Respondent did not submit any reply. The Center thus informed the Parties that it would send all case-related communications in both English and Korean, that it would accept a response filed in either language, and that the language of the proceeding would be decided by the Panel once appointed.
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 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2012.
The Center appointed Andrew J. Park as the sole panelist in this matter on October 26, 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 operates cruises in Europe, the United States of America, the Caribbean, and Asia, and is based in Rostock, Germany. According to the Complainant, it is one of the market leaders in Germany, with an annual turnover of 882,700,000 Euros in 2010. The Complainant is the owner of the service mark SEETOURS and conducts business on its website “www.seetours.de”. It is the owner of the SEETOURS service mark under EC Trademark 239 60 18 for “travel arrangements, transport; accommodation of guests.” The application for registration of the mark was filed with The Office of Harmonization for the Internal Market (OHIM) on October 2, 2001 and registered on March 1, 2006.
The disputed domain name <seetour.com> is registered with Inames Co., Ltd. The Respondent’s name in the current WhoIs record is Jaewan Lee of Gwangju, Seo-Gu, Republic of Korea.
The Complainant has not authorized or licensed the use of the mark SEETOURS or any similar mark to the Respondent. At the time the Complaint was filed, the Respondent was using the disputed domain name for travel information and a pay-per-click landing website offering links to third-party websites, and in particular, to German-language travel companies. Many of the third-party websites are to competitors of the Complainant.
5. Parties’ Contentions
The Complainant contends that the disputed domain name at issue is identical or similar to its service mark SEETOURS. The existence of the letter “s” at the end of the mark is irrelevant and does not mitigate the risk of confusion with the disputed domain name.
The Complainant further contends that it is the owner of an EC service mark registration for “seetours,” and owns a domain name that includes the service mark at issue <seetours.de>.
The Complainant also contends that the Respondent has no intellectual property right or any other rights on the service mark SEETOURS and does not have authorization nor license from the Complainant for the use of its mark. However, at the time the Complaint was filed, the Respondent offered on its webpage links to competing travel-related commercial websites.
Finally, the Complainant contends that the Respondent’s use of the disputed domain name is for commercial purposes since the disputed domain name was designed to attract Internet users to the Respondent’s web site where it earned pay-per-click revenue.
For all these reasons the Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the registration agreement unless otherwise agreed by the parties, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. Here, the Registrar confirmed to the Center that the language of the Registration Agreement is Korean. The Complainant requested that English be the language of the proceeding. As indicated above the Respondent did not submit its comments.
The Center issued a Language of Proceeding notification to both parties in both English and Korean with instruction to both the Complainant and the Respondent.
The Center has throughout the proceedings issued its case-related communications, including the Center’s Complaint notification documents, in both Korean and English. The Respondent has chosen not to participate in the proceeding, and has been notified of its default. The Panel is satisfied that the Center’s approach has been fair and appropriate, reserving the discretion to the Panel to determine the appropriate language of proceedings.
The Panel notes that the spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfortability with each language. See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679. In the present case, although the Registration Agreement for the disputed domain name is in the Korean language, the Panel notes that the content of the site at the disputed domain name is in English. Furthermore, the Complainant is not able to communicate efficiently in Korean. Therefore, in consideration of the above circumstances, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case.
6.2. Analysis of the Complaint
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules. In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
In the present case, the Panel finds that the Complainant has (1) established that it owns trademark rights for SEETOURS and that it is the registrant of the domain name <seetours.de>; (2) operated under the “seetours” name; and is currently recognized as one of the market leaders in Germany. Additionally, there is no evidence to suggest that there is a company or business other than the Complainant that uses the name in the same area of industry as the Complainant.
The disputed domain name wholly incorporates the Complainant’s distinctive service mark and as such the Panel is satisfied that it creates sufficient similarity to be confusingly similar (paragraph 4(a) of the Policy). The removal of the letter “s” at the end of the Complainant’s service mark and the addition of the generic Top-Level Domain (“gTLD”) suffix “.com” are not considered as material differences. Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights or legitimate interests in the disputed domain name. Those circumstances are described as follows:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or 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 Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g., Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 or Isabelle Adjani v. Second Orbit Communications, Inc., WIPO Case No. D2000-0867). The Complainant should nevertheless make out a prima facie case that the Respondent lacks rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its mark. There is nothing in the record to suggest that the Respondent has been commonly known by the disputed domain name. The Panel’s view is that these facts may be taken as proven in the circumstances of this case provided that they have not been denied by the Respondent.
The evidence, which is not denied by the Respondent, shows that the Respondent knew of and has sought to take unfair advantage of the similarity between the disputed domain name and the Complainant’s mark, which is not descriptive nor generic, in order to profit through the provision of travel-related “pay-per-click” links through which it derives income. The Panel finds that this conduct is evidence of cybersquatting and does not constitute a right or legitimate interest under paragraph 4(a)(ii) of the Policy. See, e.g., American Automobile Association, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0592.
Accordingly the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following conduct is sufficient to support a finding of bad faith:
“(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the disputed domain name.
Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).
The Panel reasonably finds that given (1) the long term period and extensive scope of the Complainant’s use of its SEETOURS service mark worldwide, (2) the 2001 application date and the 2006 registration date of its EC service mark, (3) its position as a market leader within Germany, and (4) the Respondent’s sponsored links having some connection to Germany and German speaking countries, it is very unlikely that the Respondent, at the time of registration or purchase of the disputed domain name, was not aware that it was infringing the Complainant’s service mark.
Bad faith can be inferred based on the fame of the Complainant’s mark, such that the Respondent was aware or should have been aware of the Complainant’s mark and claims of rights thereto (particularly in view of the Complainant’s use of its mark on the Internet). The Panel finds it highly doubtful that the Respondent would have registered the disputed domain name without having knowledge of the Complainant.
The registration of a domain name that is similar to a distinctive trademark by the Respondent, when the Respondent has no relationship to that mark, may be evidence of bad faith (see Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403; Centurion Bank of Punjab Limited v. West Coast Consulting, LLC, WIPO Case No. D2005-1319).
Accordingly, the evidence, which is not rebutted by the Respondent, shows that the Respondent knew of and has sought to take unfair advantage of the similarity between the disputed domain name and the Complainant’s service mark, in order to profit through the provision of travel-related pay-per-click links through which it derives income. Moreover, the Panel finds that the Respondent’s use of the disputed domain name amounts to a “bait and switch” strategy in order to draw in Internet users to access the Complainant’s website. Such conduct is misleading and the use of a confusingly similar domain name to lure Internet users to a website hosting links to providers of competing products is prima facie evidence of bad faith. See, e.g., American Automobile Association, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0592.
For the above reasons, the Panel finds that the Complainant has shown that the disputed domain name has been registered and is being used in bad faith by the Respondent.
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 <seetour.com> be transferred to the Complainant.
Andrew J. Park
Date: November 11, 2012