WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Expedia, Inc. v. Classic Travel & Tours
Case No. D2012-2508
1. The Parties
The Complainant is Expedia, Inc. of Bellevue, Washington, United States of America (“United States” or “U.S.”), represented by Kilpatrick Townsend & Stockton LLP of New York, New York, United States.
The Respondent is Classic Travel & Tours of Metuchen, New Jersey, United States, represented pro se.
2. The Domain Name and Registrar
The disputed domain name <classicvacationtours.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2012. On December 20, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 21, 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 January 4, 2013, the Center informed the Complainant of an error in the “Mutual Jurisdiction” section with regard to the Registrar’s location in the filed Complaint. On the same date, the Complainant filed an amendment to correctly indicate the location of the Registrar in this section of its Complaint.
On January 4, 2013, the Center received an email communication from the Respondent, indicating its willingness to “discuss the change the ownership” of the Domain Name. On January 7, 2013, the Center sent an email inviting the Complainant to consider requesting a suspension of the proceedings to explore a possible settlement between the parties. On January 11, 2013, the Complainant’s representative sent an email to the Center that it would like to continue the proceedings filed under the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), without suspension.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the 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 January 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2013. The Respondent filed the Response with the Center on February 3, 2013.
On February 11, 2013, the Complainant filed an unsolicited supplemental submission and the Center replied on February 12, 2013 that it would be within the discretion of the Panel to determine whether to accept any supplemental material. The Respondent also filed an unsolicited supplemental submission with the Center on February 13, 2103, and on the same date the Center likewise replied that it would be within the discretion of the Panel to determine whether to accept supplemental material.
The Center appointed Marylee Jenkins as the sole panelist in this matter on February 18, 2013. 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 owns Classic Vacations LLC, a subsidiary, as well as trademark registrations in the United States for the mark CLASSIC VACATIONS (U.S. Reg. No. 2,942,278 registered on April 19, 2005) and CLASSIC VACATIONS and design (Reg. Nos. 3,370,648 and 3,370,647 both registered on January 15, 2008) and multiple other trademark registrations incorporating CLASSIC” and/or VACATIONS cited in the exhibits of the Complaint (individually and collectively referred to as the “CLASSIC VACATIONS Marks”). The trademark registrations for the CLASSIC VACATIONS Marks are used in connection with travel agency services and services related to organizing and arranging of vacation trips, tours and on-location entertainment activities and activities packages. The Complainant also owns several domain names incorporating the mark CLASSIC VACATIONS and variations thereof which direct and redirect users to its website located at “www.classicvacations.com.”
The Domain Name was registered in 2007 to the Respondent, Classic Travel & Tours, and is set to expire on October 30, 2014. The website accessible at the Domain Name redirects to the Respondent’s website at “www.classictraveltours.com” and promotes the Respondent’s travel related services.
5. Parties’ Contentions
The Complainant bases the Complaint on the ground that the Domain Name is identical or confusingly similar to the Complainant’s trade name Classic Vacations and its CLASSIC VACATIONS Marks.
The Complainant asserts that it is the largest online travel company in the world and has a brand portfolio that includes some of the world’s leading online travel brands. The Complainant asserts that its subsidiary, Classic Vacations LLC, makes a variety of travel related services available directly to travelers and travel agents via its website at “www.classicvacations.com”. The Complainant asserts that it and its subsidiary have been using the Classic Vacations name and CLASSIC VACATIONS Marks for its travel and vacation related services for many years and well prior to the Respondent’s registration of the Domain Name. The Complainant also asserts that it or its predecessors-in-interest and affiliates have been using the CLASSIC VACATIONS Marks and trade name Classic Custom Vacations since as early as 1993. The Complainant asserts that it or its predecessors-in-interest have been using the trademark CLASSIC as a standalone mark or in combination with other word and/or design elements for its travel and vacation related services since 1977.
The Respondent denies that the Domain Name is identical or confusingly similar to the Complainant’s CLASSIC VACATIONS Marks. The Respondent asserts that it had “legitimately purchased” the Domain Name on the ground that the words “classic” and “vacation” are “common words in the public domain.” The Respondent denies that its registration of the Domain Name was in bad faith. The Respondent asserts that it has been using the name “Classic” in connection with travel and “vacation” arrangements since its inception in June 1996. The Respondent also asserts that the word “classic” is “a generic word in the travel industry and can be found in searches for travel agencies in most states throughout the country.”
The Respondent asserts that the Complainant has not made “any good faith attempt at either settlement or registering its product name prior to 2008.” The Respondent asserts that it has made good faith attempts to resolve this dispute with the Complainant on numerous occasions but the Complainant has never responded with any offer whatsoever. Accordingly, the Respondent denies having acted in bad faith.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Panel can only rule in the Complainant’s favor only after the Complainant has proven that the above-listed elements are present.
A. Supplemental Submissions
With respect to the unsolicited supplemental submissions, “[u]nder the Policy and the Rules, parties have no right to submit additional arguments or evidence. However, the Panel may, in its sole discretion, request further statements or documents from the parties.” The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. “[A]dditional . . . submissions should only be admitted in exceptional circumstances … [and] if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure.” Id. (emphasis added by this Panel).
With respect to this proceeding and exercising its discretion within the Rules, paragraphs 10 and 12, the Panel notes that such submissions were not requested nor does it find this case as constituting “exceptional circumstances” to warrant such consideration. Accordingly, the Panel will not accept or consider the supplemental submissions of either party in reaching its decision and submits that the Parties will not be prejudiced by this decision.
B. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided sufficient evidence to establish that it is the owner of and has rights in and to the name Classic Vacations and the CLASSIC VACATIONS Marks.
A review of the second-level domain “classicvacationtours” of the Domain Name shows that it includes the Complainant’s name and mark CLASSIC VACATIONS in singular form along with the word “tours.” The omission of the letter “s” and the addition of the word “tours” do not result in differentiating or distinguishing the Domain Name from the Complainant’s name and mark CLASSIC VACATIONS. Rather the word “tours” is descriptive and corresponds to the services for which the Complainant’s CLASSIC VACATIONS Marks are registered. Thus, the idea suggested by the Domain Name, in view of the Complainant’s name and registered marks and extensive use thereof, is that any possible services offered on a website associated with this Domain Name are somehow authorized by or affiliated with the Complainant. Based on these findings and the submitted evidence, the Panel concludes that paragraph 4(a)(i) has been satisfied based upon the Domain Name being confusingly similar to the Complainant’s name and mark CLASSIC VACATIONS.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panel to be proven based on her evaluation of all of the evidence presented, can demonstrate the Respondent’s rights to or legitimate interests in the Domain Name. These circumstances include:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) 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 consumers or to tarnish the trademark or service mark at issue.
The Complainant has shown that it had well-established rights in and to and extensive use of the name and mark CLASSIC VACATIONS at the time of the Respondent’s registration of the Domain Name. Based upon the uncontested evidence submitted by the Complainant, the Respondent registered the Domain Name after the Complainant and its predecessors began using and registered the CLASSIC VACATIONS Marks and have been operating a website offering competing services. Coupled with the statement on the Respondent’s website of numerous years in the travel industry (i.e., “33 years of custom designing worldwide vacations for groups, families and couples”), the Panel finds that the Respondent must have been aware of or had knowledge of the Complainant’s name and CLASSIC VACATIONS Marks when registering the Domain Name.
It also appears that the Respondent further registered and is using the Domain Name to direct Internet users to its own website which prominently displays its own name (i.e., “Classic Travel & Tours”) and where vacation packages and tours are apparently being offered for commercial gain. Although the Respondent asserts that it has used the words “classic” and “vacation” and the phrase “classic vacation”, which are generic, or “common words in the public domain”, for its travel related services since 1996, the Respondent has nevertheless not presented any evidence in support of these assertions, while the Complainant has shown it has legitimate U.S. trademark registrations for the CLASSIC VACATIONS Marks. Such unauthorized uses of the Complainant's intellectual property therefore cannot constitute legitimate noncommercial or fair use of the Domain Name nor a bona fide offering of goods or services under the Policy.
The Respondent has also presented no evidence of having any trademark rights in the Domain Name or any portion thereof or being commonly known by the Domain Name or any portion thereof as an individual, business or other organization. Indeed, a review of the Respondent’s website currently accessible at the Domain Name did not show any use of the phrase “classic vacation”, except in the Domain Name. The Respondent instead uses the name “Classic Travel & Tours” on its website and on its Facebook and Twitter web pages and diverts users accessing the website at the Domain Name to the Respondent’s website at “www.classictraveltours.com”.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name and that paragraph 4(a)(ii) of the Policy has been satisfied.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder of a domain name includes, but is not limited to:
(i) circumstances indicating that the holder has registered or has 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 complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 of a product or service on the holder’s website or location.
The Panel finds that the Respondent must have been aware of the Complainant’s name and mark CLASSIC VACATIONS and its rights therein at the time the Respondent registered the Domain Name and that the Respondent registered the Domain Name in bad faith. This finding is supported by: the Complainant’s trademark registrations and use of the Complainant’s CLASSIC VACATIONS Marks well before the Respondent’s registration of the Domain Name; the Respondent’s website offering competing services; the Domain Name comprising a slight variation of the Complainant’s mark CLASSIC VACATIONS along with the word “tours” which is descriptive of the services clearly associated with the Complainant; and the Respondent’s statement on its website concerning its many years in the travel industry.
The Respondent merely asserts that the words “classic” and “vacation” are commonly used in the travel industry and are in the “public domain” or “generic,” without showing or providing any evidence to support that it has any rights or legitimate interests in the Domain Name. In contrast, the Complainant has shown and provided significant evidence of its recognized legitimate rights in and to the name and mark CLASSIC VACATIONS.
Based upon the above, the Panel finds that the Respondent registered and is using the Domain Name to intentionally attempt to attract for apparent commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s name and mark CLASSIC VACATIONS as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a service on the Respondent’s website. This finding is further supported by the Respondent redirecting of the website at the Domain Name to its own website at “www.classictraveltours.com”. The Panelist therefore concludes that the Respondent registered and is using the Domain Name in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons and in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <classicvacationtours.com> be transferred to the Complainant.
Date: March 4, 2013