WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lotus Group Limited v. joolga / Domains by Proxy, LLC
Case No. DCO2012-0022
1. The Parties
The Complainant is Lotus Group Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Travlaw LLP Solicitors, United Kingdom.
The Respondent is joolga of Birmingham, West Midlands, United Kingdom; Domains by Proxy of Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <dialaflight.co> (the "Disputed Domain Name") is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2012. On July 26, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 28, 2012, the Registrar 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on July 31, 2012.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2012. The Respondent submitted a request for an extension to file a Response on August 22, 2012. The Complainant filed its comments on this request on August 24, 2012. In the absence of exceptional circumstance, the Center declined to extend the period for Response on August 24, 2012. The Respondent filed an email communication on August 25, 2012, of which the Center acknowledged receipt. The Complainant filed an email communication on August 28, 2012, of which the Center acknowledged receipt.
The Center appointed Dawn Osborne as the sole panelist in this matter on September 3, 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 the registered proprietor of registered trade marks for DIAL-A-FLIGHT for travel agency, tourism and travel and holiday services, the earliest owned since 1997.
In 2010 the Respondent registered the Disputed Domain Name, which was used to point to “redtube.com”, a pornographic site.
5. Parties’ Contentions
The Complainant's contentions can be summarized as follows:
The Complainant is the registered proprietor of registered trade marks for DIAL-A-FLIGHT for travel agency, tourism and travel and holiday services. It has a web site at “www.dialaflight.co.uk”.
In March 2012 the Complainant became aware of the Disputed Domain Name which was advertising and had links to the Complainant's competitors. The Respondent was using a mark identical to the Complainant's trade mark in the Disputed Domain Name and in the logo on the top left hand corner of the web site. After protracted correspondence the Respondent removed the web site from the Internet but subsequently linked the Disputed Domain Name to the pornographic web site “www.redtube.com”.
The Respondent has no link to the Complainant and no rights or legitimate interests to use the Complainant’s trade mark in the Disputed Domain Name.
The Respondent offered to sell the Disputed Domain Name to the Complainant over the telephone but no amounts were discussed as the Complainant was not prepared to be held to ransom over the Disputed Domain Name.
Use of the Disputed Domain Name appeared to have ceased, but then the Complainant received a complaint from one of its customers that the Disputed Domain name was linked to the pornographic web site “www.redtube.com”. After the Complainant contacted the Registrar the link was disabled but the Registrar said that the Respondent could link it to another web site in the future.
The Respondent appears to be holding the Disputed Domain Name in order to sell it to the Complainant or one of its competitors for a premium.
Customers are likely to think that the companies to which the Respondent linked the Disputed Domain Name are affiliated to the Complainant when they are not. Linking to competitors further illustrates the Respondent's intention to gain some form of financial gain from the Disputed Domain Name.
The linking of the Disputed Domain Name to a pornographic site shows an intention to damage the Complainant's brand and this conduct is a serious threat to the Complainant's reputation.
The Respondent did not reply to the Complainant’s contentions except by emails after the time for a formal Response had expired. It alleged that the Disputed Domain Name had been sold to a new owner. The Disputed Domain Name was under Register lock and this statement was proved not to be true. The Respondent claimed it had not used the Disputed Domain Name for travel and tourism. It admitted pointing the Disputed Domain Name to <redtube.com> to increase its page rankings.
6. Discussion and Findings
Whilst “.co” is the country code for Columbia, Columbia has adopted the Policy to determine “.co” disputes. Neither side discusses any Columbian connection. The site appears to have been used for Emgliah language purposes, capitalising on the meaning of “.co” in English to mean limited company.
According to paragraph 4(a) of the Policy, the Complainant must prove that:
- The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
- The Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Disputed Domain Name consists of “dialaflight” and the generic top level domain “.com” (which may be ignored for the purposes of the Policy). The omissions of the hyphens from the wordstring used “dialaflight” does not serve to distinguish the Disputed Domain Name from the Complainant's DIAL-A-FLIGHT trade mark. As such the Disputed Domain Name is confusingly similar to the Complainant's DIAL-A-FLIGHT trade mark for the purpose of the Policy.
B. Rights or Legitimate Interests
The Respondent has not filed a formal Response, does not appear to have any trade marks associated with "dialaflight", does not appear to be commonly known by this name and does not have any consent from the Complainant to use this name. It does not appear to have used the Disputed Domain Name for any bona fide offering of services given the Complainant's longstanding trade mark rights in DIAL-A-FLIGHT and the printouts provided by the Complainant show that the web site pointed to travel sites competing with the Complainant. Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
"circumstances indicating that [the Respondent 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 [its] documented out-of-pocket costs directly related to the domain name;" (paragraph 4(b)(i)); and
“by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to its web site 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 its web site or location or of a product or service on [its] web site or location.” (paragraph 4(b)(iv)).
The Disputed Domain Name has been used to link to commercial sites competing with the Complainant’s business. Accordingly, it appears that the Respondent has intentionally attempted to attract for commercial gain Internet users to its web site, by creating confusion as to the source, sponsorship, affiliation or endorsement of products or services on its web site. The Panel, therefore, finds that bad faith has been demonstrated under paragraph 4(b)(iv) of the Policy.
Additionally the Complainant alleges that the Respondent offered to sell the Disputed Domain Name and in its email the Respondent does not deny that this was for a sum in excess of usual registration fees for domain names and nor does he offer any explanation. As such the Panel, therefore, finds that bad faith has also been demonstrated under s 4(b)(i) of the Policy.
Further the Respondent admits it has pointed the Disputed Domain Name to a pornographic site, which has commonly been held to be evidence of bad faith under the Policy where the Disputed Domain Name is confusingly similar to a mark in which the Complainant has rights, as in this case.
Accordingly, for the foregoing reasons, the Panel finds that the Disputed Domain Name has been registered and used in bad faith.
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 <dialaflight.co> be transferred to the Complainant.
Dated: September 7, 2012