WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Tiscover AG Travel Information Systems v. Tiscover AG

Case No. D2002-1150

The Complainant is Tiscover AG Travel Information Systems, of 6020 Innsbruck, Austria, represented by Meinhard Ciresa, of 1220 Vienna, Austria.

The Respondent is Tiscover AG, an entity not being identified, of NJ 08401, United States of America.

This dispute concerns the domain name < tiscovers.com> (the "Domain Name").

The Domain Name < tiscovers.com> is registered with Tucows, Inc., 96 Mowat Avenue, Toronto, ON, M6K 3M1, Canada (the "Registrar").

On December 19, 2002, the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") received a complaint by e-mail (the "Complaint"); on December 23, 2002, the Center received the hard copy version.

On December 20, 2002, the Center acknowledged receipt of the Complaint by email to the Complainant, the representative of the Complainant and the Respondent.

On December 20, 2002, the Center transmitted by email to Registrar a request for registrar verification. On the same day, the Registrar responded by email to the Center (i) negating receipt of a copy of the Complaint, (ii) confirming that the Domain Name is registered with the Registrar, (iii) confirming that the Respondent is the current registrant of the Domain Name, (iv) providing details of the administrative contact, technical contact and zone contact for said registration, (v) confirming that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect in respect of the registration, (vi) confirming that the Domain Name will remain locked during the pending administrative proceeding, (vii) indicating that the language of the registration agreement is English, (viii) indicating that the jurisdiction at the location of the principal office of the Registrar for court adjudication applies.

On December 23, 2002, the Center notified the Complainant by email that the Registrar was not in receipt of a copy of the Complaint. On the same day, Complainant informed the Center that it had sent a copy to the Registrar.

In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and Paragraph 5 of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules") the Center reviewed the Complaint to ascertain whether it satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment in the required amount had been made to the Center by the Complainant. On December 24, 2002, the Center notified the Complainant that the Complaint was not submitted in the one original and four copies, as required by Rules, Paragraph 3 (b) and Supplemental Rules Paragraph 3(c), and that the Complaint will be deemed withdrawn unless the deficiencies specified are cured within five calendar days.

On January 3, 2003, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to Respondent (including the domain name registrant, administrative contact, technical contact, zone contact and billing contact) by courier (with attachments) as well as by e-mail (Complaint without attachments). A copy of said notification was sent to Complainant. Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that administrative proceeding in accordance with the Policy had commenced and that the Respondent was required to submit a Response to the Center on or before January 23, 2003.

The Notification of Complaint and Commencement of Administrative Proceeding sent to the administrative contact of the Respondent by courier has been returned. There are no reasons to believe that the transmission by email has failed, though.

The Respondent did not submit any response.

On January 24, 2003, the Center notified the Respondent’s default in accordance with the Rules and the Supplemental Rules.

On January 30, 2003, after having received a Statement of Acceptance and Declaration of Impartiality and Independence from Michael A.R. Bernasconi in accordance with Paragraph 7 of the Rules, the Center notified the Complainant and Respondent by email that Michael A.R. Bernasconi has been appointed as Administrative Panel (Sole Panelist) and that the decision is anticipated by February 13, 2003.

The Complainant is a company domiciled in Austria. It is the registered owner of the trademark "TISCOVER ("TISCOVER" and design), including service mark, registered as of August 22, 2001, in Austria and in more than 20 other European countries.

Complainant is running a portal in the internet under the domain name <tiscover.com> offering tourism services for Austria, Germany, Switzerland and Liechtenstein.

Complainant states that the Respondent has installed a website under the disputed Domain Name that is a HTML-copy of the English version of the portal of Complainant under the domain name <tiscover.com> and that is linked to the portal of the Complainant under the domain name <tiscover.com>.

An informal check of the website under the disputed Domain Name by the Sole Panelist on February 11, 2003, showed that it is a HTML-copy of the English version of the portal of Complainant under the Domain Name <tiscover.com>, with the exception of the advertisement banners, and that is linked to the portal of the Complainant under the domain name <tiscover.com>.

The Complainant contends that the disputed Domain Name is confusingly similar with the trademark "TISCOVER" of the Complainant because adding a "s" doesn’t give any more distinctiveness and therefore doesn’t prohibit a likelihood confusion. Further, Complainant contends that Respondent has no rights or legitimate interests in respect of the Domain Name because there is no evidence of Respondent’s use or of preparations to use the Domain Name with a bona fide offering of goods or services, instead the website under the disputed Domain Name consists of a sole HTML-copy of the English version of the portal of Complainant under the domain name <tiscover.com> and is linked to the portal of the Complainant under the domain name <tiscover.com>. The Respondent has made no other legitimate non-commercial or fair use of the domain name. Finally, the Complainant contends that the Domain Name has been registered and is being used in bad faith. The Respondent may not exist at all as there is no company form called "AG" in the United States of America and Respondent may not be found in the Yahoo! Yellow Pages and in Yahoo City Search for Atlantic City. By using the Domain Name the Respondent intentionally attempts to attract internet users by creating a likelihood of confusion with the Complainant’s trademark and website for commercial gain on a pay per click basis on the banners.

No Response was received from the Respondent. Accordingly, and based on Paragraph 14(b) of the Rules, the Panel shall draw such inferences from this default of Respondent as it considers appropriate.

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the domain name registered by the Respondent 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 domain name has been registered and is being used in bad faith.

It is undisputed that the Complainant is the owner of the trademark "TISCOVER".

In the view of the Sole Panelist, the disputed Domain Name is substantially identical and confusingly similar to the trademark "TISCOVER". The addition of the single letter "s" does not make the predominant element "TISCOVER" less distinctive and leads consumers to reasonably expect under the Domain Name a website of the Complainant.

The ending ".com" is a generic top level domain, which of course is not sufficient to render a domain name dissimilar or to prevent consumer confusion.

The Complainant has therefore succeeded in proving that a risk of confusion is very likely. The first criterion, as per Paragraph 4(a) of the Policy, is established.

It remained undisputed that Respondent does not use and has not made preparations to use the Domain Name in connection with a bona fide offering of goods or services. The informal check of the website under the disputed Domain Name on February 11, 2003, showed that no goods and services are offered. The website is a HTML-copy of the English version of the portal of Complainant only and is linked to the portal of Complainant respectively its goods and services.

It has not been demonstrated that Respondent has a legitimate interest in the Domain Name.

In these circumstances, the Panel concludes that Complainant has established that Respondent has no rights or legitimate interests in respect of the disputed Domain Name. The second requirement of Paragraph 4(a) of the Policy is therefore satisfied.

On the third element of Paragraph 4(a) of the Policy, i.e. the issue of a bad faith registration, it is undisputed that the Respondent knew of the Complainant, its products and its trademark prior to registering the disputed Domain Name. Respondent did register the Domain Names only a couple of weeks after the filing by Complainant of its trademark. Indeed, the word "TISCOVERS" has neither a meaning in German nor in English language, the languages eligible on the website under the disputed Domain Name.

As a matter of fact, according to paragraph 4(b) of the policy, for the purposes of the third element of paragraph 4(a), by using the domain name Respondent has intentionally attempted to attract, for commercial gain, internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on your website or location, if found by a Panel to be present, shall be evidence of the registration and use of the domain name in bad faith.

In the present case, the Respondent uses a copy of Complainant’s website under the disputed Domain Name, with the exception of the advertisement banners. Each link on Respondent’s website leads to the website of the Complainant, including the link "about us". It seems indisputable that the Respondent is intentionally creating a confusion to the internet users as to the source, affiliation, location and to the products and services offered.

Under these circumstances, and taking into consideration the fact that the Respondent has not provided any evidence whatsoever of any actual or contemplated legitimate, good faith use by himself of the domain name, the Panel considers that the Respondent has registered and used the domain name in bad faith. Thus, the third requirement of paragraph 4(a) of the Policy is satisfied.

Therefore, and in consideration of the Complainant’s compliance with the formal requirements for this domain name dispute proceeding, of Respondent’s default in submitting a Response, of the factual evidence and legal contentions that were submitted, of the confirmation of the presence of each of the elements contemplated in Paragraph 4(a)(i)(ii) and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraphs 14(a) and (b) and 15(a) of the Rules, it is found:

(1) that the Domain Name is confusingly similar to the Complainant’s trademark;

(2) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(3) that the Domain Name has been registered and is being used in bad faith by the Respondent.

Accordingly, with specific reference to Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Administrative Panel directs that the disputed Domain Name <tiscovers.com> shall be transferred to Complainant.