WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Last Minute Network Limited v. Last Minute Albania
Case No. D2013-1116
1. The Parties
The Complainant is Last Minute Network Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by J A Kemp., United Kingdom.
The Respondent is Last Minute Albania of Tirana, Albania.
2. The Domain Name and Registrar
The disputed domain name <lastminutealbania.com> (the “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 June 20, 2013. On June 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 20, 2013, 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.
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 June 26, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2013. Due to an administrative oversight, the response due date was extended to July 23, 2013. The Respondent sent an email communication on June 28, 2013 that stated: “due to the conflict of our domain name and the notifications of complaints from ‘lastminute.com Network’ and its advocacy representatives, we decided not to enter the legal way, but to abandon the domain name ‘lastminutealbania.com’. Please leave us some time to follow the closing the procedures with our host. If you have questions, please feel free to ask.” The Center asked the Complainant if the Complainant wished to suspend the proceedings in light of the communication from the Respondent. The Complainant responded that the Complainant did not wish to suspend the proceedings. The Respondent did not submit any formal response. Accordingly, the Center notified the proceeding update on July 24, 2013. On July 29, 2013, the Respondent sent an email to the Center that stated: “I would like to inform that, as promised, “www.lastminutealbania.com” is closed and not for public use anymore. If you have other things I can help in, please let me know.”
The Center appointed Michelle Brownlee as the sole panelist in this matter on August 2, 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 European Community Trade Mark registration numbers 1064195, 1527811, 7200413, 7200496 and 7200645 for the marks LAST MINUTE, LASTMINUTE.COM, lastminute.com, LASTMINUTE and lastminute (stylized) in connection with various services in International Classes 35, 36, 38, 39, 41, 42, 43 and 44 relating to the Complainant’s online travel, dining and entertainment reservation services. The Complainant also owns United Kingdom registration numbers 2314058, 2481325, 2481352, 2481359 and 2359399 for the marks LASTMINUTE.COM, lastminute.com (series of 2), LASTMINUTE, lastminute and lastminute.com (series of 2) for a wide variety of goods and service in all International Classes. The Complainant also owns registrations for LASTMINUTE and LASTMINUTE.COM marks in France, Germany, Hong Kong, Indonesia, Japan, Kuwait, Malaysia, Norway, Qatar, Saudi Arabia, Singapore, South Africa and the United Arab Emirates, as well as an International Registration that covers a number of other jurisdictions. The earliest of the Complainant’s registrations has an effective date of February 3, 1999.
The Domain Name was created on May 11, 2006 and registered to the Respondent on June 4, 2012.
5. Parties’ Contentions
The Complainant operates an online travel and leisure retail business at “www.lastminute.com”. The Complainant also operates country specific websites at “www.lastminute.de”, “www.lastminute.ie”, “www.es.lastminute.com”, “www.fr.lastminute.com”, “www.us.lastminute.com” and “www.it.lastminute.com”. The Complainant uses its LASTMINUTE and related marks in connection with the provision of travel arrangement services, restaurant reservation and booking services, reservation of entertainment events, such as theater, comedy or sports, and other leisure activities, such as spa appointments. The Complainant also uses the marks in connection with related services such as credit card services, travel insurance, car rental and car parking.
The Complainant argues that the Domain Name is confusingly similar to the Complainants LASTMINUTE marks because it pairs the trademark with the non-distinctive geographical term “Albania,” which is descriptive of the Respondent’s country of origin. The Complainant also contends that the Respondent has no rights to or legitimate interests in respect of the Domain Name, and that the Domain Name was registered and is being used in bad faith by the Respondent. The Complainant has submitted a printout of the Respondent’s web site at “www.lastminutealbania.com”, which shows that the web site is offering travel reservation services and has copied the Complainant’s color scheme and font of its logo. The Complainant argues that the Respondent is seeking to take unfair advantage of the Complainant’s reputation and goodwill. Further, the Complainant states that the Complainant has been in contact with the Respondent through Albanian attorneys to ask the Complainant to transfer the Domain Name and to cease and desist from use of “lastminute,” and that the Respondent offered to do so for EUR 14,700.
The Respondent did not submit any formal reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(i) the 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 to or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns rights in the LASTMINUTE trademark. There are many UDRP decisions that find that the pairing of a distinctive trademark with less distinctive terms is confusingly similar to the distinctive trademark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions, WIPO Case No. D2007-1140; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (<christiandiorcosmetics.com> and <christiandiorfashions.com> confusingly similar to CHRISTIAN DIOR); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032 (inter alia, <leasinglexus.com> and <lexuselite.com> confusingly similar to LEXUS). Accordingly, the Panel finds that the Domain Name, which pairs the LASTMINUTE trademark with the geographic term “Albania,” is confusingly similar to the Complainant’s LASTMINUTE trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name at issue in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; 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 at issue.
In this case, the Respondent has not presented evidence that the Respondent used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services; that the Respondent is commonly known by the Domain Name; that the Respondent is making a legitimate noncommercial or fair use of the Domain Name; or in any other way refuted the Complainants’ prima facie case.
The Complainant has presented evidence, which was not refuted by the Respondent, that the Respondent is using the Domain Name in connection with a web site that uses the Complainant’s color scheme and logo font to offer the same type of services as the Complainant. This activity cannot be considered a bona fide offering of goods or services. Accordingly, the Panel finds that the Respondent does not have any rights to or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name at issue 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online 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.
The Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The content posted on the web site associated with the Domain Name demonstrates that the Respondent is aware of the Complainant’s LASTMINUTE trademark, as the web site is using the Complainant’s color scheme and logo font. The Panel finds that the Respondent is using the Domain Name to attract Internet users to the Respondent’s web site by creating confusion as to source and presumably results in commercial gain to the Respondent. In the Panel’s view, the likelihood of confusion is exacerbated in this case by the prominent use of the Complainant’s logo font and color scheme on the website. Further, the Complainant has also presented evidence that the Respondent registered or acquired the Domain Name primarily for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant for valuable consideration greater than the Respondent’s out-of-pocket costs directly related to the Domain Name. This evidence reinforces the Panel’s conclusion that the Domain Name was registered and is being 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 Domain Name <lastminutealbania.com> be transferred to the Complainant.
Date: August 15, 2013