WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Southall Travel Limited v. Michael Marcovici, Moniker Privacy Services
Case No. D2013-1999
1. The Parties
The Complainant is Southall Travel Limited, Southall, Middlesex, United Kingdom of Great Britain and Northern Ireland, represented by Lewis Silkin LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Michael Marcovici of George Town, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, Moniker Privacy Services of Oregon, United States of America.
2. The Domain Name and Registrar
The disputed domain name <southall-travel.com> (the “Disputed Domain Name”) is registered with Skykomishdomains.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2013. On November 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 2, 2013, 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. The Center sent an email communication to the Complainant on December 3, 2013, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 8, 2013 and a further amendment on December 11, 2013.
The Center verified that 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 December 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2014. Apart from a brief email communication which did not deal with any substantive matter received from the Respondent on December 3, 2013, no further communications were received from the Respondent.
The Center appointed Michael D. Cover as the sole panelist in this matter on January 20, 2014. 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. In accordance with paragraph 10(c) of the Rules, the Panel extended the decision due date to February 10, 2014.
4. Factual Background
The Complainant is Southall Travel Limited. The Complainant is a travel agency and one of the largest in the Kingdom of Great Britain and Northern Ireland (the “UK”). The Complainant was established in 1984 and now employs over 700 staff. The Complainant’s turnover annually is of the order of GBP283 million.
In the last year, the Complainant has made more than 365,000 bookings and also spent significantly on advertising. The Complainant is the proprietor of (European) Community trademark registrations for SOUTHALL TRAVEL (and logo) and also the words “southall travel’ in Classes 39, 41 and 43 for a range of services, including transportation, booking and arrangement of travel, training and the provision of accommodation. These trademark registrations go back to 2008 and 2009 respectively. The Complainant also has a pending trademark application for its trademark in the US. The Complainant registered the domain name <southalltravel.co.uk> in 1999 and has made extensive use of its SOUTHALL TRAVEL trademark.
The Respondent and registrant of the Disputed Domain Name is Michael Marcovici of George Town, Grand Cayman. The Respondent had indicated, once the Complaint had been filed, that it was willing to sell the Disputed Domain Name but this was not pursued by the Complainant.
The Disputed Domain Name was registered on June 29, 2013.
5. Parties’ Contentions
The Complainant states that it is one of the largest online travel agencies in the UK. It relies on its Community trademark registrations No. 002914653 and also asserts common law rights in its trademark SOUTHALL TRAVEL by virtue of its extensive use on the name since 1984 and from 1999 as part of the domain name <southalltravel.co.uk> as evidenced in Annex 5 to the Complaint.
The Complainant submits that the Disputed Domain Name comprises the words “Southall” and “Travel” and this renders it identical and/or confusingly similar to its trademark SOUTHALL TRAVEL. It submits that its trademark is the dominant component of the Disputed Domain Name.
In this connection, the Complainant submits that the addition of the hyphen and the “.com” ending does not add distinguishing features and cites in support InfoSpace.com Inc v. Tenenbaum Ofer, WIPO Case No. D2000-0075
The Complainant states that the Respondent should be considered as having no rights or legitimate interests in respect of the Disputed Domain Name as the Respondent is not currently using or commonly known under the Disputed Domain Name and has no bona fide intent to use or become commonly known under the Disputed Domain Name. The Complainant points out that the Respondent is not making legitimate noncommercial or fair use of the Disputed Domain Name and the Disputed Domain Name in fact resolves to a page which links to various travel sites that compete with the Complainant’s business. The Complainant also states that there is a link on the page to which the Disputed Domain Name resolves, which states that the Disputed Domain Name may be for sale. It submits that this has the effect of tarnishing the Complainant’s reputation and that of the business conducted under its trademark SOUTHALL TRAVEL.
The Complainant submits that the Disputed Domain Name has been registered and is being used in bad faith. It points out that its trademark was in widespread use by the time that the Disputed Domain Name was registered and that that such use went back many years. It says that a simple Internet search would have discovered the Complainant’s use of its trademark SOUTHALL TRAVEL and its trademark rights. It also says that the link indicating that the Disputed Domain Name was for sale indicates that the Disputed Domain Name was registered primarily for the purpose of selling the Disputed Domain Name to the Complainant or a competitor of the Complainant.
The Complainant submits that the use of the Disputed Domain Name in this way as a parking service amounts to bad faith use of the Disputed Domain Name.
The Complainant requests that the Disputed Domain Name be transferred to the Complainant.
Apart from the brief email communication of December 3, 2013, the Respondent has not formally responded to the Complaint.
6. Discussion and Findings
The Complainant is required to demonstrate on the balance of probabilities that the Dispute Domain Name is identical or confusingly similar to its trademark SOUTHALL TRAVEL, in which it has rights, that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark SOUTHALL TRAVEL in which the Complainant has both registered and common law rights for the purposes of the Policy. It is well-established that the addition of non-distinctive matter such as hyphens and “.com” does not render an otherwise confusingly-similar domain name non-confusing. The Disputed Domain Name has effectively incorporated the whole of the Complainant’s trademark.
B. Rights or Legitimate Interests
The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not been authorized or licensed by the Complainant to use its trademark SOUTHALL TRAVEL in the Disputed Domain Name.
There is no evidence to suggest that the Respondent has, before notice of the dispute, made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. The Panel finds that, on the balance of probabilities, on the evidence of the Complainant, such use that has taken place has not been bona fide. There is also no evidence to suggest that that the Respondent has been commonly known by the Disputed Domain Name nor that it has made legitimate, noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the reputation of the Complainant’s trademark SOUTHALL TRAVEL. The evidence of the Complainant already set out in this Decision points strongly in the opposite direction.
C. Registered and Used in Bad Faith
The Panel accepts that the Respondent has registered and indeed used and is using the Disputed Domain Name in bad faith. There is evidence from the link on the website to which the Disputed Domain Name resolves to establish on the balance of probabilities that the Respondent has registered the Disputed Domain Name primarily for the purpose of selling the Disputed Domain Name to the Complainant or a competitor of the Complainant. There is also evidence that the Respondent has, by the use of the parking service, sought to attract Internet users to that website by creating a likelihood of confusion with the Complainant’s trademark SOUTHALL TRAVEL.
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, <southall-travel.com> be transferred to the Complainant.
Michael D. Cover
Date: February 10, 2014