WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alpitour S.P.A. v. PPA Media Services, Ryan G Foo, Fundacion Private Whois
Case No. D2013-2039
1. The Parties
The Complainant is Alpitour S.P.A. of Torino, Italy, represented by Studio Torta S.p.A., Italy.
The Respondent is PPA Media Services, Ryan G Foo of Santiago, Chile / Fundacion Private Whois of Panama.
2. The Domain Name and Registrar
The disputed domain name <myalpitourworld.com> (the “Domain Name”) is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2013. On November 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On December 6, 2013, the Registrar transmitted by email to the Center its verification 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 6, 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 amendment to the Complaint on December 11, 2013.
The Center verified that the Complaint together with the amendment to 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 December 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 29, 2013.
The Center appointed Geert Glas as the sole panelist in this matter on January 29, 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.
4. Factual Background
The Complainant is Alpitour S.P.A., an Italian company operating in the field of package holidays, founded in Cuneo (Italy) in 1947 under the brand name ALPITOUR. The Complainant has been the leading Italian travel group for many years, covering all five continents with more than 100 destinations and employing over 3,000 employees.
The Complainant has been the owner of the Italian trademark ALPITOUR since 1972 and uses this trademark in connection with its tourism, travel industry, aviation and hotel management activities.
In 2009, the Complainant registered the Community trademark ALPITOURWORLD registered on November 11, 2009, through which it offers a wide range of services regarding organized as well as independent travel.
The Complainant also owns the domain names <alpitour.it> and <alpitourworld.com>.
The Domain Name <myalpitourworld.com> was registered on April 25, 2012 by the Respondent. Prior to the filing of the complaint, the Domain Name resolved to a pay-per-click page with sponsored links related to vacations. On the date of filing of the amendment to the Complaint the Domain Name leads to a blank non-operative web page.
5. Parties’ Contentions
The Complainant requests the transfer of the Domain Name on the following grounds:
(i) the Domain Name is identical or confusingly similar to a trade or service mark in which the Complainant has rights.
The Complainant contends that the Domain Name is confusingly similar to its well-known trademarks ALPITOUR and ALPITOURWORLD because it incorporates those trademarks in their entirety.
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant contends that it has never licensed or authorized the Respondent to use its ALPITOUR trade mark and that the Respondent is not in any way affiliated with the Complainant.
The Respondent is neither known by the Domain Name, nor has the Complainant found any evidence that would suggest that the Respondent has been using ALPITOUR in a way that would grant it legitimate rights in the name.
Furthermore, the Respondent is not using the Domain Name in connection with a bona fide offering of goods and services.
(iii) the Domain Name was registered and is being used in bad faith.
The Complainant contends that:
- the use of the Domain Name by the Respondent shows that the Respondent intends to disrupt the Complainant’s business, deceive consumers, and trade off the goodwill and reputation of the Complainant; and
- as the website remains a blank non-operative page, it is clear that by not actively using the Domain Name, it was registered in bad faith.
The Complainant requests that the Domain Name be transferred to the Complainant.
The Respondent did not file any response to the Complaint.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant proves each and all of the following three elements in order to prevail in these proceedings:
(i) the Domain Name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interest 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 is the owner of two registered Italian trademarks covering the word ALPITOUR (No. 1305544 and No. 1235943) and a registered Community trademark covering the word ALPITOURWORLD (No. 8308579).
The Domain Name incorporates the Complainant’s trademarks in their entirety and differs from the Complainant’s trademarks only in that the prefix “my” and (only with regard to the Italian trademarks) the suffix “world” has been added. Several UDRP panels have held that wholly incorporating a complainant’s registered trade mark in a domain name may be sufficient to establish confusing similarity for the purposes of the Policy, particularly where the trademark is highly recognizable and famous (see, e.g., AT&T Corp. v. William Gormally, WIPO Case No. 2005-0758; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009 0113). In addition, it is well-established that adding a generic or descriptive term to a registered trademark does not prevent the domain name from being confusingly similar to that registered trade mark (see, e.g., Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; and Lilly ICOS LLC v. John Hopking/Neo net Ltd., WIPO Case No. D2005-0694).
In the case at hand, the Panel finds that adding the generic words “my” and “world” to the ALPITOUR trademarks and “my” to the ALPITOURWORLD trade mark does not render the Domain Name less confusingly similar to both the ALPITOUR and ALPITOURWORLD trademarks (see, e.g., Lego Juris A/S v. Thomas Plaut , WIPO Case No. D2012-1822; and LEGO Juris A/S v. sakchai srion, WIPO Case No. D2012-0604). As ALPITOUR constitutes the dominant part of the Domain Name, there is a considerable risk that the public will be under the impression that the Respondent’s Domain Name is owned by the Complainant or will think that there is some kind of commercial relationship with the Complainant.
The addition of the generic top level domain “.com” is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the Complainant’s trade mark and the Domain Name (see, e.g., Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000 1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; and Qantas Airways Limited v. Minh Huynh, WIPO Case No. D2008-1382).
Accordingly, the Panel finds that the Complainant has established the first element under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, the consensus view is that, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, e.g., Document Technologies Inc. V. International Electronic Communications Inc., WIPO Case No. D2000-0270 and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
Based on the evidence submitted by the Complainant, the Panel finds that there is no evidence that the Respondent has been commonly known by the Domain Name, has made a legitimate noncommercial use of the Domain Name or has used the Domain Name in connection with a bona fide offering of goods and services.
The Respondent has failed to respond to the Complaint and has therefore failed to provide any evidence of its rights or legitimate interests in the Domain Name.
Based on the evidence provided by the Complainant, the Panel finds that the second element under paragraph 4(a)(ii) of the Policy has been established.
C. Registered and Used in Bad Faith
(i) Registered in Bad Faith
The Panel finds that the ALPITOUR trademark is well-known and widely used, that it is highly unlikely that the Respondent did not know of the Complainant’s trade mark at the time the Domain Name was registered.
Several UDRP panels have ruled that bad faith is established where a complainant’s trademark has been shown to be wellknown or in wide use at the time of registering a domain name (see e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113; Caesar World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; and Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435).
(ii) Used in Bad Faith
As the Domain Name is linked to a website which on the date of filing of the amendment to the Complaint leads to a blank non-operative page, such behavior can be considered as passive holding. The Panel finds that the Respondent’s apparent lack of so-called active use of the Domain Name does not as such prevent a finding of bad faith. The Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. Other UDPR panels have considered that, taken cumulatively, where a complainant owns a wellknown trade mark and there is no response to the complaint, those circumstances can be held to be indicative of use in bad faith.
The Panel concurs with the understanding of several other UDRP panels that passive holding of a domain name can amount to a respondent acting in bad faith. The concept of passive holding may apply even in the event of mere “parking” by a third party of a domain name (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131; Westdev Limited v. Private Data, WIPO Case No. D2007-1903; Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393 and Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273).
The Respondent’s failure to respond to the Complainant’s contentions and as a result to provide any evidence whatsoever of any good faith use of the Domain Name is an additional indication of bad faith as is the widely known nature of Complainant’s trade mark (News Group Newspapers Limited and News Network Limited v. Momm Amed la, WIPO Case No. D2000-1623, Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598, America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460).
Moreover, the Domain Name resolved to a pay-per-click page with sponsored links related to vacations, prior to the filing of the Complaint. Such use, in the circumstances of this case, is evidence of bad faith registration and use under paragraph 49b)(iv) of the Policy.
In light of the above, the Panel concludes that the Domain Name was registered and is being used in bad faith.
Accordingly, the Panel finds that the third element under paragraph 4(a)(iii) of the Policy has been established.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <myalpitourworld.com> be transferred to the Complainant.
Date: February 12, 2014