WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BookIt Operating LLC v. Alvaro Bustamante, Redline Investments
Case No. D2014-0690
1. The Parties
Complainant is BookIt Operating LLC of Panama City Beach, Panama, represented by Akerman LLP, United States of America.
Respondent is Alvaro Bustamante, Redline Investments of Ciudad de Panama, Panama.
2. The Domain Name and Registrar
The disputed domain name <bookitcancun.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 26, 2014. On April 28, 2014 the Center received an email communication from the Registrar addressed to Complainant, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. On April 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 30, 2014 Complainant filed an amended Complaint. On April 30, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on May 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2014. On May 8, 2014, the Center received an informal communication from Respondent. On May 12, 2014, the Center sent an email communication to the Parties regarding a possible settlement of the dispute. Complainant did not reply to such communication. Respondent did not submit any formal response by the due date. Accordingly, the Center notified the commencement of the Panel appointment process on May 30, 2014.
The Center appointed Roberto Bianchi as the sole panelist in this matter on June 3, 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 following facts and circumstances are undisputed:
Complainant is an online travel company offering travel and accommodation services such as facilitation and arrangement of vacation packages, air travel, hotel reservations, car rentals, and cruises for domestic and international destinations. Since April 2004, Complainant has offered online travel arrangement services and searches for travel deals. Complainant's former legal name was BookIt.com, Inc. In December 2013, Complainant converted BookIt.com, Inc. into BookIt Operating LLC.
Complainant acquired the <bookit.com> domain name in 2004. Complainant has offered its services on the "www.bookit.com" website under the BOOKIT.COM trade name and service mark since at least as early as 2004.
Complainant owns several registrations for the BOOKIT.COM marks, inter alia:
BOOKIT.COM, U.S. Reg. No. 3,110,875, Reg. Date July 4, 2006, filed on June 25, 2004, covering: Providing online arrangements for travelers, namely, hotel reservations, in International Class 43. First use: April 13, 2004; first use in commerce: June 30, 2004.
BOOKIT.COM, U.S. Reg. No. 3,704,196, Reg. Date November 3, 2009, filed on July 28, 2008, covering: Arranging and coordinating travel arrangements for individuals and groups, namely, destinations stays, honeymoons, family vacations, and destination weddings; Arranging travel tours; Booking of seats for travel; Coordinating travel arrangements for individuals and for groups; Organization of travel; Organization of excursions, sightseeing tours, holidays, tours and travel; Rental car reservation; Reservation and booking of seats for travel; Travel agency services, namely, making reservations and bookings for transportation; Travel and tour ticket reservation service; Travel booking agencies; Travel planning for individuals, families, and groups for special occasions such as destination weddings and honeymoons; Travel, excursion and cruise arrangement, in International Class 39. First use: April 13, 2004; first use in commerce: June 30, 2004.
Complainant protects similar services with several other registrations of the BOOKIT mark in the United States, Canada, France, Germany, Japan, Spain and the United Kingdom of Great Britain and Northern Ireland.
The disputed domain name was registered on August 10, 2013.
5. Parties' Contentions
In its amended Complaint, Complainant contends as follows:
The BOOKIT.COM marks have developed significant goodwill and secondary meaning due to their extensive promotion beginning a nearly decade ago. In addition to prominently featuring the BOOKIT.COM Marks on its website, Complainant regularly advertises its BOOKIT.COM marks in television, radio, print, Internet, email and newsletter advertising campaigns. Complainant spends tens of millions of dollars annually to advertise and promote the BOOKIT.COM marks for purposes of increasing the goodwill and overall brand awareness of the BOOKIT.COM marks and Complainant's website. Its efforts have been highly successful. By virtue of its successful advertising and promotional efforts, Complainant conducts hundreds of thousands of on-line travel related transactions each year. Accordingly, the BOOKIT.COM marks have become distinctive identifiers associated with the Complainant and its services.
Significantly, Complainant is particularly well known for providing its services of arranging and coordinating travel arrangements for those traveling to Cancun, Mexico. In fact, Complainant has dedicated a portion of its website to providing services specifically for travelers to Cancun, Mexico and has developed extensive relationships with companies in Mexico so that it can provide unique offers for travel to Cancun to its customers.
By virtue of nearly a decade of widespread and continuous use of the BOOKIT.COM marks, including efforts purposefully focused on servicing the needs of customers traveling to Cancun, extensive advertising related thereto, and Complainant's numerous United States, international and foreign service mark registrations, Complainant's marks have a reputation for excellence and are immediately recognizable among the trade and consumers in connection with a broad range of services involving making and coordinating travel arrangements.
The disputed domain name is identical to Complainant's BOOKIT.COM marks except for a geographically descriptive term, which actually increases the likelihood of confusion. Respondent's website uses a logo which is confusingly similar to Complainant's mark. Not only is Respondent's domain name confusingly similar to Complainant's BOOKIT.COM Mark, but its website also incorporates a design mark which is nearly identical to the BOOKIT.COM logos, for which Complainant owns U.S. Reg. Nos. 4,270,578 and 4,266,515. Still further, the "www.bookitcancun.com" website is advertising travel arrangement. It is obvious that Respondent purposefully registered the disputed domain and adopted the infringing logo with the intent to confuse consumers into thinking that it is affiliated with Complainant. And, there is not just a likelihood of confusion - actual confusion has already occurred. Complainant recently received a communication from a consumer who purchased a vacation package from Respondent but believed that Complainant was the source of the vacation package.
All of the foregoing demonstrates that Respondent registered the disputed domain name to confuse and deceive Complainant's customers and potential customers. The disputed domain name is a purposeful incorporation of Complainant's BOOKIT.COM marks in which the word "Cancun" – a popular destination of Complainant's customers – has been added for the purpose of misleading Internet users into believing that the "www.bookitcancun.com" website is BookIt.com, or merely a division of, or related to, BookIt.com.
Respondent has no rights or legitimate interests in the disputed domain name. On or about August 10, 2013, Respondent registered the disputed domain name, nearly a decade after Complainant adopted the BOOKIT.COM mark and acquired the <bookit.com>domain name.
Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Because Respondent is blatantly and intentionally infringing upon Complainant's BOOKIT.COM marks, its offering of travel arrangement services is not bona fide. This is because the term "bona fide" means "in or with good faith." Respondent is using the domain name <bookitcancun.com>, which incorporates the BOOKIT.COM marks, in connection with its travel accommodation services in direct competition with Complainant's business. Accordingly, Respondent's offering of services in connection with the domain name is in bad faith and cannot be considered bona fide.
Respondent is not commonly known as BOOKIT.COM or CANCUNBOOKIT.COM. Respondent is Alvaro Bustamante of Redline Investments. There is no evidence thatRespondent is commonly known by the domain name or is making a legitimate non-commercialor fair use of the domain name within the meaning of paragraph 4(d)(ii) or (iii) of the Policy.Respondent is not making any bona fide offering of goods or services. Consistent with priordecisions, the lack of any bona fide offering of goods or services in connection with the disputeddomain sufficiently establishes that Respondent is not commonly known by or as"Bookitcancun.com" or "Bookit.com". For at least these reasons, it is apparent that Respondent is not commonly known as "Bookitcancun" or "Bookit".
Respondent has not made a legitimate noncommercial or fair use of the disputed domain name and instead seeks to divert Complainant's customers and potential customers. Respondent's registration and use of the disputed domain name is a clear case of taking Complainant's trademark and adding a geographically descriptive term to it to confuse customers into thinking that they are reaching a website owned by Complainant. Respondent's website makes no mention of Complainant, and does not provide a comment or parody of Complainant, such that it could be argued that there is a legitimate commercial or non-commercial fair use of Complainant's BOOKIT.COM marks.
Moreover, the website does not simply fail to accurately disclose Respondent's relationship with BookIt.com (that there is none)—it is actually designed to confuse a user to believe that they are directly interacting with BookIt.com itself. As can be seen from the screenshot displayed below, the infringing design mark BOOKITCANCUN.COM is prominently featured at several sections of Respondent's website. Use of a mark in a domain that seeks to impersonate the Complainant and sell competitive products is not legitimate use of a trademark, but rather is considered an intentional attempt to create confusion. Accordingly, Respondent is not using the domain name for a legitimate noncommercial or fair use purpose.
Respondent registered and presently uses the disputed domain name in bad faith. As detailed above, Respondent intentionally developed the website at the disputeddomain name to confuse consumers into thinking that they are dealing with Complainant. Suchintentional misrepresentation squarely falls within the examples provided by the Policy of strongevidence of bad faith: "using the domain name, [respondent has] intentionally attempted toattract, for commercial gain, Internet users to [its] website or other on-line location, by creating alikelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, orendorsement of [respondent's] website or location…" (Policy, paragraph 4(b)(iv))
Respondent's website at the disputed domain name prominently features Complainant's trademarks in multiple places, particularly those places where consumers expect to see the owner's trademark, logo or name. Accordingly, Respondent has used the disputed domain name in bad faith.
Respondent did not formally reply to the Complainant's contentions.
On May 8, 2014, the Center received an email from Respondent, stating:
"Subject:Re: (RUAL) D2014-0690 <bookitcancun.com> Notification of Complaint and
Commencement of Administrative Proceeding
My client has notified me that they have agreed to work with you to resolve this issue. They said that they didn't mean to deceive or steal any of BookIt.com's customers. They stopped using their logo and they have removed the website and redirected the domain Bookitcancun.com to BookIt.com
They would like to know how else they could be be [SIC] assistance.
6. Discussion and Findings
Under the Policy, paragraph 4(a), a complainant must make out its case that:
(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 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
By its trademark registrations in the United States and various other countries, Complainant has shown to the satisfaction of the Panel that it has trademark rights in the BOOKIT.COM mark. See section 4 supra.
The Panel notes that the disputed domain name consists of the "bookit" term (the dominant element in Complainant's mark BOOKIT.COM), plus the geographic name "Cancun". Previous panels have found that the mere addition of geographical terms is inapt to distinguish the domain name in issue from the mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9 ("The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name.")
It is also well established that the addition in a domain name of a generic Top-Level Domain ("gTLD") to a mark does nothing to distinguish the domain name from the mark. Moreover, since Complainant's mark includes the ".com" term, the use of this particular gTLD in the disputed domain name rather reinforces the impression of confusion between both identifiers.
Thus, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
It is well established that a complainant must first establish a prima facie case that the respondent lacks any rights or legitimate interests in the disputed domain name, and once this is done, the burden of production shifts to the respondent to show that it has at least a right or legitimate interest in the disputed domain name. See "WIPO Overview 2.0, paragraph 2.1 ("[A] complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, 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 UDRP […]").
Complainant contends that since Respondent is intentionally infringing upon Complainant's BOOKIT.COM marks, its offering of travel arrangement services is not bona fide, because the term "bona fide" means "in or with good faith." Respondent is using the disputed domain name in connection with its travel accommodation services in direct competition with Complainant's business. Accordingly, Respondent's offering of services in connection with the domain name is in bad faith and cannot be considered bona fide.
Complainant also contends that Respondent is not commonly known as "Bookitcancun.com" or "Bookit.com", but as Alvaro Bustamante of Redline Investments.
Complainant further alleges that Respondent seeks to divert Complainant's customers and potential customers, by taking Complainant's trademark and adding a geographically descriptive term to it to confuse customers into thinking that they are reaching a website owned by Complainant. Also, Respondent's website makes no mention of Complainant, and does not provide a comment or parody of Complainant, such that it could be argued that there is a legitimate commercial or noncommercial fair use of Complainant's BOOKIT.COM marks. Nor does Respondent's website disclose that Respondent is not related to BookIt.com. In fact Respondent's website is designed to confuse users to believe that they are directly interacting with Complainant itself. Complainant adds that Respondent's use of Complainant's mark seeks to impersonate Complainant and sell competitive products, which is not a legitimate use of a trademark, but rather is considered an intentional attempt to create confusion.
In the opinion of the Panel, Complainant's contentions and evidence, taken together, are apt to constitute a prima facie case that Respondent lacks any rights or legitimate interests in the disputed domain name. In particular, Complainant's evidence shows that Respondent's particular use of Complainant's mark in its "www.boookitcancun.com" website is a clear attempt to impersonate Complainant to attract Internet users presumably searching for Complainant and its travel services into buying Respondent's own competing, travel-related services. In this regard, the Panel notes that the printout resulting from the lookup visit to the website at the disputed domain name conducted on May 8, 2014 by the Center confirms that on this website Complainant's mark was used as contended by Complainant, that is, that the terms: "Book It Cancun" are being used with a logo closely resembling Complainant's own logo. Thus, it is apparent that Respondent has attempted to create the impression that the owner of the website is Complainant. Moreover, on its website Respondent did not state, clearly by means of a disclaimer, or otherwise, that this was not the case. Nor did Respondent provide contact information showing that it was not Complainant.
In the opinion of the Panel, Respondent's use of the disputed domain name is equivalent to an impersonation of Complainant. As a minimum, Respondent is using the disputed domain name by creating confusion amongst Internet users presumably looking for Complainant, and to unfairly compete with Complainant in providing services similar to those offered by Complainant. The Panel believes such use is not in connection with a bona fide offering of goods or services under Policy, paragraph 4(c)(i), nor a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy, paragraph 4(c)(iii). See Jupiter Investment Management Group Limited v. N/A, Robert Johnson, WIPO Case No. D2010-0260 ("The adoption and use of a domain name for the purposes of such impersonation does not provide a right or legitimate interest under the Policy."); see also Thomas Sabo GmbH & Co. Schmuckhandel KG v. A&L, Ran Hill, WIPO Case No. D2010-0731 ("[I]t is established that the Respondent commercially used the disputed domain names without the Complainant's consent or authorization to divert internet traffic to commercial websites through which it apparently identified itself as the Complainant. Such use is not a bona fide offering of goods or services or a legitimate noncommercial use or fair use of the domain names.")
In absence of any evidence in favor of Respondent and in view of its default, the Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain name and that the second element of the Policy has therefore been met.
C. Registered and Used in Bad Faith
The Panel notes that Complainant began using the BOOKIT.COM mark in 2004, several years before Respondent registered the disputed domain name, in 2013. Also, Complainant's registration of the U.S. mark BOOKIT.COM predates Respondent's registration of the disputed domain name. Respondent's own use of this mark in the disputed domain name and its corresponding website, including an obvious imitation of Complainant's logo, and its own offering of travel-related services, reveals that Respondent knew of, and had in mind Complainant, its mark and travel services when it registered the disputed domain name, which in the circumstances of this case is evidence of registration in bad faith.
Complainant has also shown that Respondent, by using a logo very similar to Complainant's logo and offering competing travel-related services on the website at the disputed domain name, is impersonating or, at least, creating the impression amongst Internet users presumably looking for Complainant's travel services relating to Cancun, that the website belongs to Complainant. This means that Respondent intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant's BOOKIT.COM mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on Respondent's website or location. In the Panel's view, this is a circumstance of bad faith registration and use of the disputed domain name pursuant to Policy paragraph 4(b)(iv). See Jupiter, supra, ("[Impersonation of the complainant by the respondent] also involves registration and use in bad faith").
The fact that following the notification of the Complaint Respondent redirected its website "www.bookitcancun.com" to Complainant's "bookit.com" website does not alter the Panel's conclusion that the disputed domain name is being used in bad faith. In this regard, the Panel agrees with the reasoning of the panel in Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021 ("The Panel is cognizant of the fact that 4, a (iii) uses the present tense when referring to use. The Panel believes that the term "is being used" does not refer to a particular point in time (such as when the Complaint is filed or when the Panel begins deliberations), but refers to the period of time following registration of the domain name at issue. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, 7.6, at 9. If at any time following the registration the name is used in bad faith, the fact of bad faith use is established. Thus, the fact that upon remonstrance by Complainant's counsel, Respondent ceased using the domain names at issue as links to pornographic sites, cannot alter the fact that the bad faith act had occurred during the period following registration.")
Finally, the courier entrusted with delivering the Complaint and its Annexes reported that both the address and the phone number furnished by Respondent to the Registrar are inexistent. This suggests that Respondent apparently has furnished false contact details, which previous panels usually consider an additional factor indicating bad faith. See, for instance, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107 ("The Panel agrees that the Respondent's purposefully using false contact information in registering the domain name to conceal its identity may be an additional proof of the Respondent's bad faith.")
Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith and thus, that the third element of the Policy has been met.
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 <bookitcancun.com> be transferred to Complainant.
Date: June 16, 2014