WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TUI AG v. Domain Admin / MEHMET ALİ TUNÇ
Case No. D2014-1620
1. The Parties
The Complainant is TUI AG of Hannover, Germany, represented by Hauke Dahmlos, Germany.
The Respondent is Domain Admin of Queensland, Australia / MEHMET ALİ TUNÇ of Antalya, Turkey.
2. The Domain Name and Registrar
The disputed domain name <tuiworldrentacar.com> is registered with FBS Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2014. On September 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 22, 2014, 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 September 29, 2014, 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 October 30, 2014.
On September 29, 2014, the Center transmitted a language of the proceedings document to the parties in both English and Turkish. On September 30, 2014, the Complainant requested English to be the language of the proceedings. The Respondent did not submit any comments.
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 October 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 28, 2014.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on November 5, 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 one of Europe’s largest travel group companies, which offers vacation and travel services to millions of clients worldwide. The Complainant operates its business through three major divisions: TUI Travel, TUI Hotels & Resorts and TUI Cruises.
The Complainant is well known under its TUI trademark IR 780562, registered on November 7, 2001, designating, inter alia, Turkey. The Complainant also has intensive business activities in Turkey.
The Complainant maintains a strong online presence and operates its main webpage at “www.tui.com” and is the registrant of numerous additional domain names including <tuicars.com>.
The disputed domain name was registered on December 12, 2012.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is identical / confusingly similar with its registered trademarks, namely TUI trademarks since it incorporates exactly and entirely TUI phrase as distinctive and main element.
The Complainant further contends that the Respondent does not have rights or legitimate interests regarding the disputed domain name because: (i) the Respondent has no association or affiliation with the Complainant and has not received any authorization to use the trademark TUI in a domain name or in any other matter; (ii) the Respondent is not commonly known by the disputed domain name; (iii) the Respondent registered the disputed domain name after the Complainant established its trademark rights; (iv) the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services; (v) the Respondent is intentionally using the disputed domain name to attract consumers to the Respondent’s website for commercial gain.
Finally, the Complainant contends that the disputed domain name has been registered and is being used in bad faith by the Respondent. The Respondent’s website offers online car rental services. The Respondent is thus intentionally attempting to attract Internet users to the Respondent’s websites for commercial gain, by creating a likelihood of confusion with the Complainant’s famous trademarks as to the source, sponsorship, affiliation, or endorsement of the website or of products on the website within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Language of the Proceeding
According to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11(a) of
the Rules is to ensure fairness in the selection of the language by giving full consideration to the parties’ level of comfort with the language, the expenses to be incurred and possibility of delay of the proceeding in the event translation is required.
Although the language of the Registration Agreement is Turkish, the Panel determines in accordance with the Rules, paragraph 11(a) that the language of these administrative proceedings shall be the English language. The Panel finds that it would be inappropriate to conduct the proceedings in the Turkish language and request a Turkish translation of the Complaint considering the Respondent’s failure to respond to the Complaint, particularly in light of the Center’s notification and administration of the proceedings both in Turkish and English and the express ability of the Respondent to submit a response in Turkish.
B. Identical or Confusingly Similar
The disputed domain name incorporates the trademark TUI in its entirety in association with the words “world” and “rent”, “a”, “car”. In this type of combination it is clear that the trademark TUI stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark.
Previous UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g.,Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S.r.l., WIPO Case No. D2001-1206; Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282.
The addition of the generic words “world” and “rent a car” increases the likelihood of confusion because they refer to a type of activity which is internationally known in the tourism industry. A relevant similarity is furthermore given between the disputed domain name and the Complainant’s trademark WORLD OF TUI.
Therefore, the Panel finds that the disputed domain name <tuiworldrentacar.com> is confusingly similar to the trademark TUI and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
C. Rights or Legitimate Interests
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests. The Complainant showed, inter alia, that the Respondent has neither a license nor any other permission to use the disputed domain name. The Respondent has failed to demonstrate such rights or legitimate interests. The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right or legitimate interest in the disputed domain name. It is clear that the Respondent has not demonstrated any bona fide offering of goods or services by its use of the disputed domain name and has not rebutted the Complainant’s prima facie case. Nor has the Respondent shown that it has been commonly known by the disputed domain name.
The Panel further finds that given the use made of the disputed domain name, when the Respondent registered the disputed domain name it must have known the TUI trademark of the Complainant. It registered the disputed domain name because it would be recognized as such.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the requirement of paragraph 4(a)(ii) of the Policy is met.
D. Registered and Used in Bad Faith
The Panel is of the opinion that the Respondent must have been aware of the Complainant and its trademark rights when it registered the disputed domain name. Bearing this in mind, the Panel finds the Respondent’s bad faith is illustrated by the fact that the disputed domain name resolved to a website offering car rental services in Antalya, Turkey. The Panel is prepared to infer that the Respondent is taking advantage of the goodwill and reputation of the Complainant’s trademark for commercial gain and it well established that such use is evidence of bad faith. Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Universal Spheres Inc., WIPO Case No. D2010-0822. Further, such use clearly threatens to divert actual clients away from the Complainant and disrupt the Complainant’s business.
The fact that the disputed domain name does not presently resolve to any website does not prevent this Panel from making a finding of bad faith, particularly given the renown of the Complainant’s trademark and the previous use of the disputed domain name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2).
As in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Ladbroke Group Plc v. Sonnoma International LDC, WIPO Case No. D2002-0131, after examining all circumstances surrounding the registration and use of the disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly the Panel finds in favor of the Complainant on the third element of the Policy.
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 <tuiworldrentacar.com> be transferred to the Complainant.
Dilek Ustun Ekdial
Date: November 21, 2014