WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Travelpro International, Inc. v. Openmail / Whois Privacy Protection Service, Inc
Case No. D2015-0873
1. The Parties
The Complainant is Travelpro International, Inc. of Boca Raton, Florida, United States of America, represented by Akerman LLP, United States of America.
The Respondent is Openmail of Christchurch, Canterbury Plains, New Zealand / Whois Privacy Protection Service, Inc of Kirkland, Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name <experttravelpro.com> (the "Domain Name") is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on May 22, 2015. On May 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain name. On May 22, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 3, 2015 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 June 8, 2015.
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 the Respondent of the Complaint, and the proceedings commenced on June 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2015.
The Center appointed Ian Lowe as the sole panelist in this matter on July 13, 2015. 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 a leading provider of high quality luggage throughout the world. Since 1988 it has regularly advertised its TRAVELPRO mark across a range of media and currently spends around USD 3 million per year in promoting its Travelpro brand. It has operated a website at “www.travelpro.com” advertising its products since 1996. The Complainant is the registered proprietor of a number of trademarks around the world comprising the TRAVELPRO mark including United States trademark number 1587822 registered on March 20, 1990, Community trademark number 4739918 registered on December 7, 2006 and New Zealand trademark number 268777 registered on November 18, 1997, all in respect of the word mark TRAVELPRO.
The Domain Name was registered on May 20, 2014 and at the time of preparation of the Complaint resolved to a parking page comprising pay per click links to third party websites offering goods identical to those sold by the Complainant under the TRAVELPRO mark, and brands in direct competition with the Complainant.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its TRAVELPRO trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith 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
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove 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
The Complainant has uncontested rights in the trademark TRAVELPRO, both by virtue of its many trademark registrations around the world and as a result of its widespread goodwill and reputation acquired through use of the TRAVELPRO mark over many years. Ignoring the generic Top-Level Domain ("gTLD") ".com", the Domain Name comprises the entirety of the TRAVELPRO mark together only with the generic term "expert". In the view of the Panel, this does not detract from the distinctiveness of the TRAVELPRO mark. Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. The use made of the Domain Name by the Respondent for a website comprising sponsored advertisements and links to third party websites does not indicate any such rights and the Respondent has chosen not to respond to the Complaint or to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Complainant's TRAVELPRO trademark is widely known throughout the world and in the view of the Panel the Domain Name comprises a constrained combination of the Complainant's mark and the word "expert". In the circumstances, the Panel is in little doubt that the Respondent must have had the Complainant and its rights in the TRAVELPRO name in mind when it registered the Domain Name. Further, the Panel struggles to conceive of any legitimate, bona fide reason for the registration of the Domain Name. The circumstances of registration and the use to which the Domain Name has been put for a website comprising pay per click links represent paradigm bad faith registration and use with a view to financial gain.
Accordingly, the Panel finds 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 <experttravelpro.com> be transferred to the Complainant.
Date: July 24, 2015