WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fareportal Inc. v. Registration Private, Domains By Proxy, LLC/Sidharth Mehra
Case No. D2017-0894
1. The Parties
The Complainant is Fareportal Inc. of New York, New York, United States of America (“United States” or “U.S.”), represented by Cowan, DeBaets, Abrahams & Sheppard, LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Sidharth Mehra of Ghaziabad, Uttar Pradesh, India.
2. The Domain Name and Registrar
The disputed domain name <cheapoairlinefares.com> (“the Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2017. On May 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 4, 2017, 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 May 9, 2017 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 May 12, 2017.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 13, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 15, 2017.
The Center appointed Jon Lang as the sole panelist in this matter on June 26, 2017. 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 technology company that develops computer software used to power travel-related websites, including the highly successful, multi-national, Internet-based travel agency “www.cheapoair.com” (the “Complainant’s Website”). Through this and other websites, the Complainant offers high-value, low-cost travel-related services including airfare, temporary lodging, car rentals and vacation packages.
The Complainant’s successful position in the travel-planning industry is largely due to its innovative technology, long-standing working relationships with suppliers such as commercial airline companies, and the goodwill associated with the trademarks under which the Complainant provides its services.
For nearly the past decade, the Complainant has provided its travel-related services to the public using trademarks such as CHEAPOAIR and variations thereof, including CHEAPOAIR.COM and WWW.CHEAPOAIR.COM (collectively, the “CHEAPOAIR Marks”), such marks being registered with the United States Patent and Trademark Office (“USPTO”) under Registration Nos. 3,576,166 (Registration date, February 17, 2009); 4,729,795 (Registration date, May 5, 2015); and 4,725,988 (Registration date, April 28, 2015), respectively. The U.S. Reg. No. 3,576,166 (CHEAPOAIR) has achieved incontestable status on the Principal Register.
The Complainant displays and uses the CHEAPOAIR Marks to advertise and promote its travel services in interstate commerce, including, without limitation, on the Internet.
On or about March 3, 2017, without the Complainant’s permission, the Respondent obtained and/or activated the registration of the Domain Name. The Domain Name resolves to a competing website (the Respondent’s Website).
The Respondent did not reply to the Complainant’s contentions in these proceedings although it did respond to the cease-and-desist letter sent by the Complainant on April 14, 2017. The letter was emailed to […]@cheapoairlinefares.com, addressed to Mr. Sidharth Mehra, requesting, inter alia, that he transferred the Domain Name to the Complainant. In response, Mr. Mehra sent to the Complainant an email dated April 21, 2017 wherein he confirmed his association with the website found at the Domain Name, sought to justify his registration of the Domain Name and refused to transfer it to the Complainant.
5. Parties’ Contentions
The following is a brief summary of the Complainant’s contentions.
The Domain Name is confusingly similar to the Complainant’s CHEAPOAIR Marks
The Complainant has invested hundreds of millions of dollars, and has expended substantial time and other resources in developing, advertising, and promoting its Internet-based travel agencies under, among other trademarks, the CHEAPOAIR Marks. As a result of these efforts, the Complainant has developed considerable goodwill: consumers readily identify the CHEAPOAIR Marks as being of the highest quality and emanating exclusively from, and being sponsored and approved by, the Complainant. As a result of extensive use and promotion, the Complainant now owns valuable goodwill in the CHEAPOAIR Marks, which in turn substantially increases the value of the Complainant’s business and services.
The Complainant is careful to ensure that its bookings comply with industry standards and applicable law, and to protect its valuable intellectual property rights, including its well-known CHEAPOAIR Marks.
The Domain Name incorporates the CHEAPOAIR Marks in their entirety without authorization or permission from the Complainant and directs users to the Respondent’s Website. The Domain Name is confusingly similar to the CHEAPOAIR Marks, in that it incorporates the entirety of the CHEAPOAIR Marks.
Numerous courts and prior UDRP panels have held that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. The addition of words commonly identified with air travel (i.e., adding “line” at the end of “air,” and “fares”) should not preclude a finding of confusing similarity, (as adding descriptive or non-distinctive matter to another’s mark will not suffice to avoid a claim of infringement).
Courts and administrative panels have recognized that consumers expect to find a trademark owner on the Internet at a domain name address composed of the trademark owner’s name or mark. However, Internet users who intend to visit the Complainant’s Website for the purposes of utilizing its travel-related services may type “cheapoair” into the search bar of their web browser, only to be misdirected to the Domain Name and the Respondent’s Website. Having arrived at the Respondent’s Website, Internet users would be confused as to whether they had reached an official website of the Complainant or whether it is affiliated, associated with, sponsors or endorses the Respondent’s Website’s goods and services.
Moreover, the Respondent is taking advantage of Internet users’ “initial interest confusion” for its own commercial advantage. Such activities are illegal because the Respondent is capitalizing wrongfully on the Complainant’s goodwill in its mark for the purpose of diverting Internet traffic.
The Respondent has no rights or legitimate interests in the Domain Name
The Respondent registered the Domain Name for the purpose of operating a competing website.
The Respondent did not commercialize the Domain Name at the time of registration or at any time thereafter for any bona fide or legitimate business and thus the Respondent is not using the Domain Name for any bona fide or otherwise fair purpose.
The CHEAPOAIR Marks belong exclusively to the Complainant. The Respondent is not a licensee of the Complainant and permission has not been given to the Respondent to use the CHEAPOAIR Marks or any domain name incorporating such marks.
There is no evidence that the Respondent is or has ever been commonly known by the Domain Name or that the Respondent has ever operated any bona fide or legitimate business using the Domain Name. Furthermore, the Respondent is not making a protected noncommercial or fair use of the Domain Name.
The Respondent uses the Domain Name to misdirect or “bait” Internet users seeking to utilize or learn more about the Complainant’s travel-related services, to the Respondent’s (competing) Website.
The Respondent’s activities do not give it the right to register and use the CHEAPOAIR Marks as a domain name without the consent of the Complainant.
The Respondent has registered and is using the Domain Name in Bad Faith.
The Respondent could not plausibly assert that, in registering the Domain Name, it was unaware of the Complainant’s rights in the CHEAPOAIR Marks, especially given that the Respondent fully incorporates the CHEAPOAIR Marks into the Domain Name.
The Respondent is also deemed to have constructive knowledge of the Complainant’s trademark rights by virtue of the Complainant’s federal registration of the CHEAPOAIR Marks.
Mr. Sidharth Mehra (who admits being behind the Domain Name) was formerly employed by the Complainant (and according to his LinkedIn profile, was also a former employee of two of the Complainant’s competitors).
Moreover, the misleading and deceptive travel-related services allegedly offered through the Respondent’s Website reflects “paradigmatic bad faith” and supports the inference that the Respondent registered the Domain Name with the bad faith intent to deceive consumers. It also supports the inference that the Respondent has intentionally used the Domain Name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s CHEAPOAIR Marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s own website and unauthorized, competing services.
Whilst use of a privacy service does not in and of itself constitute bad faith under the Policy, the manner in which such service is used may contribute to a finding of bad faith.
The Respondent’s use of the CHEAPOAIR Marks attracts Internet users to the Respondent’s Website by creating a likelihood of confusion with those marks. It is well-settled that the Respondent’s very method of infringement - using the CHEAPOAIR Marks to misdirect consumers to the Respondent’s Website, demonstrates bad faith use under the Policy. Furthermore, Paragraph 4(b)(iv) of the Policy provides that where circumstances exist showing a Respondent has intentionally attempted to “attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”, that will be evidence of the registration and use of a domain name in bad faith.
The Respondent’s use of the Domain Name also creates initial interest confusion, which attracts Internet users to the Respondent’s Website.
Moreover, featuring another’s trademarks and offering services identical to those offered by a complainant, and using a complainant’s marks to suggest a connection between the domain name and the complainant, is evidence of bad faith.
The Respondent’s actions will damage the CHEAPOAIR Marks and the Complainant’s assets. The Respondent must have expected that any use of the Domain Name would cause such harm to the Complainant. The Domain Name is so obviously indicative of the Complainant’s services that the Respondent’s use of the Domain Name would, at a minimum, inevitably lead to confusion of some sort to the severe detriment of the Complainant and its goodwill.
The Respondent did not reply to the Complainant’s contentions in these proceedings although, as mentioned earlier, Mr. Mehra did respond to the cease-and-desist letter sent by the Complainant. He said in his letter, inter alia, that the trademark CHEAPOAIR had not been used “on our site”, that “Cheapoairlines” is not a trademark of anyone and that the Domain Name has been legally bought “by us” so there is no question of it being transferred (but that if the Complainant is interested a price could be figured out). Mr. Mehra also confirms he is an ex-employee of the Complainant but left its employ over 4 years ago. Mr. Mehra ended his email by suggesting that he, as a competitor, was being harassed by the Complainant.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has rights in the CHEAPOAIR Marks.
The Domain Name includes the Complainant’s CHEAPOAIR mark (U.S. Reg. No. 3,576,166), its CHEAPOAIR.COM mark (U.S. Reg. No. 4,729,795) if one includes, for comparison purposes, the “.com” suffix as panels may do, and all but the prefix “www” of the WWW.CHEAPOAIR.COM mark (U.S. Reg. No.4,725,988).
However, the Domain Name does not exclusively contain those marks (or part thereof in the case of WWW.CHEAPOAIR.COM) and thus none of the CHEAPOAIR Marks are identical to the Domain Name. The issue of confusing similarity must therefore be considered. Under the UDRP, the test for confusing similarity typically involves a comparison, on a visual or aural level, between the trademark and the domain name. To satisfy the test, the trademark to which the domain name is said to be confusingly similar, would generally need to be recognizable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent confusing similarity. For the purposes of this Decision, the Panel needs only focus on one of the CHEAPOAIR Marks, namely the CHEAPOAIR mark (U.S. Reg. No. 3,576,166).
The well-known CHEAPOAIR mark is clearly recognizable within the Domain Name. It is the first and dominant part of the Domain Name. The only real issue therefore is whether the words that follow the CHEAPOAIR mark renders the Domain Name something other than confusingly similar (to the CHEAPOAIR mark). In the Panel’s view, they do not.
The words that follow the CHEAPOAIR mark are generic or descriptive, e.g., “line” and “fares”. Given the nature of the services with which the CHEAPOAIR mark is associated, i.e. Internet-based travel agency services offering airfares etc, the inclusion of what follows the CHEAPOAIR mark in the Domain Name may well enhance the risk of confusing similarity; the “air” part of the CHEAPOAIR mark is likely to be conflated with “line” so as to be read as “airline” and the inclusion of the word “fares” which follows is obviously intended to refer to ticket price. In other words, The Domain Name describes exactly the low-cost, travel-related services the Complainant provides using the CHEAPOAIR Marks. However, regardless of the inclusion of the words “line” and “fares”, the CHEAPOAIR mark is clearly recognizable within the Domain Name and the Panel finds that the Domain Name is confusingly similar to the CHEAPOAIR mark for the purposes of the Policy. Accordingly, paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding, particularly as Mr. Mehra did offer some response to the Complainant’s cease-and-desist letter.
Paragraph 4(c) of the Policy sets out a (non-exhaustive) list of circumstances which, if proved, will demonstrate that a respondent has rights to, or legitimate interests in a disputed domain name. Thus, even if a respondent has not been licensed by or affiliated with a complainant, it might still be able to demonstrate rights or legitimate interests by reference to Paragraph 4(c), or otherwise. For instance, a respondent can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers.
The Respondent is not known by the Domain Name. The Respondent’s Website (pages of which are exhibited to the Complaint) does not appear “noncommercial” in nature. Even if it was, paragraph 4(c) of the Policy contemplates “use” being without intent (for commercial gain) to misleadingly divert consumers. But it appears that that is what the Respondent may well have intended: the Domain Name incorporates the CHEAPOAIR mark in its entirety and for reasons already explained, inclusion of the words “line” and “fares” may well enhance the risk of confusion. In these circumstances, the Respondent would also likely fail in any attempt to demonstrate “fair use”.
A respondent can also show that before any notice of dispute, it was using or had made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Mr. Mehra is a former employee of the Complainant. He knows its business. He is now associated with a competing business. It is unlikely that any offering by the Respondent using a Domain Name confusingly similar to the CHEAPOAIR mark (with which he must have been familiar) could be regarded as bona fide, particularly given the nature of the website to which such Domain Name resolves, i.e., one that is competitive with the Complainant. Moreover, it is unlikely that the Respondent could maintain an argument that it was unaware, at the outset, that the Domain Name used in the way it has, would likely spark a dispute.
Finally, Mr. Mehra, in his email of April 21, 2017 (in response to the Complainant’s cease-and-desist letter), makes a number of points including that the CHEAPOAIR mark has not been used on his website, that “cheapoairlinefares” is not a trademark and that the “cheapoairlinefares.com” domain name has been legally purchased. These and the various other points raised by Mr. Mehra, whilst considered, do not provide any answer to the Complaint, which is to be dealt with under the Policy. Yet the Respondent has decided not to participate in these proceedings and put forward arguments by reference to the Policy. There being no evidence before this Panel suggesting that the Respondent does have rights or legitimate interests in the Domain Name, but rather evidence suggesting otherwise, the Panel is of the view that there would be nothing inappropriate in finding, as it does, that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a (non-exhaustive) list of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
Thus, for instance, (as described in Paragraph 4(b)(iv) of the Policy), where it can be demonstrated that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it, there may well be a finding of bad faith registration and use. The Respondent deliberately chose a confusingly similar domain name incorporating a well-known mark of which he was aware (by virtue of having been an employee of the Complainant or otherwise), to run a competing business. In the Panel’s view, there appears to have been an intention to divert Internet users by creating a likelihood of confusion.
If a UDRP proceeding is commenced in circumstances where a well-known mark of which a respondent must have been aware has been used in a confusingly similar domain name, it is incumbent on the respondent to come forward with an explanation if it is to avoid, or attempt to avoid, the risk of an adverse finding. Indeed, a respondent’s non-participation is a factor that can be taken into account in considering bad faith under the Policy.
In all the circumstances, the Panel finds that, for the purposes of the Policy, there is evidence of registration and use of the Domain Name 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 disputed domain name <cheapoairlinefares.com> be transferred to the Complainant.
Date: July 5, 2017