WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Original Senses Tourism and Entertainment Services Private Company v. Original Senses
Case No. D2018-0730
1. The Parties
The Complainant is Original Senses Tourism and Entertainment Services Private Company of Athens, Greece, represented by Vasileios Ikonomidis, Greece.
The Respondent is Original Senses of Ahmedabad, India, represented by Represented by kushal kothari, India.
2. The Domain Name and Registrar
The disputed domain name <originalsenses.net> (the “Disputed 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 April 2, 2018. On April 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 4, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2018. The Response was filed with the Center on May 1, 2018.
The Center appointed Nick J. Gardner as the sole panelist in this matter on May 16, 2018. 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 Greek company. It provides travel and tourist services. It has been in business since 2008. It registered the domain names originalsenses.gr in 2008 and original senses.com in 2011. Web traffic directed at the latter domain is redirected to its website at “www.originalsenses.gr”. It has several trademark registrations for the words “original senses” (for example its earliest trademark which is Greek registration no D197437 applied for on April 11, 2008 and registered on November 2009in classes 39, 41 and 43). No information has been provided to the Panel as to the size of the Complainant’s business in either financial terms or as to numbers of customers. Whilst a section of its website is directed at holidays in Greece it quite clearly offers holidays in many worldwide destinations including in India. Its website is an impressive and professionally presented site which suggests it has an extensive business, although whether that is in fact the case cannot be determined on the material before the Panel. Its website appears to show it has a staff of at least 20 people.
It appears to the Panel that the Respondent “Original Senses” is a trading name for its principal who is a Mr. D. Badheka. He is a travel agent who was previously in business in India as a partner in a business called “Hallmark Elite”. He seems to have adopted the name “Original Senses” for his business at some stage in 2016. He is the registered proprietor of the Indian trademark described below. References to the “Respondent” in this decision are to him. The Respondent registered the Disputed Domain Name on November 5, 2016. The Disputed Domain Name is linked to a website promoting the Respondent’s travel agency business. The Respondent’s website offers bespoke holidays in many destinations around the world. No evidence has been provided as to the size of the business. The Respondent applied for two Indian trademarks in respect of the words Original Senses. The most relevant is for the words “Original Senses” on their own in class 39. That application was filed on February 10, 2017 and was issued as registration No 3479207 on September 11, 2017. It is referred to below as the “Indian trademark”.
On November 30, 2017 the Complainant sent a “cease and desist” letter to the Respondent. The Respondent replied on December 9, 2017 asserting that he was entitled to trade as “Original Senses”. A further letter from the Complainant was sent but matters did not advance.
The Complainant has field some evidence which shows that at least one of its trade customers identified the Respondent as trading as “Original Senses” and alerted the Complainant to this fact. Beyond this there is no other evidence of customer confusion.
5. Parties’ Contentions
The Complainant’s case is in summary as follows.
a) The Disputed Domain Name is identical to its “Original Senses” trademark.
b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
c) The Respondent uses the Disputed Domain Name in bad faith as it is being used to confuse consumers into believing the Respondent’s business is that of the Complainant or is authorised or approved by the Complainant. The Complainant says that its reputation is worldwide and the Respondent is seeking to attract its customers.
The Respondent’s has filed a lengthy Response that is not entirely easy to understand. The main points he makes are as follows.
The Respondent denies that the Complainant has any rights in India and denies that its trademark is well known. He says it is a Greek travel business and that is why web traffic to “originalsenses.com” redirects to “originalsenses.gr”. He also says the Complainant’s business is directed at other travel agents and corporate clients while his business is aimed at consumers. He says the Complainant has no significant business in India.
The Respondent says that he has established a legitimate interest in the Disputed Domain Name by virtue of having established a bona fide business before receiving any notice of the present dispute. He relies on his Indian trademark as entitling him to operate under the name Original Senses.
The Respondent denies acting in bad faith.
The Respondent accuses the Complainant of acting in bad faith and says it only filed various trademark applications around the world after it became aware of the Respondent and his business.
The Respondent also denies that his logo is anything like the Complainant’s (although this does not appear to be an allegation made by the Complainant).
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
(i) the Disputed Domain Name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant clearly has registered trademarks in respect of the words “Original Senses”.
The Panel considers the Disputed Domain Name to be identical to this trademark given the omission of the space between the words is a necessary technical requirement. It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.net”, does not generally affect the domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is identical to the Complainant’s Original Senses trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
The Respondent says that he has rights and legitimate interest in the Disputed Domain Name as the following provision of the Policy applies: “Before any notice to the Respondent of the dispute, the Respondent was using the Disputed Domain Name in connection with a bona fide offering of services (paragraph 4(c)(i) of the Policy)”.
The Panel has not found resolving this issue to be straightforward. There is no doubt that the Respondent has been operating his travel business under the name Original Senses before receiving notice of the present complaint. Clearly then paragraph 4(c)(i) is potentially applicable. The only issue then is as to the meaning of “bona fide”. It seems to the Panel that paragraph 4(c)(i) cannot simply apply if a business exists which has in bad faith deliberately adopted another person’s trademark as its name, otherwise the Policy would be inapplicable to all cases in which a respondent was operating any business, which is clearly not its intention. The words “bona fide” must encompass the Respondent’s knowledge and motives in choosing the name in question – if done deliberately to trade off, or take advantage of the Complainant’s name or reputation, then the “bona fide” requirement is not met.
Is this such a case? The words “Original and Senses” are two ordinary English words. They are not directly descriptive of a travel and tourist related business. There is no evidence before the Panel of anyone else, anywhere in the world using the words “Original Senses” for a travel related business (or indeed for any other type of business). The Respondent is apparently an experienced travel agent. His website says he “has an experience of more than 15 years in Travel and Tourism industry and has successfully handled 11000 + travelers”. The Panel does not know whether or not he knew of the Complainant when he decided to name (or rename – his website says that his business was previously known as “Hallmark Elite”) his business. Even if he did not have any prior knowledge the Panel would have thought it very likely indeed that he would have carried out at least some basic searches to see whether anyone else used the name “original senses” and what versions of the “original senses” domain name were available before registering the Disputed Domain Name. Those searches would inevitably have alerted him to the Complainant and its similar business. The Panel considers these facts are in any event at the very least sufficient to raise an inference that the Respondent had such knowledge. Strikingly the Respondent has done nothing to rebut this inference. The Response is silent as to how or why the Respondent chose the Disputed Domain Name. It also says almost nothing as to what knowledge he had of the Complainant and its business - all that is said is that “the claim made by the Complainant in its Complaint that the said trademark had been used internationally is false as no one not even Respondent had any knowledge about the said before the said dispute came to light”. This sentence does not make sense but does not seem to the Panel to be a clear denial by the Respondent of knowledge of the Complainant and its business. The Respondent who is legally represented could have provided a statement explaining all of this properly but has not done so. In those circumstances the Panel concludes that on the balance of probabilities the Complainant has established that the Respondent selected the Disputed Domain Name when he knew of the Complainant and its identically named business.
It seems to the Panel that once such knowledge is established the Respondent must also have known that his identically named business operating in a similar field would likely cause confusion. It seems to the Panel when there are only two “Original Senses” travel businesses in the world and a newcomer adopts exactly the same name as the established business then confusion is inevitable, particularly when they each operate via the Internet and target a world wide audience offering up-market holidays to similar or identical world wide destinations. It seems to the Panel that the Respondent has adopted a course which seems destined to produce confusion, given the similarity in the two businesses. This is illustrated by for example the description on each of the relevant websites describing the business in question. The Complainant’s website says:
“Created in 2007, Original Senses continues to set new standards in luxury travel. Our mission is to help you see the world differently. We are not fond of the mundane. We have always set out to be distinctive. We believe the biggest attraction in every trip lies in the unknown. On every journey, we are drawn to what makes us different, because this is what brings us together – sharing new experiences with people in places beyond our familiar comfort zone. At Original Senses, we travel with an open mind and heart, approaching the unknown passionately and without preconceptions. We may all experience the same things, but we each interpret them differently. The world is vast, extraordinary, wise, mysterious and rich in culture, colour, sound and flavor. See it with us, interpret it with all your senses.”
Whilst the Respondent’s website says:
“We understand that travel should be amazing, exciting, intriguing, rejuvenating and memorable. Our aim is to meet and exceed expectation, creating unique and memorable experiences at each stage of travel. Our goal is to provide authentic travel itineraries based on guests’ unique preferences, offering a personalized approach to travel planning not found at traditional travel agencies. From four and five star getaways across the globe — we’re here to build a trip for you, by you. Take advantage of our team’s experience and relationships all over the world with route planning, Platinum and Centurion-level benefits (including upgrades and hotel credits) and genuine hospitality from our Care and Planning team. We provide a holiday experience that covers from concept and planning through arrival, ground handling and tour management.”
In short both parties offer bespoke travel to worldwide destinations, typically in up-market or exotic locations– there is substantial overlap in the destinations they feature on their website – to pick a few examples both parties feature the Maldives, Scotland, Mexico and Cambodia amongst the many destinations they offer. As far as the Panel can see each party aims their business at a worldwide market – both websites are in English and there is nothing to suggest the Complainant’s business is focused on Greek customers, or the Respondent’s on Indian customers. The Panel is not persuaded by the Respondent’s argument that the Complainant’s business is targeted entirely at travel agents whilst the Respondent’s is aimed at retail customers. The limited evidence available to the Panel in the form of the respective websites shows two very similar businesses directed at a similar audience so far as the Panel can determine.
The Panel considers that these circumstances are sufficient to allow it to reach a conclusion that the Respondent lacked bona fides. However does the fact that the Respondent has obtained a registered trademark in India alter this analysis? The Respondent says that this itself establishes a right or legitimate interest, and that a finding to the contrary by the Panel would in effect be to deprive the Respondent of the benefit of his trademark. In this regard see BECA Inc. v. CanAm Health Source, Inc., WIPO Case No. D2004-0298 (and the earlier cases it cites) which contains a useful and detailed analysis of the relevant principles. In particular the Panel stated:
“7.26 From these decisions, it is perhaps possible to draw the following guidance:
(i) When considering the question of ‘rights or legitimate interests’ under paragraph 4(a)(ii), a panel can, in an appropriate case, question the legitimacy of a trademark relied upon by a respondent. The mere fact that a trademark has been applied for or obtained by a respondent is not an absolute bar to a complainant succeeding under the UDRP. In a case where, in the opinion of the panel, a trademark has not been sought or obtained for a legitimate or bona fide purpose, but merely in order to bolster a domain name registration, the trademark can be disregarded.
(ii) The chronology of events is an important factor in determining whether the application is bona fide or merely a way of bolstering the respondent’s domain name registration. A trademark application made subsequent to notice of a dispute or the domain name registration may indicate a lack of legitimate interest.
(iii) The knowledge and intention of the respondent at the time the disputed domain name is registered is highly relevant, but knowledge of the complainant’s rights does not, in itself, preclude the respondent from having a right or legitimate interest in the domain name.
(iv) the connection, or lack of it, between the respondent and the jurisdiction in which it is seeking a trademark registration may indicate whether the trademark application or registration is ‘legitimate.’
7.27 This Panel would add one further observation. Trademark rights are territorial in nature. National trademark laws often permit a party to obtain registered trademark rights in that jurisdiction even where it is clear that the party has deliberately chosen that trademark having seen the use of that name in another jurisdiction. This is particularly so where the name in question is quasi generic in nature. These factors may also be relevant to the question of whether an application for a trademark registration should be treated as being sought merely to bolster a domain name registration.
7.28 Neither in Euro 2000 or Madonna was the relevant trademark applied for prior to the date of the domain name, but if a panel were convinced that a trademark was sought merely to bolster a subsequent domain name registration this Panel sees no reason why this should make any difference. Of course, it may be difficult for the complainant to prove that this was the purpose of the registration, but this is an issue of evidence rather than principle.
7.29 However, it is one thing to disregard a trademark registration when that registration is a device to bolster a registration. It is quite another to disregard a trademark registration where it is claimed that this registration is for some other reason not bona fide and/or it is claimed that the registration is invalid. To do so would involve making a decision on matters that impinge on the field of competence of national courts or trademark registries.”
In the present case given:
(a) the Panel’s finding as to the Respondent’s knowledge of the Complainant and its business (see above);
(b) the precisely identical name being chosen by the Respondent;
(c) the lack of anyone else anywhere in the world using the same name;
(d) the similarity of the two businesses;
(e) the absence of any evidence from the Respondent himself as to how or why he originally chose the Disputed Domain Name, and what knowledge he had at that time as to the Complainant and its business; and
(f) the timing – the Disputed Domain name was registered on November 5, 2016 and the Respondent’s trademark application was filed on February 10, 2017.
The Panel concludes that on the balance of probabilities the Indian trademark registration was likely obtained to bolster the registration of the Disputed Domain Name. It does not therefore serve to confer a legitimate interest.
The Panel therefore concludes that on balance, so far as the Policy is concerned, the Complainant has established that the Respondent lacked a legitimate interest in the Disputed Domain Name.
C. Registered and Used in Bad Faith
For the same reasons as discussed above in relation to bona fides the Panel concludes that the Respondent must have known of the Complainant and must have realised confusion would result when he adopted an identical name for an identical or very similar business carried out over the Internet and directed at an international market. The overall impression created by the Respondent’s website suggests that the Disputed Domain Name was registered by the Respondent in order to establish an online business which was likely to confuse Internet users into believing that the Respondent’s website was operated by, or with the authority of, the Complainant. Strikingly it would have been straightforward for the Respondent to take steps to dispel any confusion (for example by the use of an appropriate disclaimer) had he wished to avoid confusion arising – no such steps were taken. The Panel concludes on the balance of probabilities, having regard to the lack of any real explanation from the Respondent, that the Respondent’s actions are within paragraph 4(b)(iv) of the Policy: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
As a result, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
7. Reverse Domain Name Hijacking
Various aspects of the Response amount to the Respondent criticizing the Complainant for having brought this Complaint and suggest it has behaved improperly. That seems to the Panel to amount to a request for a finding of Reverse Domain Name Hijacking. The Panel rejects that request.
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 <originalsenses.net> be transferred to the Complainant.
Nick J. Gardner
Date: June 11, 2018