WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fareportal Inc. v. Yosvany Padilla

Case No. D2018-1406

1. The Parties

Complainant is Fareportal Inc. of New York, New York, United States of America (“US”), represented by Cowan, DeBaets, Abrahams & Sheppard, LLP, US.

Respondent is Yosvany Padilla of Hialeah, Florida, US.

2. The Domain Name and Registrar

The disputed domain name <onetravelcoa.com> (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 June 25, 2018. On June 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 26, 2018, 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 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 Respondent of the Complaint, and the proceedings commenced on July 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 25, 2018.

The Center appointed Jordan S. Weinstein as the sole panelist in this matter on August 3, 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.

On August 16, 2018, the Panel issued the following Administrative Panel Procedural Order:

“Complainant asserts in the Complaint, at Section VI.A., page 6, that it has exclusive rights in the ONETRAVEL trademark, and (at paragraph 16, p. 7 of the Complaint) that the trademark is registered with the United States Patent and Trademark Office (“USPTO”) with Registration No. 4,545,969. However, the USPTO records show that the owner of said trademark is WK Travel, Inc. of Las Vegas, Nevada, US. The Panel notes that a Substitution of Counsel document has been lodged for this registration on September 12, 2016, signed by the SVP and General Counsel of Complainant Fareportal, Inc.

In view of the circumstances, the Panel affords Complainant five (5) business days, i.e., until August 23, 2018, from the date of this Administrative Panel Order to “make further submissions or file any additional evidence that it sees fit evidencing the relationship between itself and WK Travel, Inc, such that it has rights in the ONETRAVEL Mark”. See Fareportal Inc. v. Rudi Seiberlich, WIPO Case No. D2015-1957.

Respondent is afforded five (5) business days, i.e., until August 30, 2018, to reply thereto.

All communications from the parties are to be exclusively with the Center.

The Panel will consider responses relating to the aforementioned topic only; any comments not relevant thereto will be disregarded.

The due date for the decision is extended to September 14, 2018.”

On August 22, 2018, Complainant filed its supplemental submission. Respondent did not file any submission.

4. Factual Background

Complainant owns several Registrations in the US for the asserted trademarks; namely Registration number 3,576,166, issued February 17, 2009, for the trademark CHEAPOAIR; Registration number 4,729,795, issued May 5, 2015, for the trademark CHEAPOAIR.COM; and Registration number 4,725,988, issued April 28, 2015, for the trademark WWW.CHEAPOAIR.COM. Complainant’s wholly-owned subsidiary, WK Travel, Inc., owns United States Registration number 4,545,969, issued June 10, 2014, for the trademark ONETRAVEL.

The Disputed Domain Name was registered on October 23, 2017.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it is a technology company that develops software used to power travel-related websites, including the Internet-based travel agencies “www.onetravel.com” and “www.cheapoair.com”. Complainant asserts that it offers high-value, low-cost travel-related services including airfare, temporary lodging, car rentals, and vacation packages.

Complainant asserts that the owner of the asserted ONETRAVEL trademark, WK Travel, Inc., is Complainant’s wholly-owned subsidiary, and that pursuant to Complainant’s acquisition of WK Travel, Inc., Complainant has rights in, and controls, WK Travel’s use of WK Travel’s trademark ONETRAVEL.

Complainant asserts that it has provided its travel-related services to the public for nearly the past decade using the trademarks ONETRAVEL and CHEAPOAIR. Complainant asserts that it has been using the ONETRAVEL mark in US commerce since December 31, 1998, and the CHEAPOAIR marks in commerce since July 1, 2005, both well prior to the registration of the Disputed Domain Name in 2017.

Complainant asserts that Respondent has maintained a webpage linked to the Disputed Domain Name for the purpose of redirecting Internet users to a competing travel-booking website, “www.jetradar.com”. Complainant asserts that Respondent did not commercialize the Disputed Domain Name for any bona fide or legitimate business, and that Respondent is not affiliated with Complainant, nor has Complainant ever authorized, licensed or otherwise permitted Respondent to use Complainant’s marks in any way.

Complainant asserts that the Disputed Domain Name is confusingly similar to Complainant’s ONETRAVEL mark in that it incorporates the entirety of that mark in the domain name, as well as “coa”, an abbreviation for the CHEAPOAIR mark. Complainant asserts that adding the commonly used abbreviation of CHEAPOAIR – “coa” – to the ONETRAVEL mark does not preclude a finding of confusing similarity.

Complainant asserts that Respondent is taking advantage of Internet users’ “initial interest confusion” for his own commercial advantage, capitalizing wrongfully on Complainant’s goodwill in its marks for the purpose of diverting Internet traffic to Respondent’s website.

Complainant asserts that Respondent has no rights or legitimate interests in the Disputed Domain Name and is not using the Disputed Domain Name for any bona fide or otherwise fair purpose. Complainant asserts that Respondent is not a licensee of Complainant, and Respondent has not obtained permission, either express or implied, from Complainant to use its marks or any domain name incorporating them. Complainant asserts there is no evidence that Respondent is or has ever been commonly known by the Disputed Domain Name, or that Respondent has ever operated any bona fide or legitimate business under the Disputed Domain Name, and Respondent is not making a protected, noncommercial or fair use of the Disputed Domain Name. Rather, by incorporating Complainant’s registered trademarks into his domain name, Complainant asserts that Respondent is using the Disputed Domain Name to misdirect Internet users seeking Complainant’s travel-related services to his own website where, Complainant asserts, Respondent earns pay-per-click revenue in connection with the sponsored, travel-related links appearing on Respondent’s website. Complainant asserts that such use of the Disputed Domain Name does not confer any legitimate right or interest in the Disputed Domain Name arising from a bona fide offering of goods or services.

Complainant asserts that Respondent has registered the Disputed Domain Name in bad faith because, having fully incorporated Complainant’s ONETRAVEL mark and an acronym for Complainant’s CHEAPOAIR mark into the Disputed Domain Name, Respondent could not possibly assert that it was unaware of Complainant’s rights in its marks. Complainant asserts that Respondent has intentionally used the Disputed Domain Name to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of Respondent’s own website and assertedly-counterfeit services. In addition to incorporating the entirety of Complainant’s ONETRAVEL mark into the Disputed Domain Name, as well as the abbreviation of the CHEAPOAIR marks, Respondent’s website redirects Internet users to the competing travel-booking website, “www.jetradar.com”, giving Internet users the false impression that Respondent’s website is somehow affiliated with Complainant or that Complainant approves of or sponsors the services accessed through “www.jetradar.com”, which is not the case. Complainant asserts that Respondent’s website even uses the same color scheme as Complainant’s “onetravel.com” website as well as a phone number to call like Complainant’s website. However, Complainant asserts that the phone number on Respondent’s website is a fake number, as it is not an authentic phone number.

Complainant asserts that its counsel emailed Respondent on April 4, 2018, demanding that Respondent cease and desist his unauthorized and infringing conduct, but no response was received. Complainant asserts that a failure to respond to a cease and desist letter may be considered a factor in finding bad faith registration and use of a domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Applicable Policy Provisions

Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:

(i) Circumstances indicating that [respondent has] registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain Name; or

(ii) [respondent has] registered the Disputed Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct; or

(iii) [respondent has] registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.

These circumstances are non-exhaustive, and a UDRP panel may consider other circumstances as constituting registration and use of a domain name in bad faith.

According to paragraph 4(c) of the Policy, a respondent may demonstrate rights in or legitimate interests to a domain name by any of the following, without limitation:

“(i) Before any notice to you of the dispute, your use of, or 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; or

(ii) you, as an individual, business, or other organization have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.”

Where a respondent is in default, a UDRP panel may draw such inferences as it considers appropriate. Rules, paragraph 14(b).

B. Identical or Confusingly Similar

The Panel finds that the Disputed Domain Name <onetravelcoa.com> is confusingly similar to Complainant’s ONETRAVEL registered trademark. The Panel notes that the Disputed Domain Name reproduces the ONETRAVEL trademark in its entirety with the letter string “coa”. The letter string “coa” does not prevent a finding of confusing similarity between the Complainant’s ONETRAVEL trademark and the Disputed Domain Name (see the analysis under the third element regarding the letter string “coa”).

The Panel finds that Complainant has provided sufficient evidence to establish paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

Complainant has made a prima facie case under paragraph 4(a)(ii) of the Policy by showing that Respondent is not a licensee of Complainant, and that Respondent has not obtained permission from Complainant to use its marks or any domain name incorporating them, and that there is no evidence that Respondent is or has ever been commonly known by the Disputed Domain Name, or that Respondent has ever operated any bona fide or legitimate business under the Disputed Domain Name, or that Respondent is making a protected, noncommercial or fair use of the Disputed Domain Name.

Although the website linked to the Disputed Domain Name itself links to an apparently legitimate
travel-related website, use of the Disputed Domain Name to generate pay-per-click revenue through that linkage, as Complainant asserts and Respondent has not denied, does not confer any legitimate right or interest in the Disputed Domain Name. See Zions Bancorporation v. James Murphy, WIPO Case No. D2014-1722.

Once Complainant makes its prima facie case of no rights or legitimate interests, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. Respondent failed to come forward with allegations or evidence demonstrating either rights or legitimate interests in the Disputed Domain Name. As Respondent failed to file a Response, it may be presumed that Respondent has no rights or legitimate interests in the Disputed Domain Name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221. As a result, Complainant has established paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The Panel finds that Complainant has provided sufficient evidence to satisfy paragraph 4(b)(iv) of the Policy, namely that by using the Disputed Domain Name, Respondent intentionally intended to attract for commercial gain Internet users to his website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website.

Respondent’s website linked to the Disputed Domain Name promotes the sale of “an exclusive range of tour packages”; appearing to be the same type of travel booking services rendered by Complainant under its marks. Upon entering travel dates and destinations into Respondent’s website, an internet user is passed off to the travel booking site “www.jetradar.com”, from whom Respondent presumably receives “click-through” revenue for redirecting consumers interested in travel services. Internet users are likely to be confused into believing Respondent’s website at “www.onetravelcoa.com” is affiliated with Complainant because the Disputed Domain Name combines the entirety of one of Complainant’s travel booking site trademarks with an acronym for another of its travel booking site trademarks. Although Complainant has not submitted evidence that it uses “coa” as an acronym for its registered mark CHEAPOAIR, Respondent has failed to provide any alternative explanation for the presence of this letter string in his domain name. Based upon this, and drawing an inference in Complainant’s favor pursuant to the Rules, paragraph 14(b), the Panel finds that adding the letter string “coa” to Complainant’s trademark increases, rather than diminishes, the likelihood of confusion as Internet users will receive the impression that Respondent’s website is a combined website for Complainant’s “onetravel” site and its “cheapoair” site. See Compagnie Gervais Danone v. PrivacyProtect.org/Private Registration, WIPO Case No. D2009-0809 (combination of complainant’s trademarks together in the Disputed Domain Name “only heightens the potential for confusion”). These facts evidence the registration and use of the Disputed Domain Name in bad faith as outlined in paragraph 4(b)(iv) of the Policy.

7. Decision

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 <onetravelcoa.com> be transferred to Complainant.

Jordan S. Weinstein
Sole Panelist
Date: September 13, 2018