WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Travelscape, LLC v. WhoisGuard, Inc. / Waseem Hassan

Case No. D2018-2088

1. The Parties

The Complainant is Travelscape, LLC of Bellevue, Washington, United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.

The Respondent is WhoisGuard, Inc. of Panama, Panama / Waseem Hassan of Rawalpindi, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <travelocitycouponcodes.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2018. On September 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 2018, 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 19, 2018, 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 September 19, 2018.

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 September 26, 2018. In compliance with the Rules, paragraph 5, the due date for Response was October 16, 2018.

On October 18, 2018, the Center sent an email to the Parties, noting that, presumably due to an administrative oversight, the Center’s Written Notice was not sent to the Respondent’s WhoIs-listed fax number and granting the Respondent a five day period to indicate whether it wished to participate in the proceedings. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 24, 2018.

The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on November 2, 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 based its Complaint on its ownership and use of the trademark TRAVELOCITY.

The Complainant was founded in 1996, as a leading provider of consumer-direct travel services for the leisure and business traveler.

The Complainant markets and distributes travel-related products and services directly to individuals using its mark TRAVELOCITY and its various brand websites and contact centers.

The Complainant’s main website, “www.travelocity.com”, was launched in 1996. Through the site, travelers can take control of their bookings and reservations and research information about potential destinations.

The Complainant proved its trademark rights of the TRAVELOCITY marks in the European Union, United States and Canada.

The Respondent registered the disputed domain name on December 2, 2017, a long time after that TRAVELOCITY mark and “www.travelocity.com” website became well known in the United States and other countries.

According to the Complainant, the Respondent is using the disputed domain name for a website that includes the name “Travelocity Coupon Codes” which purports to provide articles on various travel related topics along with alleged Complainant’s coupons and promotional codes.

The Respondent was formally notified of the Complaint and did not submit any response.

5. Parties’ Contentions

A. Complainant

The Complainant has asserted that the three elements required under paragraph 4(a) of the Policy for a transfer of the disputed domain name are present in this case.

The Complainant argues that its marks have acquired a high degree of public recognition and distinctiveness as a symbol of the source of high-quality services and products offered.

The Complainant argued and proved that at the top of every page of the website of the disputed domain name a copy of the TRAVELOCITY & Stars Design appears with the addition of the words “Coupon Codes”.

The Complainant asserts that the use of the disputed domain name by the Respondent can create confusion and risk of association in which the Internet users can believe that the disputed domain name website is an “official website” of the Complainant, which is not.

On January 9, 2018, the Complainant sent a letter to the Respondent that explains to the unauthorized registration and use of the disputed domain name and the Respondent did not answer.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established that the disputed domain name is identical or confusingly similar to its well-known TRAVELOCITY mark. The disputed domain name fully incorporates the TRAVELOCITY mark exactly and in its entirety with the addition of the descriptive phrase “coupon codes”.

The Complainant proved its trademark rights of TRAVELOCITY in the United States, Canada and the European Union. Being the owner of a registered trademark satisfies the threshold requirement of having trademark rights, see Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano, WIPO Case No. D2003-0661; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503.

As mentioned before, there is no doubt that the Complainant’s TRAVELOCITY mark is included in the disputed domain name and the addition of the words “coupon codes” does not prevent a finding of confusing similarity. Other UDRP panels have had the same opinion. See PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696 (“incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark”); Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095 (“if a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words.”)

For these reasons, the Panel concludes that the disputed domain name is confusingly similar to the TRAVELOCITY mark, a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests in the disputed domain name. The consensus view among UDRP panels is that where a complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In this case, the Respondent did not answer, therefore did not rebut the Complainant’s prima facie case regarding the lack of rights or legitimate interests.

The Complainant declared that it is not affiliated or associated with the Respondent in any way.

The Complainant asserted that the Respondent is not authorized or licensed to register, use or include its trademark in the disputed domain name.

The Complainant also asserted that the disputed domain name is not, nor could it be contended to be, a legitimate name or nickname of the Respondent. As has been proved by the Complainant, the Respondent is not known by the disputed domain name and mark TRAVELOCITY or any variation thereof.

The Complainant argued that the Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the disputed domain name. The use of the disputed domain name by the Respondent, which includes entirely the Complainant’s trademark TRAVELOCITY without license or authorization from the Complainant, is to profit from the TRAVELOCITY Marks.

There is no doubt that the Respondent has pursued to profit by using the disputed domain name to promote its own venture based on the goodwill associated with Complainant’s well-known TRAVELOCITY Marks. The disputed domain name, which is likely to be confused as being linked to the Complainant, directs viewers to a website that prominently features the TRAVELOCITY and TRAVELOCITY & Stars Design marks from which the Respondent obtains revenue via Travelocity-related advertisements, gathers personal information of consumers and provides references to travel agencies unrelated to the Complainant.

The Respondent is neither an authorized affiliate of the Complainant, nor the Complainant’s marks licensee and therefore has no right to exploit the Complainant’s well-known TRAVELOCITY mark for its own profit or for parties unrelated to the Complainant. The Respondent’s use of the disputed domain name to promote its business is not a legitimate interests or good faith use. This opinion has already been recognized by other UDRP panels, see National Collegiate Athletic Association and March Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center Entertainment, WIPO Case No. D2000-0700; see also General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007-0645 (unauthorized use of a domain name that includes the identical trademark to create initial interest confusion does not constitute a legitimate interest).

In view of the extensive use of the TRAVELOCITY marks for years by the Complainant, and the fact that the Respondent has no rights in the TRAVELOCITY marks, that reasonably leads to believe that the Respondent has registered and is using the disputed domain name without a legitimate noncommercial or fair use purpose. To the contrary, the website displayed in the disputed domain name leads to believe that the main intention of the Respondent is to profit from the traffic generated through the disputed domain name. Such use of the disputed domain name does not constitute a legitimate or bona fide offering of goods or services. Also, the fact that the Respondent has not argued or presented evidence to establish its rights or legitimate interests and consequently has not rebutted the Complainant’s prima facie case, in this case is enough to find that the Respondent has no rights or legitimate interests in the disputed domain name. This opinion is already recognized, since the early years of the UDRP by other panels. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“use which intentionally trades on the fame of another cannot constitute a “bona fide” offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy”).

For all the above-mentioned reasons, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Therefore, the Panel finds that the second element of the Policy is also fulfilled.

C. Registered and Used in Bad Faith.

The Complainant asserted that the Respondent has registered and is using the disputed domain name in bad faith for commercial gain and to obtain benefit from the goodwill and notoriety associated with the Complainant’s TRAVELOCITY marks.

In this case there is no doubt that the Respondent registered and is using the disputed domain name in bad faith by taking advantage of the notoriety of the TRAVELOCITY marks to profit from the web traffic that flows through the disputed domain name. Other UDRP panels have the same opinion, see Hilton Group plc v. Forum LLC, WIPO Case No. D2005-0244 (use of domain name to attract users for commercial gain is evidence of bad faith); PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002-0562, (“blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith”).

The Respondent’s bad faith is also exhibited by the fact that it registered the disputed domain name years after the Complainant’s TRAVELOCITY mark became well known, and has used it in order to profit by monetizing web traffic that flows through the website at the disputed domain name through Travelocity-related advertisements, by obtaining email addresses and other personal information from consumers visiting the website, and by redirecting consumers to travel agencies unrelated to the Complainant and its TRAVELOCITY travel service. Clearly the Respondent was, and is, fully aware of the Complainant’s rights of its TRAVELOCITY marks when the Respondent registered the disputed domain name and is using in such way for its own profit scheme, because the website exhibit not only the trademark TRAVELOCITY but also the TRAVELOCITY & Stars Design logo and the numerous references to Travelocity travel services, travelers, consumers and Internet users can be easily confused by the website. In this case, there is no doubt that the Respondent is using, without authorization, the goodwill and reputation built by the Complainant in its TRAVELOCITY marks for the Respondent’s own profit, that is also a bad faith use of the disputed domain name. Other UDRP panels have the same opinion, see Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601 (holding bad faith registration was shown by the registration of <volvopolska.com> where complainant’s reputation was likely to attract Internet users to registrant’s website for commercial gain); see also Dr. Ing. h.c. F. Porsche AG v. ANC Online Avrasya Bilisim Tekn San ve Dis Tic A S, WIPO Case No. D2006-0912 (where respondent expressly linked himself to the business and trademark of complainant and intentionally attracted consumers to his site by creating a “clear link” with complainant’s business, it was “inconceivable” to the Panel that respondent would not have known consumers were likely to be confused as to the source, sponsorship or other official link with complainant, especially given the full use of the trademark (PORSCHE) in the disputed domain name; “Add to that the fact that [respondent] did not seek the authorization or license from the Complainant to register and use the disputed domain name, and one can be convinced, on a balance of probabilities, that the circumstance set out in paragraph 4(b)(iv) of the Policy is firmly established in this case.”).

The Respondent’s bad faith was proved by the fact that it is using the Complainant’s TRAVELOCITY mark with the main intention to create confusion of the travelers and consumers, with a profit scheme that is unrelated to and unauthorized by the Complainant. Such actions by the Respondent are not a use in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, but a pure act of bad faith. Other UDRP panels sustain the same opinion. See, e.g., Hilton Group plc v. Forum LLC, supra (use of domain name to attract users for commercial gain is evidence of bad faith); National Collegiate Athletic Association and March Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center Entertainment, supra (holding that even if respondent’s offerings are limited to genuine goods, the domain names are not analogous to ordinary “billboards” because the domain names are addresses, and each domain name “implies an authorized relationship with the owner of the mark included in the domain name.”); HBP, Inc. v. Front and Center Tickets, Inc., WIPO Case No. D2002-0802 (“Had Respondent been attempting to act in good faith within the scope of the Policy, it would not have used Complainant’s marks as the prominent headings of its web pages.”).

Consequently, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy, therefore the Complainant has complied with Policy paragraph 4(a)(iii).

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 <travelocitycouponcodes.com> be transferred to the Complainant.

Ada L. Redondo Aguilera
Sole Panelist
Date: November 14, 2018