WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TUI AG v. WhoisGuard Protected, WhoisGuard, Inc. / Anatoly Chernov, AVS Group L
Case No. D2019-0446
1. The Parties
1.1 The Complainant is TUI AG of Hannover, Germany, internally represented.
1.2 The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama City, Panama /Anatoly Chernov, AVS Group L of Belize City, Belize.
2. The Domain Name and Registrar
2.1 The disputed domain name <porntui.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2019. On February 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 26, 2019, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the Domain Name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 27, 2019 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 February 28, 2019.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2019.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on April 10, 2019. 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
4.1 The Complainant is a company incorporated in Germany and part of the TUI group of companies. It operates, and is the successor to a travel business that dates back to 1924 and which since 1999 has operated under the TUI name. It is one of the world’s largest integrated travel group companies, with approximately 70,000 employees providing services to over 20 million customers. The annual turnover of the TUI group in 2017/18 was EUR19.5 billion.
4.2 The Complainant is the owner of numerous trade marks around the world that incorporate or comprise the letters “Tui”. They include:
(i) International trade mark registration 780562, dated November 7, 2001, for the word mark TUI, in classes 9, 12, 16, 35, 36, 37, 38, 39, 41 and 42, which has proceeded to registration in over 20 territories; and
(ii) International trade mark registration 1448315, dated August 10, 2017 in classes 3, 5, 6, 8 to 12, 14, 16, 18, 20 to 22, 24 to 30, 32, 33, and 35 to 45, which has proceeded to registration in a large number of territories and which takes the following form:
4.3 The Complainant also operates a website to promote its activities from the domain name <tui.com> and owns various other domain names that incorporate the TUI mark.
4.4 The Domain Name was registered on January 12 2017. If the information provided by the Registrar is accurate, the registrant of the Domain Name would appear to be an individual or entity in Belize.
4.5 The Domain Name has been used since registration for a website that display pornographic content. At the time or shortly prior to the date when the Complaint was filed, the form that this website took was the text “PornTui” at the top of the page followed by still shots of pornographic videos, which appear to have been generated by a third party algorithm.
4.6 As at the date of this decision the Domain Name continues to be used to promote such content, although it now appears to redirect Internet users to a website operating from the domain name <partysexs.com> and the text “Partysexs”, instead of “PornTui”, appears at the top of the page.
5. Parties’ Contentions
5.1 The Complainant describes its business and marks and the way in which the Domain Name has been used.
5.2 It claims that the only distinctive element of the Domain Name is the letters “tui”, which it describes as “short, fanciful and the only distinguishing element of the [Domain Name]”. The element “porn” is said to be wholly descriptive of the content displayed from the website operating from the Domain Name.
5.3 The Complainant further claims that the Respondent has no rights or legitimate interests in the Domain Name, claiming that the Respondent has no relevant trade mark and is using the Domain Name without the Complainant’s authorisation. It further contends that the Respondent was aware and has sought to take advantage of the Complainant’s marks. In this respect, it refers to the fact that the “PornTui” text at the top of the webpage displayed from the Domain Name, distinguishes the element “Porn “ and “Tui” by capitalizing the letter “T” and giving different colours to each element. It also claims that the favicon displayed for that website takes the form of the Complainant’s logo. The logo in question is the non-textual element of the combined figurative and textual trade mark, an example of which is set out earlier on in this decision. This use is said not to be a bona fide use of the Domain Name pursuant to paragraph 4(c)(iv) of the Policy, nor a noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy.
5.4 These facts are also said to demonstrate bad faith registration and bad faith use. Paragraph 4(c)(iii) of the Policy is cited in this respect.
5.5 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 (b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
6.4 In its Complaint, the Complainant also made a request that English be the language of these proceedings. The reason for that request was that it was unable to identify the language of the Registration agreement that applied to the Domain Name. In fact, the Registrar in its response to the Center has confirmed the language of the registration agreement to be English. Therefore, under paragraph 11(a) of the Rules the default position is that the language of these proceedings is English and it is not necessary to consider the Complainant’s request in this respect.
A. Identical or Confusingly Similar
6.5 The Panel accepts that the most sensible reading of the Domain Name is as the terms “Porn” and “Tui” combined with the “.com” Top-Level Domain (“TLD”). As such, the Complainant’s trade mark is not only recognisable, but clearly recognisable in the Domain Name. This is sufficient for a finding that the Domain Name and the Complainant’s trade mark are “confusingly similar” as that term is understood under the Policy; as to which see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”). In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.6 The Panel accepts, for the reasons that are set out in further detail in the assessment of bad faith later on in this Decision, that the Domain Name was registered and is being held by the Respondent with a view to taking unfair advantage of the Complainant’s rights. Not only is such use not a bona fide offering of goods and services, but it also provides prima facie evidence that the Respondent has no legitimate interests in the Domain Name. In light of that use, it is also inherently improbable that the Respondent has any “right” in the Domain Name recognised by the Policy and the Complainant contends that the Respondent has no trade mark rights in that term.
6.7 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.8 The Panel accepts that the Domain Name was registered and has been used with the knowledge of the Complainant’s business and marks and with the intention of using those marks unfairly to draw Internet users to the Respondent’s website displaying pornographic content.
6.9 There are a number of reasons for this. The Panel accepts the contentions of the Complainant that (as have been recognised in other decisions under the Policy, including TUI AG v. Domain Admin / MEHMET ALİ TUNÇ, WIPO Case No. D2014-1620) that it and its marks are well known. There is also no obvious reason why “Tui” would be used as part of a domain name to display pornographic content. In this respect, “Tui” has no obvious descriptive or generic meaning (or at least none that has been brought to the attention of the Panel) and certainly, no obvious descriptive or generic meaning that is associated with the Respondent’s activities.
6.10 Particularly damming of the Respondent is the use as a favicon for the webpage operating from the Domain Name that reproduces the Complainant’s logo that forms part of a number of its registered trade marks. The logo displayed in the favicon was in orange and blue, rather than the red of the Complainant’s logo, but the shape used is a clear and obvious copy of this element of the Complainant’s mark. This demonstrates beyond any reasonable doubt the Respondent’s intentions in this case.
6.11 This use falls within the scope of the example of circumstances indicating bad at paragraph 4(b)(iv) of the Policy. The Complainant refers to paragraph 4(b)(iii). This Panel is not convinced by this as the Respondent is not an obvious competitor of the Complainant. Nevertheless, this remains a clear case of bad faith registration and use. In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 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 <porntui.com> be transferred to the Complainant.
Matthew S. Harris
Date: April 24, 2019