WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WK Travel, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Konstantin Zhivenkov
Case No. D2019-1237
1. The Parties
The Complainant is WK Travel, Inc., United States of America (“USA”), represented by Cowan, DeBaets, Abrahams & Sheppard, LLP, USA.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Konstantin Zhivenkov, Thailand.
2. The Domain Name and Registrar
The disputed domain name <onetravelbloggersblog.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 May 30, 2019. On May 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 31, 2019, 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 June 4, 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 June 7, 2019.
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 June 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2019. The Respondent did not submit any formal response although it issued informal email communications to the Center on June 1, 2019, June 4, 2019, June 7, 2019, June 11, 2019, and June 12, 2019. The Center notified the Parties of the commencement of the panel appointment process on July 3, 2019.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on July 15, 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
The Complainant is a corporation with its principal place of business in New York, New York, USA. The Complainant is a wholly-owned subsidiary of a corporation named Fareportal, Inc. which operates various low-cost travel services including airfare, temporary lodging, car rentals and vacation packages. The Complainant has used the ONETRAVEL mark in commerce since December 31, 1998, to promote its travel services including on the website “www.onetravel.com”, which contains a blog entitled “Going Places” featuring posts related to travel destinations and suggested activities for travelers.
The Complainant is the owner of USA registered trademark no. 4545969 for the word mark ONETRAVEL, registered on June 10, 2014, in international classes 39 and 43. The Panel notes in passing that said trademark registration states that the registrant is WK Travel, Inc., “a Nevada corporation”. The Complaint stated that the Complainant was a New York corporation. In order to resolve this apparent discrepancy, the Panel consulted the registration of the Complainant corporation with the New York State Department of State entity information database (see section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) on the topic of panels’ limited factual research into matters of readily accessible public record). Said database provided confirmation that the Complainant is registered in New York State as a foreign business corporation of Nevada jurisdiction.
The disputed domain name was created on January 26, 2019. Little is known regarding the Respondent, although it appears to be a private individual with an address in Doi Saket, Thailand. The website associated with the disputed domain name is an alleged blog site entitled “OneTravel Guest Bloggers / Sharing Travel Stories from Around the World!” In addition to featuring blog style articles such as “Accommodation Cape Town” and “Renting Your Dream Holiday Home”, said website also features a search bar menu with links entitled “BOOK FLIGHTS”, “BOOK HOTELS”, “BOOK CARS”, and “HOTEL DEALS”. When clicked, these links redirect users to third party providers of flights, hotel bookings, and car rental booking services.
The “OneTravel” element of the title of the website associated with the disputed domain name features a distinctive letter “O” with a three dimensional offset external ellipsis in white on an orange background. The Complainant provides a historic screenshot of its own website at “www.onetravel.com” dating from February 24, 2012 showing that it formerly used the same distinctive letter “O” and ellipsis in orange on a white background. The typeface used in the “OneTravel” elements in both of said websites appears to be identical or at least very similar. The background colors of orange and yellow in said websites are further points of apparent similarity.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant notes that the disputed domain name contains the Complainant’s ONETRAVEL mark in its entirety coupled with the descriptive terms “bloggers” and “blog”, which the Complainant submits do not preclude a finding of confusing similarity and do not distinguish the disputed domain name from the Complainant’s website.
The Complainant asserts that the Respondent cannot contend that the Complainant’s mark is comprised of two commonly used words because it has also used branding that looks similar to branding that the Complainant has used on its “www.onetravel.com” website including the prominent use of an emphasized “O” and the color orange. The Complainant notes that the style of the Respondent’s website is substantially similar to the older style of the Complainant’s website. The Complainant claims that the Respondent is taking advantage of Internet users’ “initial interest confusion” for its own commercial advantage.
The Complainant asserts that the Respondent is not using the disputed domain name for any bona fide purpose, adding that the Respondent is not a licensee of the Complainant, has not obtained the Complainant’s express or implied permission to use the Complainant’s mark or a corresponding domain name and has never been commonly known by or has ever operated a bona fide business under the disputed domain name. The Complainant submits that the Respondent is not making a protected noncommercial or fair use of the disputed domain name but rather uses this to misdirect users seeking the Complainant’s travel services to the Respondent’s own website where it is reasonable to infer that it earns pay-per-click or affiliate revenue in connection with the sponsored travel-related links appearing there.
The Complainant states that the Respondent could not plausibly assert that it was unaware of the Complainant’s rights when it registered the disputed domain name because this incorporates the Complainant’s mark in its entirety and offers misleading and deceptive travel-related services, including links to competing travel-booking websites similar to that of the Complainant, creating a likelihood of confusion with the Complainant’s mark as to source, endorsement, approval or sponsorship. The Complainant notes that for bad faith to be made out under the Policy it is not necessary to show that the Respondent itself is the entity which commercially benefits from the diversion of traffic. The Complainant nevertheless contends that it is reasonable to infer that the Respondent receives some type of financial benefit, such as affiliate revenue. The Complainant concludes that the disputed domain name is so obviously indicative of the Complainant’s travel services that the Respondent’s use thereof would inevitably lead to confusion to the detriment of the Complainant and its goodwill.
The Respondent did not formally reply to the Complainant’s contentions. However, it did make a number of observations pertinent to the case in its emails to the Center dated June 4, 2019 and June 7, 2019.
The Respondent narrates the terms of the Policy and adds that it is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. The Respondent denies that the disputed domain name is confusingly similar to the Complainant’s trademark and adds that “One Travel” is a common phrase which cannot be registered as a trademark and which has not acquired any secondary meaning. The Respondent compares the goods and services listed in the Complainant’s trademark and asserts that the Respondent does not provide a database, tour services, travel services or ticket booking, nor does it work with pay-per-click services. The Respondent acknowledges that it contains a link to “www.booking.com” but asserts that the Complainant’s claim does not take issue with such link. The Respondent says that anyone can write about destinations and recommend services without needing to be the owner of the Complainant’s trademark.
The Respondent refutes any suggestion that consumer confusion will arise from its use of the disputed domain name, noting that its website has no mention of “OneTravel”, features a different design and logo, and uses a different domain name. The Respondent says that the logo is very old and notes that the Complainant does not use it. The Respondent adds that it downloaded said logo from the Internet and offers to remove this.
The Respondent denies that it needs the Complainant’s authorization to post articles which are unrelated to the Complainant’s trademark. The Respondent states that nobody writing on its website refers to the Complainant. The Respondent says that the disputed domain name attracts no traffic. The Respondent denies that its writer has copied material from the Complainant’s website but offers to remove any infringing articles about which it is notified.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical 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 respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This first element of the Policy requires to be assessed in two parts. First, the Complainant requires to demonstrate that it has UDRP-relevant rights in a trademark. Secondly, the Complainant must show that the disputed domain name is identical or confusingly similar to such trademark.
In the present case, the Panel is satisfied that the Complainant has UDRP-relevant rights in its ONETRAVEL registered trademark as described in the factual background section above. The Panel finds that there is no merit in the Respondent’s argument that the Complainant’s mark consists of dictionary words and so should not be registrable as a trademark. Many trademarks consist of dictionary words (or a combination thereof) and this is not by itself a barrier to registration in most jurisdictions with which the Panel is familiar, provided that (as here) such combination of words is not merely/wholly descriptive of the goods and/or services concerned (or where appropriate, has acquired sufficient distinctiveness as a unique identifier for such goods and/or services). The record shows that the Complainant’s mark is duly registered. It is a combination of two words expressed as a single non-descriptive term which has met the relevant trademark office requirement as applied to goods and services in international classes 39 and 43; the Panel furthermore notes that the Complainant has not been required to disclaim any element of such mark.
Turning to the comparison between the Complainant’s mark and the disputed domain name, the Panel notes that such mark is repeated in its entirety within the second level of the disputed domain name, along with the descriptive words “bloggers” and “blog”. The Panel finds that these additional words do nothing to prevent the Complainant’s mark from being recognizable within the disputed domain name, which features as the first and dominant component of the disputed domain name.
The disputed domain name also includes the generic Top-Level Domain (“gTLD”) “.com”. A gTLD is typically disregarded under the first element test on the basis that it is required for technical reasons only and generally has no capacity to dispel confusing similarity.
In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 consumers or to tarnish the trademark or service mark at issue”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the domain name concerned. In the present case, the Panel finds that the Complainant has made out such a prima facie case based upon the terms of its Complaint and corresponding evidence, and in particular by reference to its submissions that the Respondent is not currently using the disputed domain name for any bona fide purpose, is not making a protected noncommercial or fair use of the disputed domain name, is not a licensee of the Complainant, has not obtained the Complainant’s express or implied permission to use the Complainant’s mark, and has never been commonly known by or ever operated a bona fide business under the disputed domain name. Furthermore, the Complainant’s evidence tends to support its assertion that the Respondent is using the disputed domain name to misdirect users seeking the Complainant’s services to the Respondent’s own website where it is reasonable to infer that it earns pay-per-click or affiliate revenue from services in competition with those of the Complainant.
In these circumstances, the burden of production shifts to the Respondent to bring forward evidence of rights or legitimate interests in respect of the disputed domain name. The Panel notes that the Response is informal in nature and does not contain a certification of completeness and accuracy as required by paragraph 5(c)(viii) of the Rules. In these circumstances, the Panel will treat the Response with caution and will, where appropriate, accord it less weight than a fully compliant response.
The Respondent first asserts that it is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. In the Panel’s opinion, this claim does not bear scrutiny in light of the evident links of a commercial nature to various travel operators on the website associated with the disputed domain name. These are prominently displayed on the top menu using the familiar style of a commercial travel website, indicating that they are intended to be a primary feature, rather than an incidental inclusion on a predominantly “blog” site as the Respondent suggests. While the Respondent submits that the disputed domain name employs the name “One Travel” because this is a common phrase and does not denote the Complainant’s distinctive mark, the Panel is unaware of any context in which “One Travel” could be regarded as a common phrase and the Respondent supplies no supporting evidence for such contention.
The Response, being informal, is a little unclear. However, if the Respondent is claiming that it selected the descriptive phrase “One Travel Blogger’s Blog”, to denote the blog of a single travel blogger, the Panel might have been persuaded that this had at least some merit, were it not for several conflicting aspects. In the first place, the Respondent has neither demonstrated any descriptive use of the alleged phrase on the website itself nor has it provided independent evidence that such phrase is in common use.
In the second place, the website’s title, as distinct from the Respondent’s contended phrase in the disputed domain name, is not “One Travel Blogger’s Blog” but rather “One Travel Guest Bloggers”. This title seems to the Panel to emphasize the Complainant’s trademark. The word “one” is not being used in a descriptive sense where it could mean “single” or “solo”. It could not be seen as qualifying the plural word “bloggers” in the title. In these circumstances, the website title could not on any view be regarded as a descriptive phrase and it is somewhat incongruous when used in tandem with the disputed domain name.
In the third place, and of greatest significance, there is evident use by the Respondent of the Complainant’s distinctive former “One Travel” logo and typeface and its selection of similar website colors. These confirm the Panel in its view that the Respondent is using the term “One Travel” to reference the Complainant’s mark rather than as an unrelated descriptive phrase. The fact that the logo may be old and has been downloaded from the Internet, as the Respondent contends, does not alter the Panel’s view.
In all of these circumstances, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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”.
In the present case, the Complainant focuses its submissions on paragraph 4(b)(iv) of the Policy. It identifies the adoption of its ONETRAVEL mark and the use of its former logo by the Respondent as indicative of an intent on the Respondent’s part to create confusion by targeting the Complainant’s rights. It also points to the Respondent’s apparent adoption of affiliate links to various travel services as evidence of an intent to seek commercial gain. For its part, the Respondent argues that it is not causing consumer confusion and is providing a blog site under a descriptive name which offers original content generated by its writer.
The Respondent does not provide any supporting evidence for its case, meaning that it is effectively relying only upon the disputed domain name itself and the website to which it points, the latter being demonstrated by the Complainant’s screenshots. As the Panel noted in the preceding section, it is unpersuaded that the Respondent is genuinely using a descriptive name within the disputed domain name or that its activity on the associated website is fully independent of and not targeted to the Complainant’s rights in its ONETRAVEL mark. The use of the Complainant’s distinctive former logo and typeface on such site is, in particular, a matter which the Respondent appears unable to explain fully in the context of its assertion that it is simply providing a travel blog site featuring an unrelated descriptive phrase for its name.
Furthermore, the prominent links on the Respondent’s website seem to the Panel to be focused on travel booking services rather than merely providing external noncommercial information to support the alleged blog articles. This is emphasized by the nature of the search bar menu, which features links entitled “BOOK FLIGHTS”, “BOOK HOTELS”, “BOOK CARS”, and “HOTEL DEALS”. In other words, these links are evidently targeted to the Complainant’s commercial activities. The Respondent does not appear to deny that the links direct users to the Complainant’s competitors. Accordingly, the Panel finds it more probable than not that the disputed domain name was registered in the knowledge of the Complainant’s rights in the ONETRAVEL mark and that it has been used to create a likelihood of confusion with such mark, for commercial gain, in accordance with the provisions of paragraph 4(b)(iv) of the Policy.
In these circumstances, the Panel finds that the Complainant has established that the Respondent has registered and is using the disputed domain name in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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 <onetravelbloggersblog.com> be transferred to the Complainant.
Andrew D. S. Lothian
Date: July 29, 2019