WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Altiplano Voyage v. Terra Holding Ltd. / Pierre Boyer
Case No. D2019-2141
1. The Parties
The Complainant is Altiplano Voyage, France, internally represented.
The Respondent is Terra Holding Ltd., Canada / Pierre Boyer, Terra Group, Bolivia.
2. The Domain Name and Registrar
The disputed domain name <voyage-altiplano.com> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2019. On September 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 3, 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 September 11, 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 amendment to the Complaint on September 16, 2019.
The Center verified that the Complaint together with the amendment to 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 September 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2019. The Respondent submitted two email communications on September 15, 2019.The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on October 29, 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
According to the Complainant, it is a limited company and accredited travel agent based in France which sells tailor-made tours in Latin America and Asia, predominantly targeting francophone individuals from France, Belgium and Switzerland. The Complainant is the operator of a website at “www.altiplano-voyage.com”, the corresponding domain name for which was created on May 12, 2014. The Complainant explains that it merged its brands, “Altiplano and Jaipur Voyage” into a single brand named “Altiplano Voyage” in 2014. The Complainant had used the domain name <altiplano.org> for its business between 2003, and 2014. The Complainant produces a graph showing its turnover under the “Altiplano Voyage” brand. The graph does not state in which currency the sales are reported, and, for convenience, the Panel will describe these as “units”. The graph claims turnover of over 3 million units in 2014, just under 5 million units in 2015, just over 5.5 million units in 2016, approximately 5.7 million units in 2017, 6 million units in 2018 and just under 5 million units in 2019.
The Complainant’s Chief Executive is the owner of European Union registered trademark No. 13577481 in respect of a figurative mark consisting of the burgundy-colored stylized word ALTIPLANO in which the letter “n” has been fashioned into a mountain and llama design, registered on April 1, 2015 in Nice classes 38 and 39. The Complainant is the owner of European Union registered trademark No. 18010082 in respect of a figurative mark consisting of the stylized words ALTI PLANO VOYAGE in which the letters ALTI PLANO are depicted in white letters against a red background and the word “VOYAGE” is depicted in brown letters against a white background with all of the word elements stacked vertically, registered on May 10, 2019 in Nice classes 16, 39, and 41.
The Respondent has provided no information regarding its activities. However, the Complainant states that the Respondent works in the “incoming” travel industry selling tailor-made tours both to francophone customers and to tour operators such as the Complainant. The Complainant explains that the Parties were engaged in a partnership commencing in 2011 related to destinations in Bolivia, Mexico, Costa Rica, and Panama, whereby the Complainant served as intermediary between its customers and the Respondent’s personnel who were based in the various destinations. The disputed domain name was created on September 22, 2017. On July 15, 2019, the Respondent announced on social media that it was establishing a new agency named “TerraAltiplano” for travel to Northwest Argentina using the hashtag “#VoyageAltiplano”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name has been registered and is being used in bad faith.
The Complainant asserts that the disputed domain name is identical to the domain name under which the Complainant does business, with the exception of the fact that the terms “Altiplano” and “Voyage” are switched in the disputed domain name. The Complainant submits that the similarity of disputed domain name to its own domain name may confuse its customers and other web users.
The Complainant explains the history of its brand, noting that the Respondent registered the disputed domain name after the Complainant registered its own domain name and after the Complainant registered the first trademark noted in the factual background section above. The Complainant goes on to explain the history of its partnership with the Respondent, adding that the Respondent was aware of the existence and domain name of the Complainant. The Complainant asserts that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark, adding that it perceives this as unfair competition because the Respondent may benefit from the Complainant’s good reputation.
The Complainant submits copies of two emails sent by the Respondent’s personnel to the Complainant’s personnel dated January 6, 2017 and October 5, 2017, which it says illustrates the fact that the Respondent was aware of the Complainant’s domain name, which is used in the Complainant’s email addresses.
The Respondent did not file a formal Response and did not directly respond to the Complainant’s contentions. However, in two email communications to the Center dated September 15, 2019, the Respondent makes certain pertinent observations. In its first email, the Respondent states that its travel site to the Altiplano has existed “for quite some time”, noting that its original domain name was <salar-atacama.com> which it describes as having “plenty of time”. The Respondent states that it decided to acquire the disputed domain name for search engine optimization reasons, asserting that the disputed domain name is “legitimately ours”. In its later email of the same date, the Respondent notes that its website at the disputed domain name has been taken offline.
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. Preliminary Issue: Language of the Proceedings
The Panel notes for completeness that while the Complaint was filed in English, it contained a submission requesting that the language of the administrative proceeding be French. During the verification process, the Registrar confirmed that the language of the Registration Agreement is English. On September 15, 2019, the Respondent sent two emails to the Center which were both in English. On September 24, 2019, the Complainant withdrew the request for the language of the administrative proceeding to be French. In these circumstances, following the usual approach set out in terms of paragraph 11 of the Rules, the Panel determines that the language of the administrative proceeding shall be English.
B. Identical or Confusingly Similar
There are two parts to the inquiry under the first element of the Policy. The Complainant must first show 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.
The Complainant relies upon both of the registered trademarks described in the factual background section above. As a preliminary point, the Panel notes that the first of these marks is not registered in the Complainant’s name but rather in the name of its CEO. The Panel notes the terms of section 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) on the topic of whether a trademark owner’s affiliate may have standing to file a UDRP complaint. This states in pertinent part that while panels have been prepared to infer the existence of authorization to file a UDRP case based on the facts and circumstances described in the complaint, they may expect parties to provide relevant evidence of authorization to file a UDRP complaint. In the present case, the Panel is satisfied that the Complainant has the requisite authorization from its CEO, not least because this person is noted as the Complainant’s authorized representative and has signed the Complaint on the Complainant’s behalf. In these circumstances, the Panel finds that the Complainant has rights in both of the cited trademarks.
As a secondary issue, the Panel notes that both of the marks relied upon by the Complainant are figurative in nature. As is noted in section 1.10 of the WIPO Overview 3.0, the comparison exercise in this situation is between the alphanumeric disputed domain name and the textual components of the relevant mark.
Comparing the textual elements of the Complainant’s ALTI PLANO VOYAGE trademark with the disputed domain name, the Panel notes that there are two word elements in the second level of the disputed domain name separated by a hyphen and that these are the same words which feature in the Complainant’s ALTI PLANO VOYAGE trademark, albeit reversed, separated by a hyphen, and with the “altiplano” element of the Complainant’s mark joined together. The Panel notes that spaces between words are disregarded in the comparison exercise as it is not possible to have spaces in a domain name for technical reasons. Likewise, the hyphen in the disputed domain name is of no significance. The generic Top-Level Domain (“gTLD”), in this case “.com”, does not require to be taken into consideration in the determination of identity or confusing similarity (section 1.11 of the WIPO Overview 3.0).
In the case of each of the Complainant’s marks, the Panel considers that neither the reversal of the word elements nor the inclusion of the word “voyage” serves to prevent a finding of confusing similarity. The whole or a substantial part of the Complainant’s trademarks is reproduced and recognizable in the disputed domain name. The Panel is mindful of the fact that the word “Altiplano” is a geographical term, as discussed further below, but notes the terms of section 1.6 of the WIPO Overview 3.0 which provides in pertinent part that geographical terms used in their ordinary geographical sense, except where registered as a trademark, (which is the case here) would not as such provide standing to file a UDRP case.
In all of these circumstances, the Panel finds the first element to be established and turns to consider the second and third elements under the Policy.
C. Rights or Legitimate Interests
The Complainant asserts that the Respondent does not have rights and legitimate interests in the disputed domain name because the Respondent is its competitor and has adopted the disputed domain name in order to benefit from the goodwill vested in the Complainant’s trademark and corresponding domain name. The Complainant notes that the Respondent was engaged in a business relationship with the Complainant from 2011 and provides evidence of emails between the Parties which indicate that the Respondent had notice of the Complainant’s trademark, particularly insofar as it is reproduced in the domain name used for the Complainant’s corporate email. For its part, the Respondent does not answer the Complainant’s submissions directly but states that the disputed domain name was acquired for search engine optimization and is “legitimately ours”.
Although neither of the Parties directly addresses the issue, it has not escaped the Panel’s notice that the phrases “Altiplano Voyage” and “Voyage Altiplano” both have a descriptive quality when used in connection with travel services. “Altiplano” is a dictionary word and geographic term which is commonly used to indicate the plateau region in South America, situated in the Andes of Argentina, Bolivia, and Peru. The word “voyage” is also a dictionary word, which connotes a journey in English, or more generally means “trip” or “travel” in French. It may therefore be seen that both of the Parties are using phrases (whether “Travel Altiplano” or “Altiplano Travel”) which are descriptive of the commercial activity in which they engage, namely the organization of travel to the Altiplano region of South America. On the other hand, if the evidence before the Panel indicates that the Complainant’s mark has acquired a secondary meaning based on the Complainant’s activities and that substantial goodwill is vested in it, this might lend some support to the notion that the Respondent may have intended to take unfair advantage of such mark.
The record is not particularly enlightening as to the extent of the goodwill which the Complainant alleges that it possesses in the term “Altiplano Voyage”. The Complaint and annexes contain a series of examples of the Complainant’s use of the term with little, or no, supporting commentary. It is evident that the Complainant holds a registered trademark incorporating the term, but it must be noted that this mark is figurative in nature. This is not entirely surprising, given the descriptive quality of the phrase, as discussed above. The Complainant has traded under this mark for a period of five years and there is a suggestion that it traded more generally under the brands “Altiplano” and “Jaipur Voyage” from 2003 to 2014.
As to the extent of the trading concerned, the Complainant provided a bar chart of its sales from 2014 to date but neglected to provide details of the currency in which those sales were made. If the Panel were to assume that the sales were reported in Euros, being the official currency of the country where the Complainant is based, then this would represent a substantial amount. It would however be a lower amount if reported in the currency of some of the countries where the Complainant offers its tours. In any event, whatever the currency might be, there is no context provided in which to place the sales figures. For example, the Complainant is silent as to how many tours it has operated to the region concerned in the various years, or as to how many consumers have used its services. It is also silent as to the value of the business in which it engaged with the Respondent.
The Complainant put forward some limited examples of its marketing activities, although it did not supply details of its overall marketing spend relative to the VOYAGE ALTI PLANO mark. Several screenshots were provided of websites mentioning the Complainant’s agency. However, these were not dated and, for the most part, appeared to be listings of tour operators rather than independent media coverage of the Complainant or its activities under the mark. The Complainant also provided examples of offline marketing although these were comparatively recent, dating from 2017 and 2018. Two photographs of billboards were submitted marked 2015 and 2018 respectively and, although the Complainant supplied a relative invoice in the sum of EUR 140 dated September 2015, this was not accompanied by any commentary describing the location or duration of display. Most importantly, no explanation was offered as to the extent of the related campaign or the anticipated views and impressions based on passing traffic for the location concerned.
Finally, the Complainant provided two Internet searches under the heading “SEO issues”. The first of these is an extract of what it says is the fourth page of a Google search based on the keywords “altiplano” and “voyage”. This appears to be intended to demonstrate that the disputed domain name does not appear until the fourth page of an Internet search, although the Panel is unaware of the particular significance of this from the Complainant’s point of view. The second is an extract of the second page of a Google search for the keyword “altiplano” alone, which features the Respondent’s site along with listings from alternative tour operators offering travel to the Altiplano region. In the Panel’s opinion, the second search serves to reinforce the descriptive and geographic nature of the term “Altiplano”. The Panel was not provided with more comprehensive search listings in respect of the Complainant’s mark, which might have illustrated whether the returned results relate mainly or exclusively to the Complainant’s business.
Taken as a whole, the Complainant’s evidence of the extent to which it has used the ALTI PLANO VOYAGE mark is somewhat limited. The Panel accepts, in particular based on the reported sales figures, that the Complainant may be a reasonably substantial tour operator. However, the evidence on the present record does not demonstrate to the Panel’s satisfaction that the Complainant’s activities have given rise to a secondary meaning in the descriptive term “Altiplano Voyage”. That said, the Panel must also consider this question in the context of the Parties’ prior business relationship.
The panel in Robin Hanger v. RPM Truck & Trailer Sales - Samantha Holcomb, WIPO Case No. D2013-1092 was faced with similar circumstances. The domain name, which was the subject matter of the case, contained the laudatory and descriptive phrase “best priced trailer”. Both the complainant and the respondent were in the business of selling trailers. The complainant asserted a common law trademark, based on use, in respect of this phrase. The respondent admitted that it had engaged in prior transactions with the complainant and was aware that the complainant used a corresponding domain name for marketing its services. The panel took the view that a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly-used descriptive phrase, even where the domain name is confusingly similar to the mark of a complainant, at least in circumstances indicating that such respondent was not aware of the complainant’s trademark rights or believed in good faith that such use would not violate the complainant’s rights. It went on: “The Policy was not intended to permit a party who elects to register or use common or descriptive terms as a trademark to bar others from using these terms in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.”
The parties concerned were direct competitors and the panel noted that the respondent could scarcely have been unaware of the complainant’s prior use of such term. Nevertheless, under the specific facts of that case, the panel took the view that the complainant’s adoption of the descriptive phrase and without strong evidence of secondary meaning, did not entail a right to exclude competitors from making a good faith use of a similar term in describing their own goods and services, adding that if confusion results, this is a risk which a party accepts when they decide to identify their product with a mark that uses a descriptive phrase. It concluded that this is a fundamental premise of the trademark law of most jurisdictions with which it was familiar. The Panel in the present case endorses those observations to the extent they relate here.
Applying that analysis to the facts and circumstances of the present case, the Panel first reminds itself that it is for the Complainant to satisfy the Panel on the balance of probabilities as to the existence of any secondary meaning in its trademarks. It is also for the Complainant to satisfy the Panel on the balance of probabilities that the use of the disputed domain name is seeking to capitalize on the Complainant’s goodwill such as it may be demonstrably vested in such marks. In the Panel’s opinion, the Complainant has done neither of these things on the basis of the present record.
Accordingly, the Panel concludes, on the balance of probabilities, that the Complainant has not met its burden, and that this case presents a more nuanced trademark dispute (at least on the papers presented) than that for which the Policy is equipped. The Panel is fortified in this conclusion by the coverage on the Respondent’s social media page of the launch of its “Terra Altiplano” brand, which is linked to the disputed domain name. This makes it clear that the Respondent was looking to the term “Altiplano” for its geographic meaning, in that it announces (Panel’s translation from French) “Having crossed the length and breadth of the Altiplano, Antoine has chosen Salta to establish the headquarters of TerraAltiplano, the new agency which will take you to North West Argentina”.
The Panel finds that the Complainant has failed to satisfy the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
In light of the Panel’s finding above that the Complainant has failed to prove its case, a finding here is not necessary.
The Panel therefore finds that the Complainant has failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Date: November 12, 2019