WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Trivago N.V. v. Hildegard Gruener
Case No. D2019-3095
1. The Parties
The Complainant is Trivago N.V., Germany, internally represented.
The Respondent is Hildegard Gruener, Austria.
2. The Domain Names and Registrar
The disputed domain names <trivago-flights.com>, <trivago-hotel-booking.com>, <trivago-hotel-deals.com>, <trivago-hotels-deals.com>, and <trivago-hotel-search.com> (“Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2019. On December 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 17, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 18, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant submitted an amendment to the Complaint on January 3, 2020.
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 January 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2020.
The Center appointed Ellen B Shankman as the sole panelist in this matter on February 25, 2020. 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.
The Panel also finds that the consolidation into one proceeding in the circumstances of all of the Domain Names showing evidence of common control is justified, and to be determined by a single decision under the facts of this case to be fair and reasonable.
4. Factual Background
The dates of the Domain Names’ registrations were confirmed by the Registrar to be:
- <trivago-flights.com> was created on March 9, 2019;
- <trivago-hotel-booking.com> was created on June 24, 2019;
- <trivago-hotel-deals.com> was created on June 10, 2019;
- <trivago-hotels-deals.com> was created on March 9, 2019; and
- <trivago-hotel-search.com> was created on June 24, 2019.
The Panel also conducted an independent search to determine that the Domain Names resolve to an active page displaying a colored TRIVAGO logo and references to finding savings for hotels, flights and car rental, and which further redirect to what appears to be a parking page with links to advertisements.
The trademark TRIVAGO serves as a house mark of the Complainant and is protected as a registered trademark in multiple jurisdictions worldwide.
The Complainant provided evidence of multiple trademark registrations for the mark TRIVAGO including, inter alia, International Registration No. 910828 (registered on August 18, 2006) and International Registration No. 1211017 (registered on November 18, 2013) for word marks that predate the date of the Domain Names registrations for, inter alia, price comparison services, travel booking and reservations services and organization of travel events and trips.
5. Parties’ Contentions
The Complaint alleges that the Complainant maintains a well-known worldwide hotel comparison website which operates in 55 markets and is available in over 30 languages and has been operating since 2006. The Complainant is publicly listed on the NASDAQ and has yearly revenues of approximately EUR one billion. The Complainant pioneered hotel metasearch. The Complainant has a global trademark portfolio that includes trademark registrations throughout Europe, the United States of America, Australia, the Middle East, Africa and Asia. The Complainant conducts worldwide advertising campaigns using various marketing channels such as TV, out-of-home advertising, radio, search engine marketing, display and affiliate marketing, email marketing, online video, app marketing and content marketing and spends considerable amounts of money on this, for example in 2016 EUR 623.5 million, in 2017 EUR 884.7 million, and in 2018 EUR 732.5 million was spent by the Complainant on advertising across the markets that it operates. The television commercials featuring the “trivago guy” and “the trivago girl” have become famous in their own right.
Further, the Domain Names incorporate the Complainant’s trademark in its entirety with the generic words “hotel(s)-deals”, “hotel-booking”, “hotel-search”, “flights”. The addition of the words “hotel(s)-deals”, “flights”, “hotel-search”, or “hotel-booking” does not negate the confusing similarity caused by the Respondent’s complete integration of the trademark in the Domain Names. The Respondent added the generic descriptive terms “hotel(s)-deals”, “flights”, “hotel-booking” and “hotel-search” as a suffix to TRIVAGO, which are all generic terms related to the trademark.
In the present case, it can be seen that the Domain Names arebeing used to display a website that operates in the travel industry (the same industrythat the Complainant does). As a result, the Respondent’s Domain Names are confusingly similar to the Complainant’s trademark.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark TRIVAGO house mark and logo, in respect of travel related services. The Domain Names are confusingly similar to the trademark owned by the Complainant. The addition of generic descriptive terms “hotel(s)‑deals”, “flights”, “hotel-booking” and “hotel-search” to TRIVAGO does not prevent a finding of confusing similarity. Therefore, the Domain Names are confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Domain Names were registered and are being used in bad faith to impersonate the Complainant. That continued use of the Domain Names would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially for competing goods and services. Thus, the Respondent’s registrations and use of the Domain Names constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) the Domain Names registered by the Respondent are 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 Domain Names; and
(iii) the Domain Names have been registered and used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for TRIVAGO.
The Panel finds that the Domain Names are confusingly similar to the Complainant’s trademark. Further, the Panel finds that the addition of the dictionary terms “hotel(s)-deals”, “flights”, “hotel-booking” and “hotel‑search” to the Domain Names does not change the overall impression of the designation as being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Names and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered domain name is considered sufficient to find the domain name confusingly similar to the Complainant’s trademark”. See also, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 1.8.
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Names are identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Names and that they are not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
There is no evidence that the Respondent owns any rights or legitimate interests in respect of the Domain Names. The Complainant is in no way affiliated with the Respondent and has not licensed or permitted the Respondent to use its trademarks in any fashion. No other trademark application or registrations can be found for the terms comprising the Domain Names.
The Respondent is not commonly known by the Domain Names. There is no evidence the Respondent is making a bona fide or legitimate noncommercial or fair use of the Domain Names and the Respondent is making a nonlegitimate unfair use of the Domain Names, intentionally for commercial gain, to misleadingly divert consumers and to tarnish the trademark of the Complainant. From this evidence it has to be concluded that the Respondent has no rights or legitimate interests in respect of the Domain Names.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Names.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Names, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is persuaded by the Complainant’s arguments that the Respondent provides similar services to Internet users, and thus, the Respondent intentionally attempts to attract Internet users for commercial gain. The addition of the aforementioned descriptive terms only increases the risk of confusion.
This is supported by the fact that the mark of the Complainant, TRIVAGO has no dictionary meaning. The trademark No. 910828 of the Complainant has been registered in 2006 and therefore was registered and in use for 13 years before the Domain Names were registered.
The Domain Names are used to offer services that are identical to those of the Complainant which creates a real likelihood of confusion between the Complainant’s mark and the Respondent’s websites and/or is an attempt by the Respondent to conduct illegal activity to impersonate or pass themselves off as the Complainant. The Respondent’s websites at the Domain Name make use of the Complaints trademark TRIVAGO at least 39 times in the content of the websites.
The Panel agrees that Internet users are likely to mistakenly believe that the website is actually the Complainant’s web presence which therefore leads to Internet users using the Respondent’s services and interferes with the Complainant’s business, and the probability is that they were meant to confuse Internet users as to source or affiliation.
The Panel finds that the registration of Domain Names based on well-established marks at the time of registration and the Registrant’s use of the Domain Name to redirect Internet users to the Registrant’s competing service lead to a finding of bad faith squarely within the meaning of the Policy. The Domain Names were selected in knowledge of the Complainant’s mark and brand, and further the Domain Names were chosen in order to capitalize on Internet traffic intended for the Complainant’s website. It is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the Domain Names or to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration – especially when the Respondent offers the same type of services as the Complainant.
Given the distinctiveness of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Names with full knowledge of the Complainant’s trademark TRIVAGO and uses it for the purpose of misleading and diverting Internet traffic, and to capitalize on any confusion with the Complainant.
Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Names with apparent full knowledge of the Complainant, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Names in bad faith, under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that all five Domain Names, <trivago-flights.com>, <trivago-hotel-booking.com>, <trivago-hotel-deals.com>, <trivago-hotels-deals.com>, and <trivago-hotel-search.com>, be transferred to the Complainant.
Ellen B Shankman
Date: March 10, 2020