WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Travelscape, LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Ricardo Balcazar Martinez, Balcazar Inc.
Case No. D2020-1108
1. The Parties
The Complainant is Travelscape, LLC, United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Ricardo Balcazar Martinez, Balcazar Inc., Mexico.
2. The Domain Name and Registrar
The disputed domain name <travelscapellc.com> (the “Disputed Domain Name”) 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 4, 2020. On May 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 6, 2020, 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 May 7, 2020 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 May 8, 2020.
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 May 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 14, 2020.
The Center appointed Nick J. Gardner as the sole panelist in this matter on June 23, 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.
4. Factual Background
The Complainant was founded 1996 and is a provider of consumer-direct travel services for the leisure and business traveler. It markets and distributes travel-related products and services directly to individuals. It originally promoted its business via a website linked to the domain name travelscape.com. That domain name now links by redirection to the Complainant’s parent company (Expedia Inc) website.
The Complainant is a very substantial business dealing with many millions of customers each year. Nowadays it appears to trade principally by reference to the brand name TRAVELOCITY. However the name “TRAVELSCAPE” features prominently on its promotional material as well as on its stationery, office premises and so on.
The Disputed Domain Name was registered on September 19, 2019. The filed evidence shows it has been linked to a website (the “Respondent’s Website”) which purports to offer travel related services and which in substance impersonates the Complainant’s business – it for example uses the Complainant’s logo and represents its address as being at one of the Complainant’s office addresses. The filed evidence shows the Respondent’s Website is being used to fraudulently deceive customers who believe they are dealing with the Complainant.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows.
The Disputed Domain Name is similar to its TRAVELSCAPE name and mark.
The Respondent has no rights or legitimate interests in the term “TRAVELSCAPE”.
In consequence the Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. The Complainant says the fraudulent nature of the Respondent’s Website is clear evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
The Panel also notes this is a case where one Respondent (“WhoisGuard Protected, WhoisGuard, Inc.”) appears to be a privacy or proxy service.
The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case the Panel considers the substantive Respondent to be Ricardo Balcazar Martinez, Balcazar Inc. and references to the Respondent are to that person.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with 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;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has not relied upon any registered trademarks. The Panel however finds that the Complainant has rights in the unregistered trademark TRAVELSCAPE for the purpose of this proceeding. It is clear that “TRAVELSCAPE” was adopted as the substantive part of the Complainant’s name with effect from 1996 (see above) and has been used on that basis ever since by the Complainant. Whilst the evidence shows the Complainant nowadays principally trades under the TRAVELOCITY brand it still uses its name TRAVELSCAPE in its trading activities. The term TRAVELSCAPE is a coined word with no apparent other meaning other than in relation to the Complainant and its services.
“What does a complainant need to show to successfully assert unregistered or common law trademark rights?
To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”
The Panel does not consider the term “TRAVELSCAPE” to be comprised solely of descriptive terms and is satisfied on the evidence as filed that the Complainant has shown it has acquired distinctiveness and therefore unregistered trademark rights in that term. It is referred to below as the “TRAVELSCAPE trademark”.
Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000‑0662). It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
In the present case the Respondent has simply combined “LLC” being the Complainant’s legal designation with its TRAVELSCAPE trademark. He has clearly done so to deliberately produce a confusingly similar result which in substance imitates the Complainant’s full name.
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the TRAVELSCAPE trademark. The Complainant has prior rights in the TRAVELSCAPE trademark which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name to rebut the Complainant’s claims. Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances the fact that the Disputed Domain Name was linked to the Respondent’s Website which impersonated the Complainant’s own website and which as used to fraudulently deceive customers lead the Panel to conclude the registration and use were in bad faith.
The Panel concludes that the Respondent chose to register a name comprising the Complainant’s trademark combined with the term LLC in order to facilitate a scheme where the Respondent’s website impersonated that of the Complainant.
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(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 web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
In the present case the Panel has no hesitation in concluding that the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location” (Policy paragraph 4(b) (iv)). In the present case, the Panel concludes that the deliberate use of the Complainant’s TRAVELSCAPE trademark as part of the Disputed Domain Name, is intended to enable the Respondent to attract for commercial gain visitors to the website. The fact that the commercial gain in question is associated with some form of dishonest behaviour emphasizes the bad faith involved.
Further the Panel notes that the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of good faith that it might have. The Panel infers that none exists.
Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <travelscapellc.com> be transferred to the Complainant.
Nick J. Gardner
Date: July 7, 2020