WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Travelscape, LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Irwin Periola
Case No. D2020-2741
1. The Parties
Complainant is Travelscape, LLC, United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Irwin Periola, Mexico.
2. The Domain Name and Registrar
The disputed domain name <travelscapeincorp.com> (the “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 October 20, 2020. On October 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 20, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 26, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 27, 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 Respondent of the Complaint, and the proceedings commenced on October 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 22, 2020.
The Center appointed Clive L. Elliott Q.C., as the sole panelist in this matter on December 2, 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
Complainant is a provider of consumer-direct travel services. It owns and operates the online travel service TRAVELOCITY as well as various TRAVELOCITY related brand websites and contact center.
Complainant was incorporated in Nevada in 1998 and has a registered office in Kentucky, United States. It originally operated as an Internet hotel consolidator offering hotel bookings and air and hotel packages. It was acquired by Expedia, on January 31, 2000. Expedia’s travel brands, include among others EXPEDIA.COM, HOTWIRE, HOTELS.COM, ORBITZ, HOMEAWAY, VRBO, EGENCIA, TRIVAGO, and TRAVELOCITY. It offers travelers the world’s most comprehensive selection of travel options backed by industry-leading technology and a team of hundreds of Expedia employees worldwide.
Prior to its acquisition by Expedia, Complainant owned and used the domain name <travelscape.com> to promote its services, and following its acquisition the <travelscape.com> domain name was used to redirect consumers to the “www.expedia.com” website.
Complainant has used the TRAVELSCAPE name and mark (“Complainant’s Mark”) in and as part of logos to identify itself and its services as set out below:
Complainant’s Mark and logo has been used in Complainant’s promotional and corporate materials, as well as featuring on Complainant’s principal office location in Las Vegas, Nevada.
According to the publicly available WhoIs, the Domain Name was registered on July 1, 2020. The Domain Name currently does not resolve to an active website.
5. Parties’ Contentions
Complainant asserts that as a result of its longstanding use of Complainant’s Mark and its association with the TRAVELOCITY online travel service, the consuming public and trade would recognize and associate Complainant’s Mark with Complainant. Accordingly, Complainant submits that Complainant’s Mark has obtained public recognition as a source of travel related services and products, and embodies valuable reputation and goodwill belonging exclusively to Complainant.
Complainant submits that since registering the Domain Name, Respondent has used the Domain Name for an active website promoting a travel related business using the name “Travelscape Incorp”.
Complainant asserts that Respondent’s intention is to fraudulently pass itself off as Complainant or as a company related to Complainant. Respondent makes prominent and repeated use of a logo, as shown below, that plays on the logo used by Complainant for many years, as follows:
In addition, Complainant contends that Respondent uses the same address used by Complainant in Frankfurt, Kentucky for its registered office in Kentucky, as shown below:
Complainant claims that Respondent had previously registered the domain name <travelscapellc.com> and then used such with a website that likewise posed as a website for TRAVELSCAPE and which used the same Frankfurt, Kentucky registered office address used by Complainant. Complainant states that it initiated a successful UDRP proceeding against the <travelscapellc.com> domain name (Travelscape, LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Ricardo Balcazar Martinez, Balcazar Inc., WIPO Case No. D2020-1108). On or around the time the website at the <travelscapellc.com> domain name was taken down, the Domain Name was registered by Respondent.
Complainant asserts that Respondent has chosen to pass itself off as Complainant through the use of:
(i) a domain name that mirrors Complainant’s Mark,
(ii) a logo that copies Complainant’s logo; and
(iii) a travel related website that refers specifically to Complainant and offers travel related services.
To compound matters, Respondent has sent consumers, as part of its scheme, fraudulent documents for purported transactions that feature Complainant’s Mark and Complainant’s address in Frankfurt, Kentucky.
As a result of Respondent’s actions, unsuspecting consumers who are contacted by Respondent not only believe they are communicating with Complainant, but have lodged complaints against Complainant once they have been defrauded by Respondent. Complainant states that it has received complaints from consumers and through the Office of the Attorney General of the State of Kentucky on account of Respondent’s fraudulent activities.
Complainant submits that the Domain Name is identical or confusingly similar to Complainant’s Mark as it fully incorporates Complainant’s Mark in its entirety. The addition of generic Top-Level Domain (“gTLD”) “.com” is of no import and does not distinguish the Domain Name. Moreover, the addition of “incorp” (an abbreviation for the word “incorporated”) at the tail of the Domain Name, does not distinguish the Domain Name and in facts strengthens the confusing similarity by referring in essence to TRAVELSCAPE as an incorporated company.
Complainant further contends that Respondent cannot demonstrate or establish rights or legitimate interests in the Domain Name. Respondent is not commonly known by the Domain Name or a name corresponding to the Domain Name, particularly as Respondent (i) originally chose to conceal his or her identity with a privacy service, (ii) registered the Domain Name using the name of an individual and entity based in Mexico (that has no connection to Complainant), and (iii) has attempted to pass itself off as Complainant, particularly by using Complainant’s registered business address in Kentucky and Complainant’s Mark). Moreover, Complainant states that there is no relationship between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating or imitating Complainant’s Mark.
Complainant contends that Respondent is neither using the Domain Name in connection with a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Domain Name. Respondent has used the Domain Name to capitalize on Complainant’s Mark solely for commercial gain.
Respondent has registered and is using the Domain Name in bad faith for commercial gain and to benefit from the goodwill and notoriety associated with Complainant’s Mark.
Complainant alleges that Respondent’s bad faith is also exhibited by the fact that Respondent registered the Domain Name years after Complainant adopted and started using the TRAVELSCAPE name and mark, and shortly after Complainant has successfully addressed the registration and use of the <travelscapellc.com> domain name. The fact that Respondent has sought to pass itself off as Complainant by using Complainant’s TRAVELSCAPE name and mark, adopting a logo that is similar to Complainant’s TRAVELSCAPE logo and featuring Complainant’s address for its registered office in Frankfurt, Kentucky on Respondent’s website makes it clear that Respondent has targeted Complainant.
Complainant further alleges that Respondent’s bad faith is also established by the fact that Respondent has actively concealed its identity by using a privacy service and by using contact information.
Moreover, the fact that this is the second time that Respondent has registered and used a domain name based on the TRAVELSCAPE name and mark for purposes of pursuing a fraudulent scheme on unsuspecting consumers, Complainant submits that this establishes a bad faith pattern on the part of Respondent.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant provides evidence that before it was acquired by Expedia, it owned and used the domain name <travelscape.com>. Further, Complainant asserts that following its acquisition the <travelscape.com> domain name was used to redirect consumers to the “www.expedia.com” website. On that basis, Complainant asserts that it has used the TRAVELSCAPE mark (“Complainant’s Mark”). Complainant has made use of its mark as a word mark and also as part of a logo or device mark (a matter discussed in more detail below). Based on the available record, the Panel finds that Complainant has unregistered trademark right in TRAVELSCAPE for purposes of this proceeding. See section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The use of Complainant’s Mark precedes the registration of the Domain Name, which was registered recently, on July 1, 2020. Accordingly, Complainant has established that it has unregistered trademarks rights in Complainant’s Mark and that these rights predate Respondent’s registration of the Domain Name.
The Domain Name is confusingly similar to Complainant’s Mark. It incorporates Complainant’s Mark in its entirety along with the addition of “incorp” (an abbreviation for the word “incorporated”). This addition does not prevent a finding of confusing similarity between the Domain Name and Complainant’s Mark. See section 1.8 of the WIPO Overview 3.0.
The Panel thus finds that:
a) Complainant has rights in respect of Complainant’s Mark; and
b) the Domain Name is confusingly similar to Complainant’s Mark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
In terms of assessing whether Respondent has rights or legitimate interests in the Domain Name it is appropriate to consider the way Respondent uses the Domain Name. In the absence of a response the Panel is reliant upon Complainant’s statements of fact and submission. In this regard, Complainant asserts that Respondent has registered and used a domain name based on the TRAVELSCAPE name and mark for purposes of pursuing a fraudulent scheme on unsuspecting consumers. This allegation has a bearing on both whether Respondent has a legitimate interest in registering and using the Domain Name and whether it has acted in bad faith.
Complainant submits that Respondent has used the Domain Name for an active website promoting a rival travel related business, using the name “Travelscape Incorp” and it is passing itself off as Complainant. Complainant points to the fact that Respondent makes prominent use of a logo, as shown below. Complainant argues that this use deliberately plays on the logo used by Complainant.
Complainant’s logo is as follows:
Respondent’s logo is as follows:
Plainly there is merit in Complainant’s argument.
Further, Complainant contends that Respondent uses the same address used by Complainant in Frankfurt, Kentucky for its registered office in Kentucky. Further details are provided above. Again, the argument has clear merit and in the absence of an attempt to explain this coincidence the Panel concludes that Complainant has established that Respondent has no rights or legitimate interests in the Domain Name.
Based on the above, the Panel is satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
For the reasons discussed under the previous ground the Panel finds that Respondent registered and used the Domain Name in bad faith. This finding is supported by the following circumstances. First, that Respondent appears to have previously registered and used the <travelscapellc.com> domain name, pointing towards a pattern of behaviour. Secondly, under these particular circumstances, given Respondent has concealed its identity by using a privacy service and by using contact information.
The Panel agrees with Complainant’s supported allegation that Respondent has sought to pass itself off as Complainant for purposes of pursuing a fraudulent scheme on unsuspecting consumers by using Complainant’s TRAVELSCAPE name and mark, adopting a logo that is similar to Complainant’s TRAVELSCAPE logo and featuring Complainant’s address for its registered office in Frankfurt, Kentucky on Respondent’s website which makes it clear that Respondent has targeted Complainant.
Given the above, the Panel finds that Respondent must have known of Complainant and its business activities and registered and is using the Domain Name to take bad faith advantage of Complainant’s Mark.
The Panel thus finds that the third limb of the Policy has been met.
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 <travelscapeincorp.com> be transferred to Complainant.
Clive L. Elliott Q.C.
Date: December 22, 2020