WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fareportal Inc. v. Shashank Lakhotia, Fly Buzz Travel Solutions Pvt Ltd / John Anderson, Cheapofly.co
Case No. D2016-2452
1. The Parties
The Complainant is Fareportal Inc. of New York, New York, United States of America (“United States”), represented by Cowan, DeBaets, Abrahams & Sheppard, LLP, United States.
The Respondents are Shashank Lakhotia, Fly Buzz Travel Solutions Pvt Ltd of Delhi, India / John Anderson, Cheapofly.co of Beverly Hills, California, United States.
2. The Domain Names and Registrar
The disputed domain names <cheapoairtech.com>, <cheapofly.co>, <cheapofly.com> and <cheapoflytech.com> 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 3, 2016. On December 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 6, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details. The Complainant filed an amended Complaint on December 13, 2016.
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 Respondents of the Complaint, and the proceedings commenced on December 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2017. The Respondent Cheapofly.co sent an email to the Center on December 15, 2017 requesting a further copy of the Complaint. The Respondents did not submit any formal response. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on January 5, 2017.
The Center appointed William R. Towns as the sole panelist in this matter on January 11, 2017. 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 technology company that develops computer software for travel-related services and operates a leading Internet-based travel agencies at “www.cheapoair.com” (the “Complainant’s website” or “Fareportal website”). The Complainant describes the website as offering high-value, low-cost travel-related services such as airfare, lodging, car rentals, and vacation packages. Since as early as July 1, 2005, the Complainant has used the trademarks CHEAPOAIR, CHEAPOAIR.COM, and WWW.CHEAPOAIR.COM (the “CHEAPOAIR Marks”) in reference to its travel-related services. The Complainant is the owner of United States trademark registrations for CHEAPOAIR, CHEAPOAIR.COM, and WWW.CHEAPOAIR.COM, issued by the United States Patent and Trademark Office on February 17, 2009, May 5, 2015, and April 28, 2015, respectively.
The disputed domain names <cheapofly.com> and <cheapofly.co> were registered by Shashank Lakhotia and Fly Buzz Travel Solutions Pvt Ltd on September 25, 2006, and October 28, 2014, respectively. The disputed domain names <cheapoairtech.com> and <cheapoflytech.com> were registered by John Anderson, Cheapofly.co on June 24, 2016. The disputed domain names <cheapofly.com> and <cheapofly.co> resolve to websites offering travel-related services in competition with the Complainant. These websites feature logos that are similar to the Complainant’s stylized CHEAPOAIR mark. The disputed domain names <cheapoairtech.com> and <cheapoflytech.com> resolve to pay-per-click (“PPC”) websites providing links (“sponsored listings”) to travel-related websites, including those of some of the Complainant’s competitors.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain names are confusingly similar to the Complainant’s CHEAPOAIR Marks, in that each of the disputed domain names combine the distinctive element of the Complainant’s marks (i.e., “cheapo”) with descriptive terms associated with air travel (i.e., “fly”) or the Complainant’s technology business (i.e., “tech”). The Complainant further observes that the disputed domain name <cheapoairtech.com> incorporates the Complainant’s CHEAPOAIR mark in its entirety. The Complainant asserts that the addition of the descriptive words “fly” and “tech” does not serve to distinguish the disputed domain names from the Complainant’s mark. The Complainant further submits that it CHEAPOAIR Marks are distinctive and well-known.
The Complainant asserts that the Respondents have no rights or legitimate interests in the dispute domain names and are not using the disputed domain names in connection with a bona fide offering of goods or services, or otherwise making a legitimate noncommercial or fair use of the disputed domain names. The Complainant avers that the Respondents have not been licensed or otherwise authorized to use the Complainant’s marks, and that there is no evidence the Respondents have been commonly known by the disputed domain names.
The Complainant submits that the Respondents are using the disputed domain names to create “initial interest confusion” in order divert Internet users seeking the Complainant’s website to the Respondents’ websites. The Complaint contends that Internet users arriving at one of the Respondents’ websites offering competing travel-related services are likely to believe they have reached the Complainant’s official websites, and that Internet users arriving at one of the Respondents’ PPC parking sites will encounter “sponsored listings” with links to other travel-related websites providing services competing with those of the Complainant.
The Complainant contends that the Respondents registered and are using the disputed domain names in bad faith. The Complainant submits that the Respondents had actual knowledge of the Complainant’s rights in the CHEAPOAIR Marks when registering the dispute domain names. The Complainant explains that it has had an online presence and has been successfully providing travel-related goods and services since 2005, such that the Respondents cannot credibly claim to have been unaware of the Complainant’s marks. The Complainant reiterates that the Respondents have registered multiple domain names appropriating the central aspect of the Complainant’s marks (“cheapo”) and have used the disputed domain names with websites providing travel-related services or advertising links to travel-related services.
The Complainant urges that the Respondents’ websites offering travel-related services have adopted the look and feel of the Complainant’s website, which is further evidence of the Respondents’ bad faith, and that the Respondents’ use of the disputed domain names to attract Internet users to PPC websites with links to competing travel-related services is indicative of bad faith. The Complainant submit that the Respondents are using the disputed domain names to attract for commercial gain Internet users to the Respondents’ websites by creating a likelihood of confusion with the Complainant’s CHEAPOAIR Marks as to affiliation or endorsement by the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Preliminary Issue: Respondent Identity
Complaints involving multiple domain names with more than one nominal respondent are subject to consolidation in circumstances where the domain names or the websites to which the resolve are subject to common control and consolidation would be equitable and procedurally efficient. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.16. Based on the uncontroverted facts and circumstances in the record as discussed above, it appears to the Panel that the disputed domain names and the websites to which they resolve are subject to common control. The Panel notes that the registrant organization in the WhoIs records for the disputed domain names <cheapoairtech.com> and <cheapoflytech.com> is Cheapofly.co, which is one of the disputed domain names registered to Shashank Lakhotia and Fly Buzz Travel Solutions Pvt Ltd. The Panel considers this more than mere coincidence. In the totality of circumstances in the record the Panel finds it would be both equitable and procedurally efficient to allow the Complainant to proceed against the Respondents in a single consolidated complaint.
7. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name is the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
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, previous UDRP 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) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the 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.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s marks, in which the Complainant has established rights through registration and use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this case, each of the disputed domain names incorporates of the distinctive element of the Complainant’s marks – “cheapo”, and one of the disputed domain names incorporates the Complainant’s CHEAPOAIR mark in its entirety. The addition in the disputed domain names of the descriptive words “fly” and “tech” does not dispel the confusing similarity. See, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondents have not been authorized to use the Complainant’s CHEAPOAIR Marks. Each of the disputed domain names incorporates the dominant element of the Complainant’s marks. Two of the disputed domain names resolve to websites offering travel-related services in direct competition with the Complainant, and the other two disputed domain name resolve to PPC parking sites featuring advertising links to websites offering travel-related services similar to those offered by the Complainant.
Pursuant to paragraph 4(c) of the Policy, the respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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 he 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.
The Respondents have not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondents’ registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy.
The Panel concludes that the Respondents more likely than not were aware of the Complainant and the Complainant’s CHEAPOAIR Marks when registering the disputed domain names. There is in the Panel’s view a high probability that the Respondents registered the disputed domain names with the aim of exploiting and profiting from the Complainant’s marks through the creation of Internet user confusion. Internet users arriving at the travel service websites to which these disputed domain names <cheapofly.com> and <cheapofly.co> resolve easily could assume these websites are affiliated with, sponsored, or endorsed by the Complainant. The Respondents’ use of the disputed domain names <cheapoairtech.com> and <cheapoflytech.com> to divert Internet users to PPC parking pages featuring travel-related advertisements similarly depends on the creation of Internet user confusion.
Having regard to all of the relevant circumstances in this case, and absent any explanation from the Respondents, the Panel finds that the Respondents’ use of the disputed domain names as described above does not constitute use in connection with a bona fide offering of goods or services within the contemplation of paragraph 4(c)(i) of the Policy. Nor are the Respondents making a legitimate noncommercial or fair use of the disputed domain names within the meaning of paragraph 4(c)(iii) of the Policy. The Respondents obviously have not been authorized to use the Complainant’s marks, and in light of the foregoing the Panel finds that the Respondents have not been commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondents’ conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. It is evident that the Respondents were aware of the Complainant and the Complainant’s CHEAPOAIR Marks when registering the disputed domain names. It is a reasonable inference in the circumstances of this case that the Respondents registered the disputed domain names based on the attractiveness of the Complainant’s marks, in order to drive traffic to the Respondents’ websites, where the Respondents offer travel-related services competitive with those of the Complainant, and PPC advertising links to other websites offering travel-related services. In the attendant circumstances of this case, the Panel considers it more likely than not that the Respondents’ primary motive in relation to the registration and use of the disputed domain names was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights, for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
8. Decision
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 names <cheapoairtech.com>, <cheapofly.co>, <cheapofly.com>, and <cheapoflytech.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: January 25, 2017