WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Viajes Iberojet, S.A. v. Kil Tae Hwang

Case No. D2011-0761

1. The Parties

Complainant is Viajes Iberojet, S.A., Palma de Mallorca, of Spain, represented by Landwell, PricewaterhouseCoopers, Spain.

Respondent is Kil Tae Hwang, of Daegu, the Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <vivatours.com> (the “Domain Name”) is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com.

3. Procedural History

Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2011. On May 3, 2011, the Center transmitted by email to Korea Information Certificate Authority Inc. d/b/a DomainCa.com. a request for registrar verification in connection with the Domain Name. On May 4, 2011, Korea Information Certificate Authority Inc. d/b/a DomainCa.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On May 4, 2011, the Center issued a Language of Proceedings notification, inviting comment from the parties. Complainant submitted a request that English be the language of the proceedings and Respondent submitted a request that Korean be the language of the proceeding on May 6 and 9, 2011 respectively. On May 9, 2011, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available and also advised the parties that the administrative panel (when appointed) would have the authority to determine the language of the proceeding.

The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2011. The Response was filed with the Center on May 29, 2011.

The Center appointed Andrew J. Park as the sole panelist in this matter on June 14, 2011. 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 travel tour operator first established in 1973. It is the owner of the trademark VIVA TOURS and has operated tour services under that name since 1999. In 2008, more than 200,000 travelers used Complainant’s tour services. Viva Tours is a leading tour operator in Spain and is also recognized on a worldwide basis.

Complainant’s trademark VIVA TOURS is registered in multiple International Classes in Spain and in the European Community. The trademark applications for the VIVA TOURS mark were applied for as early as October 26, 1998.

Complainant is also the registrant of the following domain names:

Domain Name: Registration Date:

a. <www.vivatours.es> April 26, 1999

b. <www.vivatours.pt> July 20, 2006

c. <www.vivatours.eu> April 12, 2006

Respondent Kil Tae Hwang is an individual of the Republic of Korea. Respondent obtained the Domain Name to give to a friend as a present so that the friend could use it in connection with a travel agency business it planned to start. However, the Respondent’s friend ultimately abandoned its efforts to start said travel agency and, as a result, Respondent continued to hold the Domain Name without using same.

5. Parties’ Contentions

A. Complainant

Complainant’s main arguments are the following:

1. Identical or Confusingly Similar

Complainant contends that the Domain Name is identical to its various registered VIVA TOURS trademarks, and domain names. Accordingly, Complainant argues that the Domain Name is identical and/or confusingly similar to a trademark in which it has rights.

2. Rights or Legitimate Interests

Complainant contends that Respondent is not commonly known by the Domain Name and that Respondent’s website under the Domain Name lacks content. Complainant also contends that the website under the Domain Name merely directed users to a “landing site” to other websites, including to those of Complainant’s competitors. Complainant argues that the Domain Name is currently parked. Thus, Complainant contends that all of the foregoing show that Respondent has no legitimate rights to the Domain Name.

3. Registered and Used in Bad Faith

Complainant contends that its trademark registrations predate the registration date of the Domain Name and that given the identical nature of the Domain Name to its well-known VIVA TOURS mark, Respondent must have known of Complainant’s trademark rights and must have registered the Domain Name in bad faith.

Complainant also contends that the name Viva Tours has no meaning nor significance in the Korean language and therefore, it is not reasonable nor credible for Respondent, as a Korean citizen, to randomly select and register the Domain Name unless it wanted to take advantage of Complainant’s VIVA TOURS mark.

B. Respondent

Respondent contends that it registered the Domain Name with the intention of giving it to a friend as a present so that the friend could use it in connection with its prospective travel agency business. Respondent further claims that the friend ultimately abandoned its efforts to start the travel agency business and therefore, Respondent continued to hold the Domain Name without use.

Respondent argues that the meaning of the word “viva” is widely known among Koreans because of uses in such songs as the band Coldpla’s Viva La Vida and Elvis Presley’s Viva Las Vegas. Respondent also argues that there are various domain names that are composed of the word “viva” that are used in connection with various subjects, such as tourism (“www.vivatour.kr”), financial institutions (“www.hanaviva.com”), and cosmetics (“www.viva-korea.com”).

6. Discussion and Findings

6.1 Language of the Proceedings

Although the language of the registration agreement, and accordingly the default language of the proceedings is Korean, the circumstances may permit this Panel to determine otherwise having regard to fairness to the parties and procedural cost-efficiency and expedition (e.g., Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical applicance co. ltd., WIPO Case No. D2008-0293).

Complainant submitted that English should be the language of the proceedings on the grounds that Respondent has familiarity with the English language and that Complainant is not able to communicate in Korean.

In determining the language of the proceedings, the Panel must balance fairness to the parties against any procedural cost-efficiency and speed that may be gained by departing from the default language of the proceedings. The reasoning cited by Complainant is helpful to address the question of whether English should be the language of the proceedings in preference to the default language. The Panel is, for example, persuaded by the fact that Respondent effectively communicated with Complainant via email in English and that Respondent chose to submit its response brief in part, in English, despite having the opportunity to submit same in Korean.

Accordingly, the Panel concludes that it will (1) proceed in line with the Center’s preliminary decision to accept the Complaint as filed in English; and (2) issue a decision in English.

6.2 Analysis of the Complaint

Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the Domain Name to Complainant. Those requirements are that: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith.

The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules.

A. Identical or Confusingly Similar

Complainant has established its rights in the mark VIVA TOURS by virtue of the evidence of its trademark registrations in Spain and the European Community, and its various registered domain names. The Panel is therefore satisfied that VIVA TOURS is a registered trademark owned by Complainant.

The next question is whether the Domain Name is identical or confusingly similar to the trademark. The answer is that it is. The Domain Name consists, first of all, of the entirety of Complainant’s VIVA TOURS trademark. Further, the Domain Name is identical to Complainant’s VIVA TOURS trademark when the “.com” TLD and the “.ch” ccTLD are discounted.

Secondly, the Domain Name does not have any additional words as part of it that detract from or minimize the effect and dominance of the VIVA TOURS trademark in the Domain Name.

For the above reasons, the Panel finds that the Domain Name is identical or confusingly similar to Complainant’s VIVA TOURS trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the Domain Name. Those circumstances are described as follows:

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.

Complainant owns a trademark registration for VIVA TOURS that is registered in Spain and the European Community. Complainant also owns the domain name <vivatours .es> and others referring to the trademark VIVA TOURS where it conducts sales and marketing of tour services under the “Viva Tours” name. On the other hand, Respondent does not appear to own a registered trademark with the term “Viva Tours” and does not otherwise appear to trade under the name “Viva Tours.” Moreover, Complainant has not authorized, licensed, or otherwise consented to the use of the mark VIVA TOURS by Respondent or any person operating the website to which the Domain Name directs Internet users. Further, Respondent has not provided any evidence that it is commonly known by the Domain Name. In fact, Respondent acknowledges that it merely registered the Domain Name in order to give it to a friend as a gift for the friend to use. Thus, Respondent never had rights nor a legitimate interest under the Policy in owning/using the Domain Name itself.

Under these circumstances and absent evidence to the contrary, the Panel is unable to find any evidence that would establish that Respondent has rights or legitimate interests in respect of the Domain Name.

For the above reasons, the Panel finds that Respondent does not have rights or legitimate interests with respect to the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following conduct is sufficient to support a finding of bad faith:

(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 website 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 website or location or of a product or service on your website or location.

The evidence shows that Respondent had attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with Complainant’s VIVA TOURS trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or a product or service on Respondent’s website. Accordingly, the Panel finds that the only credible explanation for the use of the Domain Name is to take advantage of the similarity between the Domain Name and Complainant’s website to draw Internet users to that site for commercial advantage. No convincing evidence has been presented showing that Respondent has any connection to the name “VIVA TOURS.”

Additionally, the Panel finds that Respondent’s behavior constitutes evidence of the registration and use of the Domain Name in bad faith under paragraph 4(b)(iv). As discussed above, by the time the Domain Name was registered to Respondent, Complainant had already established a reputation as a tour operator under VIVA TOURS.

For the above reasons, the Panel finds that Complainant has shown that the Domain Name has been registered and is being used in bad faith by Respondent.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <vivatours.com> be transferred to Complainant.

Andrew J. Park
Sole Panelist
Dated: June 26, 2011