WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lotus Group Ltd v. Moniker Privacy Services/Total Net Solutions

Case No. D2008-0744

1. The Parties

Complainant is Lotus Group Ltd, Sandpiper House, London, United Kingdom of Great Britain and Northern Ireland, represented by Stephen Mason Solicitors, United Kingdom of Great Britain and Northern Ireland.

Respondent is Moniker Privacy Services/Total Net Solutions, Greensborough, Victoria, Australia.

2. The Domain Name and Registrar

The disputed domain name <dialflight.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2008. On May 14, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with several domain names regarding which the Complaint was initially filed. On June 3 , 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for several disputed domain names that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 4, 2008, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint with respect to the disputed domain name. Complainant filed an amended Complaint on June 5, 2008. 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”), 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 Respondent of the Complaint, and the proceedings commenced on June 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 9, 2008.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on July 15, 2008. 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 has registered the word service mark DIAL-A-FLIGHT on the Trade Marks Registry of the United Kingdom Intellectual Property Office (UKIPO), registration number 2027383, dated July 18, 1995, in International Class (IC) 39, covering, inter alia, travel agency and booking services (Complaint, Annex 2). Complainant has registered the word and design service mark DIALAFLIGHT on the Trade Marks Registry of the UKIPO, registration number 2379521, dated December 3, 2004, in IC 39, covering, inter alia, travel agency and booking services (id.). Complainant has furnished copies of certificates of registration with respect to the aforesaid marks.

Complainant makes substantial use in commerce of its DIAL-A-FLIGHT and DIALAFLIGHT service marks. It uses those marks to advertise travel services in print media and through its commercial Internet website at “www.dialaflight.com”. Complainant has expended substantial financial resources advertising and promoting its travel agent (and related) services (Complaint, Annex 3, Affidavit of Mr. Stephens). Complainant has earned substantial revenues from its travel agency business, and approximately 60% of that business is today generated through its commercial Internet website (Complaint).

According to the Registrar’s verification report, Respondent is the registrant of the disputed domain name <dialflight.com>. According to a Moniker.com WHOIS database search report dated May 14, 2008, provided by Complainant the record of registration of the disputed domain name was created on October 16, 2002. The public WHOIS database shows Moniker Privacy Services as the registrant of the disputed domain name, and the Registrar provided the name of the real party in interest, Total Net Solutions.

The disputed domain name has for a substantial period of time been used to host a website that provides links to sponsored listings for a variety of travel-related services, including recently, for example, links to “International Flights”, “US premium class flights”, “Cheapest Flights”, and “Airline Tickets”, as well as links to other “Popular Categories” such as “Financial Planning” (Complaint, Annex 4). The link headings and sponsoring organizations appear to vary with some frequency over time, suggesting that content on the website identified by the disputed domain name is generated by a computer software algorithm. The website appears to be a typical type of revenue-generating “link farm”.

Complainant has furnished a computer printout of a search conducted from the WIPO Resources Web page showing two proceedings under the Policy in which Respondent was the complained-against party. However, Complainant’s references to the substance of these proceedings is insufficiently linked to particular decisions to permit the Panel to draw any conclusion from these references. The Panel did not endeavor to undertake further legal research for Complainant in this regard.

The Registration Agreement in effect between Respondent and Moniker Online Services, LLC, subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant asserts registration ownership for the UK trademark “Dialaflight” since 1995. Complainant argues that the disputed domain name <dialflight.com> is similar to its registered trademark, with one letter “a” missing.

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant states that there is no evidence: (1) that Respondent has used or made preparations to use the domain name in a bona fide offering of goods or services, (2) that Respondent is commonly known by the domain name, (3) that Respondent possesses any relevant trademark or service mark rights, or (4) that Respondent is making legitimate noncommercial or fair use of the disputed domain name. Complainant indicates that the evidence shows that Respondent has consistently used the disputed domain name to direct Internet users to third-party links and has used its website for “merely ‘parking’ information on the page with no view to legitimate use.”

Complainant argues that Respondent registered and has used the disputed domain name in bad faith for commercial gain to attract Internet users to its website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or products or services at that site. Complainant further alleges that Respondent has been cited as a respondent in previous WIPO UDRP proceedings and “[o]n reading some of the decisions listed, it is clear that this company is in the business of domain name re-sale.”

Complainant argues that Respondent is likely disrupting its business by diverting potential customers to other travel agencies and away from Complainant.

Complainant indicates that Respondent either is commercially gaining through resale of domain names with high website traffic, or is receiving click through fees directly or indirectly from sponsored enterprises on Respondent’s website.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The Center transmitted the Notification of Complaint and Commencement of Administrative Proceeding to Respondent by email and express courier to the address provided in its record of registration. The real party in interest of Respondent (Total Net Solutions) uses a domain name privacy shield with the same physical post office box address as the privacy shield provider. Despite efforts by the express courier at the specified delivery location (in Australia) to determine a means to effect delivery of the Complaint to Respondent, the courier was unable to complete delivery. There has been no email response in this proceeding from Respondent (privacy shield or real party in interest). The Panel does not draw a negative factual inference from Respondent’s use of a privacy shield in its domain name registration. However, Respondent bears the risk associated with communications through a privacy shield.

The Center has taken those steps designated by the Rules for discharging its responsibility to provide notice of the proceedings to Respondent. The Panel is satisfied that Respondent was given adequate notice of these proceedings within the context of the Policy and Rules, and that each party has been given adequate opportunity to present its position.

A. Identical or Confusingly Similar

Complainant has demonstrated ownership of service mark rights in the United Kingdom for DIAL-A-FLIGHT and DIALAFLIGHT through registration and use in commerce (see Factual Background, supra). Respondent has not contested Complainant’s rights in the DIAL-A-FLIGHT and DIALAFLIGHT service marks. The Panel finds that Complainant has service mark rights in DIAL-A-FLIGHT and DIALAFLIGHT.

The disputed domain name <dialflight.com> differs from Complainant’s service marks by exclusion of the letter “a”, with and without surrounding hyphens. (Addition of the gTLD “.com” in the disputed domain name is not relevant for purposes of comparison here). In each case for comparison (with and without the hyphens surrounding the letter “a”), the visual impression, sound and meaning of the disputed domain name is substantially similar to the service mark.

The only plausible argument against confusing similarity of the disputed domain name with the service marks lies in the fact that the service marks are largely descriptive of a form of service. A somewhat wider range of tolerance may be given to users of similar terms in domain names in cases of comparison with descriptive marks than in cases of comparison with inherently distinctive marks. One objective of trademark law is to preserve common (e.g., descriptive) language for use by the public, including in domain names, and descriptive domain names are more likely to reflect common usage of language.

However, in this case, “dial flight” as used in the disputed domain name is not a combination of descriptive terms commonly used in the English language. Complainant’s service mark combinations DIAL-A-FLIGHT and DIALAFLIGHT are closer to a common usage. Respondent’s combination appears to use a less common combination of terms (“dial flight”) to take advantage of more common combinations of terms (e.g., “dial-a-flight”) that were given trademark protection by the UKIPO. The Panel does not consider the relatively descriptive nature of Complainant’s service marks to provide a safe haven for Respondent. The Panel concludes that the disputed domain name <dialflight.com> is confusingly similar to Complainant’s DIAL-A-FLIGHT and DIALAFLIGHT service marks.

Complainant has established rights in a service mark and that disputed domain name is confusingly similar to that service mark.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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.” (Policy, paragraph 4(c))

Respondent has not been authorized by Complainant to use its DIAL-A-FLIGHT and DIALAFLIGHT service marks. There is no evidence to show that Respondent has been commonly known by the disputed domain name.

Respondent is using the disputed domain name that is confusingly similar to Complainant’s service marks to direct Internet users to a website offering services directly competitive with those of Complainant. Respondent is acting solely as a conduit to third party offers of services, and is presumably receiving some form of compensation for click-throughs to such third party offers¹ or, as suggested by Complainant, is attempting to establish a higher resale value for the disputed domain name. In taking advantage of the goodwill associated with Complainant’s mark to offer services of third parties, including direct competitors of Complainant, Respondent does not make a bona fide offering of services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Fifth Third Bancorp v. Texas International Property Associates, WIPO Case No. D2007-0537 and MasterCard International Incorporated v. Paul Barbell, WIPO Case No. D2007-1139.

Respondent is not making fair use of Complainant’s service mark. Respondent is using the domain name in a way that misleads Internet users for commercial gain. As noted above in the discussion of confusing similarity, the term “dial flight” is not one of sufficiently common English-language usage to inherently encompass fair commercial use.

Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include circumstances indicating that “by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [respondent’s] website or location or of a product or service on your website or location” (id., paragraph 4(b)(iv)).

Respondent has used the disputed domain name, which is confusingly similar to Complainant’s service marks, for the purpose of intentionally attracting for commercial gain Internet users to Respondent’s website, by creating confusion as to source, sponsorship, affiliation or endorsement by Complainant of Respondent’s website. While Respondent’s website is being addressed by terms confusingly similar to Complainant’s service marks, the content on Respondent’s website refers to and links to third parties offering services directly competitive with those of Complainant. Respondent is presumably receiving some form of compensation for click-throughs to such third party competitors.² Such use of the disputed domain name constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

Complainant has satisfied each of the three elements necessary for a finding of abusive domain name registration and use within the meaning of the Policy.

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, <dialflight.com> be transferred to Complainant.

Frederick M. Abbott
Sole Panelist

Dated: July 27, 2008

¹ Even if Respondent is not directly receiving compensation, the party responsible for placing content on Respondent’s website presumably is receiving compensation. Respondent is ultimately responsible for the content of its website and the commercial activities conducted through it.

² Or, as noted above, is seeking to enhance the value of the disputed domain name for purposes of resale.