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 Respondent is Rudi Seiberlich of Pieve di Teco, Italy.
The disputed domain name <onetravelweb.com> (the "Domain Name") is registered with TierraNet d/b/a DomainDiscover (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 30, 2015. On November 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 3, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 6, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 27, 2015.
The Center appointed Nicholas Smith as the sole panelist in this matter on December 3, 2015. 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.
On December 9, 2015, the Panel issued the following Panel Order:
"Under the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), the Panel may, at its sole discretion request, in addition to the complaint and the response, further statements or documents from either of the Parties.
The Panel notes that:
1) The Domain Name <onetravelweb.com> was registered by the Respondent on June 20, 2003.
2) The Complainant's ONETRAVEL Mark was registered on June 10, 2014.
3) The consensus view of UDRP Panelists is that there are only limited circumstances in which a domain name can be registered in bad faith if the domain name was registered prior to the registration of the corresponding trade mark, as illustrated in section 3.1. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the "WIPO Overview 2.0").
4) While the registration for the ONETRAVEL Mark states that its first use in commerce was December 31, 1998 the Complaint as filed provides no evidence, as opposed to assertions, to illustrate:
a) that the Complainant had unregistered mark rights in the ONETRAVEL Mark on or before June 20, 2003; or
b) that the ONETRAVEL Mark had a significant reputation on or before June 20, 2003 such that the Respondent must have been aware of it at the time of the registration of the Domain Name.
5) The Complaint makes numerous references to the website at "www.sky-tours.com" (the "Infringing Website") but fails to provide any evidence of any connection between the Respondent and the Infringing Website, and the content on the website.
Therefore the Panel makes the following orders:
1) The Complainant has until December 15, 2015 to make further submissions or file any additional evidence that it sees fit (including technical or affidavit evidence):
a) to support its claims of use of the ONETRAVEL Mark on or before June 20, 2003;
b) to show any reputation in or advertising featuring the ONETRAVEL Mark on or before June 20, 2003;
c) to support its claims that the Respondent registered the Domain Name on June 20, 2003 take advantage of the Complainant's reputation in the then unregistered ONETRAVEL Mark;
d) to show any connection between the Respondent and the Infringing Website.
The additional evidence/submissions should be served on the Respondent using the e-mail address "[…]".
2) The Respondent shall thereafter have an opportunity to provide any submission or any evidence in reply it may choose to make regarding the Complainant's additional evidence/submissions in response to this Panel Order, by December 21, 2015.
3) Any submissions or amended documents should be submitted to the WIPO Arbitration and Mediation Center by email to "[…]@wipo.int" for forwarding to the Panel.
4) The Panel will deliver its decision on or before December 26, 2015."
On December 15, 2015, the Complainant filed its additional submission. The Respondent did not file any submission.
On December 22, 2015 the Panel issued the following Panel Order:
"Under the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), the Panel may, at its sole discretion request, in addition to the complaint and the response, further statements or documents from either of the Parties.
The Panel notes that:
1) Both the ONETRAVEL Mark and the ONETRAVEL.COM Mark are registered to WK Travel, Inc.;
2) The Complainant, in the Complaint and the Supplemental Submission asserts that WK Travel, Inc. is "its affiliate".
3) Neither the Complainant nor the Supplemental Submission provides any evidence in support of the above assertion.
4) Paragraph 4(a) of the Policy requires that a complainant prove that the domain name is identical or confusingly similar to a trade mark in which it has rights.
5) Section 1.8. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the "WIPO Overview 2.0"), provides in response to the question: "Can a trademark licensee or a related company to a trademark holder have rights in a trademark for the purpose of filing a UDRP case?", that
"Consensus view: In most circumstances, a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP. For the purpose of filing under the UDRP, evidence of such license and/or authorization of the principal trademark holder to the bringing of the UDRP complaint would tend to support such a finding. Panels have in certain cases been prepared to infer the existence of a license and/or authorization from the particular facts, but in general, relevant evidence is desirable. Although not a requirement, panels have on occasion found it helpful, where a complaint relies on a common source of trademark rights, for all relevant rights holders to be included as co-complainants."
Therefore the Panel makes the following orders:
1) The Complainant has until December 29, 2015 to:
a) make further submissions or file any additional evidence that it sees fit evidencing the relationship between itself and WK Travel, Inc, such that it has rights in the ONETRAVEL Mark and the ONETRAVEL.COM Mark; or
b) Amend the Complaint to include WK Travel, Inc as a co-complainant or replacement Complainant.
The additional evidence/submissions should be served on the Respondent using the email address […].
2) The Respondent shall thereafter have an opportunity to provide any submission or any evidence in reply it may choose to make regarding the Complainant's additional evidence/submissions in response to this Panel Order, by January 6, 2015.
3) Any submissions or amended documents should be submitted to the WIPO Arbitration and Mediation Center by email to […]@wipo.int for forwarding to the Panel.
4) The Panel will deliver its decision on or before January 13, 2015."
On December 30, 2015, the Complainant filed its additional submission. The Respondent did not file any submission.
The Complainant is a technology company based in the United States that develops computer software to power-travel-related websites. In particular, the Complainant owns and operates an Internet-based travel agency at the website "www.onetravel.com" ("Complainant's Website").
The Complainant, through its wholly-owned subsidiary WK Travel, Inc. is the owner of a trade mark registration consisting of the word "ONETRAVEL" (the "ONETRAVEL Mark"), which it first registered in the United States on June 10, 2014, with a date of first use in commerce on December 31, 1998. The ONETRAVEL Mark is registered for certain services in class 39 and 43 including "Providing an online computer database in the field of travel information services; travel and tour information services; travel and tour ticket reservation services; travel services, namely, providing fare and rate information for transportation bookings and reservations for flights, car rentals, cruises, rail travel, and tours via computer; providing travel information and news via computer. The Complainant, again through its wholly-owned subsidiary WK Travel, Inc. is also the owner of the Community Trade Mark consisting of the word ONETRAVEL.COM (the "ONETRAVEL.COM Mark") which it first filed for registration on March 13, 2003, registered on April 27, 2005.
The Domain Name <onetravelweb.com> was registered on June 20, 2003. It currently resolves to an Internet site at "www.sky-tours.com" ("Respondent's Website") which appears to be a portal that offers various travel-related services including flights, hotel and car hire.
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant's ONETRAVEL Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the ONETRAVEL Mark having registered the ONETRAVEL Mark in the United States. The Complainant is also the owner of the ONETRAVEL.COM Mark having registered it as a Community Trade Mark.
The Domain Name consists of the ONETRAVEL Mark in its entirety with the addition of the generic term "web". The Domain Name is confusingly similar to the Complainant's ONETRAVEL Mark as the additional element is purely descriptive / generic and is not sufficient to distinguish the Domain Name from the ONETRAVEL Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name, nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is using the Domain Name to divert Internet traffic to the Respondent's Website for commercial purposes, intentionally leading consumers to the false impression that the website, which provides similar services to those owned by the Complainant, is owned by the Complainant. This constitutes prima facie evidence of no rights or legitimate interests.
The Domain Name was registered and is being used in bad faith. The Domain Name was registered with the Complainant in mind as it fully incorporates the Complainant's ONETRAVEL Mark and resolves to a website that offers identical travel-related services. It is the clear and obvious intention of the Respondent to attract consumers to its website under the misimpression that it is the Complainant's website and to profit from this confusion. The Respondent's conduct amounts to registration and use of the Domain Name in bad faith.
The Respondent did not reply to the Complainant's contentions.
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's trade or service mark.
The Complainant is the owner of the ONETRAVEL.COM Mark, having registrations for the ONETRAVEL.COM Mark as a trade mark in the United States.
The Domain Name consists of the ONETRAVEL.COM Mark, with the addition of the word "web". The addition of the word "web" does not prevent a finding of confusing similarity. An individual viewing the Domain Name may be confused into thinking that the Domain Name refers to a website on the World Wide Web run by the Complainant or otherwise associated with the Complainant. The Panel finds that the Domain Name is confusingly similar to the Complainant's ONETRAVEL.COM Mark and its ONETRAVEL Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
"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)).
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the ONETRAVEL Mark or a mark similar to the ONETRAVEL Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial use.
The Respondent uses the Domain Name to redirect to a website that sells identical services to those of the Complainant under the brand "Sky Tours". The use of the Domain Name to redirect to a website, either operated by the Respondent or a third party, to sell goods under a different brand, does not, in itself, amount to use of the Domain Name in connection with a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
For the purposes of paragraph 4(a)(iii) the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has 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 trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark 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) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted 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 the Respondent's website or location. (Policy, paragraph 4(b))
The Panel finds on balance that it is likely that the Respondent was aware of the Complainant and its reputation in the ONETRAVEL and ONETRAVEL.COM Mark at the time the Domain Name was registered. The Domain Name resolves to a website that appears to offer travel services that compete directly with the Complainant's services offered under the ONETRAVEL Mark. Furthermore the Respondent has failed to provide an alternative explanation for the registration of the Domain Name, given that it is presently used for a site that has no obvious connection with the Domain Name (being "Sky Tours").
The Respondent's conduct in registering the Domain Name when it was aware of the Complainant's rights and lacked rights and legitimate interests of its own amounts to registration in bad faith.
The Respondent is operating the Domain Name for the purposes of operating a website that sells goods and services that compete directly with the Complainant's goods and services. The Respondent is using the Domain Name that is confusingly similar to the ONETRAVEL Mark to sell services under the SKY TOURS brand in competition with the Complainant and without the Complainant's approval. Consequently the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant's ONETRAVEL Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's Website.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
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 <onetravelweb.com> be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: January 8, 2016