The Complainant is Momondo A/S of Copenhagen, Denmark, represented by Horten Advokatpartnerselskab, Denmark.
The Respondent is Green Eye Evolvement Pty Ltd., of South Melbourne, Australia.
The disputed domain name <momondo.com.au> is registered with NetRegistryPty Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2013. On November 12, 2013, the Center transmitted by email to NetRegistry Pty Ltd. a request for registrar verification in connection with the disputed domain name. On November 18, 2013, NetRegistry Pty Ltd. 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 .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 November 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2013.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on December 31, 2013. 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.
The Panel notes that on December 12, 2013, the Respondent wrote to the Center asking if a late Response could be filed. Although the Center did not squarely answer that enquiry, no Response was in fact submitted after December 12, 2013. The Panel is satisfied in treating this case as one in which no Response was made.
The facts relevant to the findings and decision in this case are that:
1. the Complainant uses the name MOMONDO (the “Trade Mark”) and is the owner of International Trade Mark Registration No. 1053763 for the Trade Mark (designating Australia, amongst other countries) with a filing date of September 24, 2010;
2. the Respondent was an Australian company which was deregistered on August 19, 2012;
3. the disputed domain name was registered on October 9, 2012;
4. the disputed domain name is parked;
5. there has been no commercial or other relationship between the parties and the Complainant has not authorized the Respondent to use the Trade Mark or to register any domain name incorporating the Trade Mark;
6. Prior to filing of the Complaint, the Respondent contacted the Complainant offering to sell the domain name to the Complainant.
The Complainant asserts rights in the Trade Mark and alleges that the disputed domain name is confusingly similar to the Trade Mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and/or used the disputed domain name in bad faith.
The Respondent did not reply to the Complaint.
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered or subsequently used in bad faith.
Having considered the Complaint and the available evidence, the Panel finds the following:
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether the Complainant has rights in the Trade Mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the Trade Mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy.1 The Complainant provides evidence of registration of the Trade Mark and so the Panel is satisfied that it has trade mark rights.
The disputed domain name is, for the purposes of the Policy, identical to the Complainant’s Trade Mark since the country code Top Level Domain (“ccTLD”), “.com.au” is trivial and of no distinguishing value.2
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
The Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the burden of production shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests.3
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a disputed domain name:
“(i) before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or
(ii) you (as an individual, business, or other organisation) 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 non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue.”
The publicly available WhoIs database does not support any conclusion that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has trade mark rights in the disputed domain name, registered or not. Further, the Complainant has not authorized the Respondent to use the Trade Mark. The disputed domain name is parked and by the Respondent’s own admission, has never been used. Accordingly, it has not been used in connection with a bona fide offering of goods or services. The fact that the Respondent’s company was deregistered some time ago underscores that finding.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and so the burden of production shifts to the Respondent to establish a right or legitimate interest in the disputed domain name. In the absence of a Response, that case is not rebutted and so Panel finds that Respondent has no rights or legitimate interests in the disputed domain name and so finds that Complainant has satisfied the second limb of the Policy.
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration or use of a domain name in bad faith. They are:
“(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 another person 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 a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business or activities of another person; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.”
The Panel finds that the Respondent’s actions fall squarely under paragraph 4(b)(i) above. The following facts are determinative of that finding. The term “momondo” has no meaning in the English language. There has been no use of the disputed domain name by the Respondent. The Respondent initiated contact with the Complainant to sell the domain name to the Complainant. The Respondent indicated that it would sell the name to another if the Complainant did not take up that purchase offer. The amount which the Respondent insinuated it would be prepared to accept for the disputed domain name far exceeded out-of-pocket registration costs. No Response was made to the Complaint.
The Panel finds that the Respondent registered and used the disputed domain name in bad faith and, accordingly, the Complainant has satisfied the third and final limb of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <momondo.com.au> be transferred to the Complainant.
Debrett G. Lyons
Sole Panelist
Date: January 13, 2014
1 See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. 705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. 174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
2 See Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. 153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
3 See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828; AOL LLC v. Jordan Gerberg, NAF Claim No. 780200.