The Complainant is Amadeus IT Group, S.A. of Madrid, Spain, represented by UBILIBET, Spain.
The Respondent is Gilbert Li of North York, Canada.
The disputed domain names <amadeusbooking.com>, <amadeusbooking.info> and <amadeusbooking.net> are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2015. On November 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date 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 18, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2015.
The Center appointed Andrew Mansfield as the sole panelist in this matter on December 16, 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.
The Complainant has submitted uncontroverted evidence that the disputed domain names were registered by the Respondent, Gilbert Li. The Complainant’s lawyers contacted the Respondent by email, as proven by the Respondent’s return email dated July 9, 2015, in which the Respondent stated: “I registered the domain names, and I am planning to use them in the future for some projects.” The disputed domain names were registered on May 11, 2015, and are passively held.
The Complainant is the owner of the trademark AMADEUS registered in several jurisdictions since at least March 14, 1989.
The Complainant submitted evidence that it is a leading provider of advanced technology solutions for the global travel industry. It serves airlines, hotels, rail operators, and ferry service providers. It also serves travel agencies and travel websites as well as the buyers and consumers of those services. The Amadeus Group employs around 10,000 people across locations worldwide
The Complainant submits evidence that it is the owner of numerous registered trademarks worldwide consisting of the word “amadeus.” Among others, the Complainant specified the following trademarks for consideration by the Panel, all of which were registered before the registration date of the disputed domain names:
|
Trademark |
Registration no. |
Jurisdiction |
Nice classes |
|
AMADEUS |
1529969 |
United States |
35,39,42 |
|
AMADEUS |
0065689 |
Mexico |
43 |
|
AMADEUS |
1326907 |
Spain |
9 |
|
AMADEUS |
2536091 |
Spain |
9, 35, 39, 42 |
|
AMADEUS |
126995 |
Austria |
9, 16, 35, 39, 42 |
|
AMADEUS |
9766 |
Lithuania |
35, 36, 39, 42 |
|
AMADEUS |
002069375 |
European Union |
9, 12, 16, 35, 36, 38, 39, 42 |
|
AMADEUS |
344765 |
Canada |
35, 36, 39, 41, 42, 43 |
Evidence of a long history of use and various registrations was provided to the Panel. The products and services protected by the registered trademarks are mainly the following: (9) global travel and tourism promotion through sales programs using video and tv terminals, (39) travel agency services, (42) services rendered through an automatized global service of the reservations information for temporary accommodation and services not included in other classes, related to travel and tourism.
The Complainant submits that the three Policy elements are satisfied and requests the transfer of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain names are 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 in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the 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.
The Complainant has shown that it owns numerous trademark registrations in a large number of countries for the trademark AMADEUS.
The disputed domain names <amadeusbooking.com>, <amadeusbooking.info> and <amadeusbooking.net> are confusingly similar to the Complainant’s trademark AMADEUS. The trademark is incorporated in whole, and an additional word commonly associated with travel services is appended. The addition of the word “booking” to each disputed domain name does not eliminate confusing similarity. To the contrary, the addition of the word “booking” increases the likelihood of confusion.
Given the above, the Panel finds that the disputed domain names registered by the Respondent are confusingly similar to the Complainant’s trademark.
The first element of the Policy has, therefore, been met.
The Respondent registered the disputed domain names on May 11, 2015, long after the use of the trademarks in commerce had resulted in what those in the United States would term “common law rights”. The registration of the disputed domain names occurred far after the registration of the trademark AMADEUS by the Complainant with numerous national authorities.
Further, the Panel elects to consider the email correspondence between the Respondent and the Complainant’s attorneys. In that correspondence, the Respondent indicated that he had made no use of the disputed domain names but instead intended to do so at some point in the future.
There is no evidence in the record before the Panel demonstrating that the Respondent might be commonly known by the disputed domain names, or that the Respondent has any registered trademarks or trade names corresponding to the disputed domain names. The Respondent has not submitted any information that it intended to use the websites associated with the disputed domain names in a noncommercial manner.
The Panel does not lightly or automatically find that the Respondent has no rights or legitimate interests. Even when a respondent fails to participate in a UDRP dispute, the complainant is required to make out at least a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden shifts to the respondent to demonstrate rights or legitimate interests under the Policy. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is deemed to have satisfied the second element of the Policy.
The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not come forward with any appropriate allegations or evidence in this regard. Based on the evidence presented, the Panel concludes that the Respondent lacks rights or legitimate interests in the disputed domain names.
The second element of the Policy has, therefore, been met.
The Policy provides guidance on activities that might be considered evidence of bad faith registration and use of a domain name. That guidance is found in paragraph 4(b) of the Policy. Circumstances are described in paragraph 4(b) that might lead a panel to conclude that the registration and use of a disputed domain name is in bad faith. The description of the circumstances are addressed to the respondent. 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 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 web site 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 web site or location or of a product or service on your web site or location.
For all the below reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
The Complainant argues that it is “inconceivable” that the Respondent was unaware of its prior rights to the trademark AMADEUS. Further, the Complainant alleges that the addition of the word “booking” demonstrates a purpose to use or sell the disputed domain names in a manner that violates the Policy. The Complainant argues the Respondent had constructive knowledge of its trademark rights, given that it is extremely unlikely the Respondent would independently combine the trademark AMADEUS with a travel-related word, which indicates bad faith registration.
Many prior UDRP panels have found that passive holding does not prevent a panel from finding bad faith in both registration and use. The Panel has examined the similarity of the AMADEUS mark with the disputed domain names, its worldwide use and publicity, the dates of registration and original trademark use, and the Respondent’s email communication.
The Panel acknowledges and incorporates the findings of Playboy Enterprises International, Inc. v. Tom Baert, WIPO Case No. D2007-0968 (<playboys.mobi>), in which the Panel addressed a similar situation:
“The Panel notes that the Respondent has not used the Disputed Domain Name since registering it in September 2006. The Respondent has also demonstrated its awareness of the Complainant’s rights in the PLAYBOY mark and associated marks by writing an unsolicited letter to the Complainant on April 13, 2007 informing them of its registration for <playboys.mobi>. The Respondent has also stated in this letter, that it intends to use the Domain Name for a mobile internet project. […] The Respondent argues that ‘playboys’ is generic and that it should be entitled to use it. However, where the Complainant owns a confusingly similar famous mark, the onus must be upon the Respondent to explain the legitimacy of his use. The Respondent has not done so in this case and the Panel infers that the Respondent’s choice of domain name may well have been motivated by the likelihood of trading on initial confusion with the Complainant’s marks”.
The Panel finds that the disputed domain names were registered in bad faith and are being used in bad faith. The third element of the Policy has therefore been met.
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, <amadeusbooking.com>, <amadeusbooking.info> and <amadeusbooking.net>, be transferred to the Complainant.
Andrew Mansfield
Sole Panelist
Date: January 5, 2016