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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Viator, Inc. v. iContents, Brian Yu

Case No. D2008-0190

1. The Parties

The Complainant is Viator, Inc., Rod Cuthbert, Suite 120E, 600 Townsend Street, San Francisco, California, United States of America, represented by Morrison & Foerster, LLP, United States of America.

The Respondent is iContents, Brian Yu, Seoul, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <viatour.com> is registered with YesNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2008. On February 7, 2008, the Center transmitted by email to YesNIC a request for registrar verification in connection with the domain name at issue. On February 11, 2008, YesNIC 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”), 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 (with covering notification documentation in Korean and English) the Respondent of the Complaint, and the proceedings commenced on February 27, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2008. The Response, submitted by 유용기(Brian Yu), was filed with the Center on March 14, 2008. Supplemental filings were filed with the Center on March 22, 2008 by the Complainant and on March 28, 2008, by the Respondent.

The Center appointed Ik-Hyun Seo as the sole panelist in this matter on April 15, 2008, but he recused himself from this proceeding and the Center appointed Thomas P. Pinansky as the sole panelist in this matter on June 10 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

The Complainant has provided travel agency services under the VIATOR mark and name and through a website using the <viator.com> domain name since as early as 1999.

The Complainant owns U.S. Application Serial No. 78/931,291. The Complainant’s application was published for opposition on October 2, 2007.

The Complainant also owns CTM Application Serial No. 006414494 for the same goods and services listed in its U.S. Application Serial No. 78/931,291. The Complainant’s CTM Application was filed on October 18, 2007.

The Respondent has registered the domain name and has used the domain name in connection with a website containing a directory of links to, among other things, travel-related websites that enable visitors to make reservations and bookings.

The domain name is phonetically very similar to VIATOR.

5. Parties’ Contentions

A. Complainant

The Complainant possesses trademark rights in the VIATOR mark through common law rights based on its longstanding use of the mark. It is well established that trademark rights developed under common law are sufficient to support a complaint under the Policy.

The Complainant argues that the domain name is phonetically identical and visually confusingly similar to the Complainant’s VIATOR trademark. The Respondent’s domain name incorporates the entirety of the Complainant’s VIATOR mark, with the only difference being the addition of the letter “u”. The two words are thus homonyms, which suggests that Internet users looking for information on the Complainant or the Complainant’s products and services, might be led to the Respondent’s website by mistake. Such “typo-squatting” does not prevent, and indeed, may frequently support, a finding of confusing similarity.

The Complainant submits that the Respondent has no rights or legitimate interests with respect to the domain name. The Complainant has not authorized or licensed the Respondent to use the VIATOR mark, nor is the Respondent a distributor of the Complainant’s services. The Respondent has not made use of the domain name in connection with a bona fide offering of goods or services. The Respondent is not commonly known by the domain name; and the Respondent is not making a legitimate noncommercial or fair use of the domain name.

The Complainant asserts that the domain name was registered and has been used in bad faith by the Respondent.

The Respondent’s use of the domain name that is virtually identical to the Complainant’s VIATOR trademark is clearly calculated to attract for commercial gain Internet users to the Respondent’s website.

B. Respondent

The domain name is neither identical nor confusingly similar to the Complainant’s trademark.

If someone were to register an obscure domain name and to complain about the similarity between the obscure domain name and a domain name consisting of common nouns, it would cause distorted results.

The Respondent has legitimate interests to own the domain name in dispute.

The Respondent runs a company named iContents, and the domain name was registered by iContents. iContents was established for the purpose of Internet(i) + Contents. iContents registers domain names consisting of common nouns, and runs the business by providing content relevant to the domain names.

The Complainant is complaining about the tour related contents on “www.viatour.com”, but having ‘tour’ in its domain name definitely justifies the usage of it. Rather the Complainant, using a domain name with “tor”, which does not remind one of tour, can be considered the cybersquatter of the tour domain name.

The Respondent that the Complainant’s claim that an obvious and self-explanatory word like tour has typo-squatted an ambiguous word “tor” is wrong.

The Respondent submits that the Complainant has not been able to prove that the Respondent has registered and is using the domain name in dispute in bad faith. In turn, the Complainant has revealed its unfaithful purpose to steal the common noun domain name by putting forth an omitted letter domain name.

6. Discussion and Findings

A. Selection of Language

The Complaint was filed in the English language. It is noted that the language of the registration agreement for the domain name in dispute is Korean, however, the Complainant asserts that English should be the language of the proceedings. The Respondent has responded in Korean and asserts that Korean should be the language of the proceedings. The Center has throughout the proceedings issued its case related communications, including the Center’s complaint notification documents, in both Korean and English. A Korean language Response was accepted by the Center.

According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise having regard to the circumstances of the administrative proceeding. The spirit of Paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.

In the present case, although the registration agreement for the domain name in dispute was made in the Korean language, it is also presumed that the Respondent has sufficient ability communicating in the English language based on prior dealings between the parties and that Respondent’s website and the domain name are in English and apparently directed to English speakers. We also note that the Respondent does not use a Korean name when writing his name in English. The Panel notes that the use of a “Western” name is not unusual in Korea if a person communicates in English or is in frequent contact with non-Korean speakers, but it would be very rare indeed to do so if the Korean person had no English ability. The fact that the Respondent has submitted a considered Response only reinforces the Panel’s view that the Respondent has been able to understand the Complaint in English.

On the other hand, the Complainant is not able to communicate in Korean and therefore, if the Complainant were to submit all documents in Korean, the proceeding will be unduly delayed and the Complainant would have to incur substantial expenses for translation. Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11 of the Rules, that (i) English shall be the language of administrative proceeding in this case, but, in order to eliminate any concerns of prejudice to the Respondent, the Panel also decides that (ii) the Respondent shall be permitted to submit any documents or assertions in Korean. See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679.

B. Substantive Elements of the Policy

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds 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.

Moreover, under paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”

Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) the domain name is identical or confusingly similar to a trademark or service 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 domain name has been registered and is being used in bad faith.

C. Identical or Confusingly Similar

To satisfy this element, the Panel must find that (i) the Complainant has demonstrated its rights in the VIATOR mark; and (ii) the domain name is identical or confusingly similar to the Complainant’s VIATOR mark.

The Complainant asserts that it is the owner of certain trademark filings for “VIATOR” in the United States of America. However, the Panel notes that the “filing” the Complainant refers to is merely an application, filed in 2007, not long before the filing of the Complaint in these proceedings. The applications remain pending at the time of this decision.

The Panel notes, however, that lack of a registered trademark is not fatal to the Complainant. The Complainant argues that it has established common law rights in the VIATOR mark and that such mark is confusingly similar to the domain name.

The Complainant has presented some limited evidence that it has engaged in business since 1999; that it has used the domain name <viator.com> to house its company website since 1999; and that it is a well established business in California. Although the Panel has some reservations due to the limited nature of the evidence submitted, the Panel finds that there is sufficient evidence to establish that the Complainant engaged in continuous use of the VIATOR mark in commerce to confer common law rights in the VIATOR mark prior to the registration of the domain name. (The Panel’s brief search on Google buttressed this finding.)

The Panel finds that whether the VIATOR mark is “famous” or not is not required to invoke the protections of the Policy. Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786.

Accordingly, the Panel finds that the Complainant has established sufficient rights in the VIATOR mark.

The Panel further notes that the domain name is phonetically identical and visually similar to the Complainant’s VIATOR trademark. The Respondent’s domain name incorporates the entirety of the Complainant’s VIATOR mark, with the only difference being the addition of the letter “u”. The two words are homonyms, which suggests that Internet users looking for information on the Complainant might be led to the Respondent’s website by mistake. See e.g., HYDAC Technology GmbH v. Click Consulting Ltd., WIPO Case No. D2006-1364; Sociйtй des Hotels Meriduen v. Medern Ltd, - Cayman Web Dev., WIPO Case No. D2004-0321; and Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesie, WIPO Case No. D2000-1698.

Accordingly, the Panel finds the domain name confusingly similar to a mark in which the Complainant has rights.

D. Rights or Legitimate Interests

The Complainant states, without contradiction, that it has no relationship with the Respondent and has not authorized the Respondent to use its mark.

The Respondent does not assert that it has been known by the domain name or that it has made legitimate noncommercial use of the domain name. Rather, it argues that it is in the legitimate business of registering domain names and providing content relevant to such domain names. This may well in itself be a legitimate business activity, but the Panel is not persuaded that it is described by paragraph 4(c)(i) of the Policy, since the Panel notes that the Respondent does not use the domain name in connection with offering goods or services or creating unique content, but rather to obtain revenue by listing other websites.

The Panel is not persuaded that using the domain name to direct traffic to a website with sponsored advertising links is a legitimate use such that use falls strictly within the scope of paragraph 4(c)(i) of the Policy, which seems to contemplate a bona fide offering of goods and services by the Respondent, rather than simply parking the domain where the Respondent or a third party can generate click-through advertising revenues from parties advertising their own goods and services. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; Gerber Products Co. v. LaPorte Holdings, WIPO Case No. D2005-1277; and Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964.

The Panel notes and agrees with the standards set forth in Media General (supra), in which the Panel stated that selling domain names or using them for advertising links can in certain circumstances represent legitimate interests for purposes of paragraph 4(c) of the Policy, but not in all instances. These practices are most likely to be deemed legitimate under the Policy when:

- the respondent regularly engages in the business of registering and reselling domain names, and/or using them to display advertising links;

- the respondent makes good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others;

- the domain name in question is a “dictionary word” or a generic or descriptive phrase;

- the domain name is not identical or confusingly similar to a famous or distinctive trademark; and

- there is no evidence that the respondent had actual knowledge of the complainant’s mark.

The Respondent here is clearly in the business of using domain names, at least in the interim, to redirect traffic to websites with advertising links. But the Response does not indicate what steps, if any, the Respondent takes in good faith to avoid registering, using, and selling domain names that correspond to trademarks. The domain name is clearly oriented toward the tourism industry, and it is suspiciously similar to the Complainant’s mark.

Thus, the determination of legitimacy in this case largely hinges on the question of bad faith, which is better addressed below in connection with the third element of the Policy. If the Respondent registered and used the domain name in good faith, then we must conclude that the Respondent had a legitimate interest in the domain name. On the other hand, if the Respondent failed to act in good faith, by registering and using a domain name that it should have realized was likely to correspond to a trademark, then the Respondent has no legitimate interest in this particular domain name.

E. Registered and Used in Bad Faith

The Complainant cities paragraph 4(b)(iv) of the Policy, and notes that the Respondent, in using the domain name, 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 the website or of a product or service on the website.

The Panel notes that where a respondent registers large swaths of domain names, with no attention to whether they may be identical to or confusingly similar to trademarks, such practices may well support a finding a respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks. (See Mobile Communication, supra).

On the record of this case, the Panel believes it is a fair inference that the Respondent’s conduct falls into this category. The Panel notes that the Respondent has been a respondent in other domain name proceedings; and in a number of those cases, the domain names have been transferred (see, for example, Internet Billing Company LLC v. Brian Yu d/b/a iContents, NAF Case No. FA146944; and Guaranty Bank v. Brian Yu c/o iContents, Inc. Guaranty Bank Team, NAF Case No. FA493004).

The Panel finds that paragraph 2 of the Policy implicitly requires some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy. Paragraph 2 of the Policy, “Your Representations,” is incorporated by reference in the registration agreements of ICANN-approved registrars. It reads in pertinent part as follows:

“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”

The Respondent registered many domain names with the word “tour” in it. Any reasonably diligent search of the Internet focused on tourism sites would have likely revealed the Complainant’s mark. It is entirely fair to expect that this review would entail, for example, some effort to avoid illegality, trademark infringement, and violation of the Policy, as suggested by paragraph 2 of the Policy. The panel in Mobile Communication Service contemplated at least a minimal degree of due diligence in deciding against a respondent and even a cursory search on search engines like Yahoo! and Google would have revealed the complainant’s business and mark.

There is no evidence in the record that the Respondent in the present case engaged in any such review before registering the domain name, and using it to redirect visitors to a website filled with advertising links.

In the circumstances of this case, given the Respondent’s business and the extensive business relationship between Korea and California and the Respondent’s evident familiarity with the Internet and the registration of domain names, the Panel simply does not find it credible that the Respondent did not know of the Complainant’s mark. Paragraphs 2 and 4 of the Policy impose a degree of responsibility which is in the public interest of all who use the Internet.

The Panel concludes, therefore, that the Complainant in this case has satisfied the third, as well as the second, element 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 <viatour.com> be transferred to the Complainant.

Thomas P. Pinansky
Sole Panelist