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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Traveljungle Limited v. Labitrav

Case No. D2008-1168

 

1. The Parties

The Complainant is Traveljungle Limited, of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by avocado rechtsanwälte, Germany.

The Respondent is Labitrav, of Florida, United States of America, represented by Judith Silver, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <traveljungle.travel> is registered with Namesbeyond.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2008. On July 31, 2008, the Center transmitted by email to Namesbeyond.com a request for registrar verification in connection with the domain name at issue. On August 6, 2008, Namesbeyond.com 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 the Respondent of the Complaint, and the proceedings commenced on August 22, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2008. The Response was filed with the Center on September 11, 2008.

The Center appointed John Swinson as the sole panelist in this matter on September 24, 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. Additional procedural issues

There were several communications between the Complainant, Respondent and the Center after these proceedings commenced. By way of summary, these communications concerned (as well as some other minor issues):

- the Respondent’s belief that the parties were the middle of settlement negotiations, and whether the parties would prefer to suspend the proceedings rather than continue with the Complaint.

- failure of the Complainant to list the Respondent’s representative as the authorized representative for the Respondent in the Complaint.

- the Respondent’s representative not receiving a full, legible copy of the Complaint with annexes.

A full copy of the Complaint with annexes was sent to the Respondent by the Center on August 29, 2008. The Respondent was able to file its response within the required deadline. The Complainant did not provide any communication to the effect that it wished to suspend the proceedings in order to explore settlement opportunities. Accordingly, the Panel does not believe it is appropriate to comment on any of the additional communications referred to above, as they have not had a bearing on the decision.

On September 24, 2008, the Complainant filed an unsolicited supplemental filing. There is no provision in the Policy, the Rules or the Supplemental Rules which requires or authorizes supplemental filings. In fact, the Rules and relevant panel decisions demonstrate a decided preference for single submissions by the parties absent exceptional circumstances (see Rollerblade, Inc. v. CBNO and Ray Redican Jr., WIPO Case No. D2000-0427). Of course, supplemental filings may be accepted in exceptional circumstances however in this case the Panel determines that no such circumstances exist. In particular, the Supplemental Filing does not provide “pertinent evidence not reasonably available until after the party’s [Complainant’s] initial submission” (Top Driver, Inc., v. Benefits, Benefits, WIPO Case No. D2002-0972) nor does it “rebut arguments of the opposing party [Respondent] that could not reasonably have been anticipated” (Radan Corp. v. Rapazzini Winery, WIPO Case No. D2003-0353).

 

5. The Respondent

The Complaint lists the Respondent as Labitrav and the WHOIS records confirm that Labitrav is the domain name holder. However the Response notes that the proper Respondent is Labigroup Holdings LLC (formerly known as Labitrav LLC).

For the purposes of this decision, the Panel will treat both Labitrav and Labigroup Holdings LLC as the Respondent.

 

6. Factual Background

The Complainant is a company registered in the United Kingdom. The Complainant provides travel services through a website located at “www.traveljungle.com”. This website provides a searching mechanism for airfares, hotels, car hire, holiday packages and travel insurance. It also allows the user to compare fares from various suppliers. The Complainant provides this service for departures from the United Kingdom, Germany, Spain and the Netherlands (each of these departure points have their own website, for example, “www.traveljungle.co.uk” for the United Kingdom).

The Complainant owns a registered Community trade mark for TRAVELJUNGLE (trade mark no. 004294377). The trade mark was filed on February 17, 2005 and registered on August 2, 2006. The trade mark is registered for travel advertising, travel arrangement and travel agency services, as well as operation of Internet search engines relating to travel.

The Respondent is based in the United States of America. It operates a website at “www.labitrav.travel“ which does not provide much information about the Respondent. According to a Bulk Registration Co-Marketing Agreement between Tralliance Corporation and the Respondent (publicly available on the Internet), the Respondent is described as a company that has expertise in the business of creating, developing, hosting, optimizing, marketing, and managing multiple domain names and websites for profit.

The Respondent became the registered owner of the disputed domain name <traveljungle.travel> on December 21, 2007.

 

7. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions and arguments:

The Complainant owns registered Community trade mark TRAVELJUNGLE (trade mark no. 004294377).

The disputed domain name is phonetically identical with the community trade mark.

The services provided on the website operating from the domain name are similar to the services covered by the Complainant’s registered trade mark. There is a likelihood of confusion between the disputed domain name and the trade mark.

The Complainant does not know of any circumstances which would demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.

The website operating from the domain contains a small amount of pro forma information about travel matters, although it does contain some links to tour operators and travel destinations. The website provides no content under various directories including “companies”, “hotels”, “restaurants”.

There is no relationship between the Respondent and the Complainant; the Respondent is not a licensee of the Complainant and the Respondent does not have authorization to use the Complainant’s trade mark.

The Respondent registered the disputed domain name to prevent the Complainant from reflecting its registered community trade mark in a corresponding .travel domain name. The Respondent has no right or legitimate interests to use the domain name for its own business.

The Respondent’s registration of this domain name was achieved by the indiscriminate registration of 25,000 .travel domain names, through a bulk registration agreement.

B. Respondent

The Respondent makes the following submissions and arguments:

The disputed domain name is a generic or at least descriptive term, so registration as a trade mark is not enough to provide protection under UDRP. The Complainant has failed to provide evidence to argument to show a necessary secondary meaning of the mark.

The domain name consists of two generic terms: “travel” and “jungle”. Registration is not per se proof of trade mark rights, and the Complainant has not shown that its mark is associated exclusively or primarily with the Complainant’s products.

The Complainant’s mark is not known in the United States of America. The Complainant has only demonstrated rights in the European Union through its Community trade mark registration. Again the Complainant provides no evidence to show that the mark is known in the European Union or in any other region.

A single registration in a single region without other evidence of use does not show international trade mark usage, and cannot be used to deny others the right to register names using generic terms.

The Respondent has rights and legitimate interests in the disputed domain name. The Respondent has used the domain name in connection with a bona fide offering of services prior to any notice of the dispute. It has also made non-commercial use of the disputed domain name without intent for commercial gain or to mislead or divert consumers.

The Respondent has used the disputed domain name as a non-commercial directory to help Internet users looking for help with travel to jungle locations. This is legitimate because the disputed domain name is not unique to the Complainant, there is a connection between the domain name and the directory content (jungle travel destination listings), there is no illegitimate reason for use, and the Respondent has demonstrated good faith by responding to the Complaint. Previous decisions clearly establish that providing links to content related to the domain name may be proof of legitimate use and bona fide offering of services.

Five months prior to notice of this dispute, the Respondent was using the disputed domain name as a non-commercial, bona fide directory page, with search engine results. The Complainant could have easily discovered from viewing the code on the website that none of the links were paid links.

The Respondent has now removed the website in good faith. However when it was displayed, it was clearly a directory resource which permitted reviews and other content. Even if there were no content under some of these sections, this has no bearing on the Respondent’s right to post a directory website.

The Complainant has not submitted any evidence of confusion, but merely states that it is likely to occur. The Respondent created its webpage with clarity and in good faith to ensure no confusion would arise.

As to the Complainant’s contention that bulk registration of 25,000 domain names is proof of bad faith, it has previously been held that bulk registration may occur in a legitimate fashion. Even when there are paid link directories and advertising, in the absence of name selection because of likeness to a trade mark, domain resale and use of a domain to publish advertising links have been held to be normally legitimate business enterprises.

To show bad faith, the Complainant must show that the Respondent used the domain name for an unlawful purpose, or had knowledge of the Complainant’s trade mark rights and knowingly infringed them. The Respondent in good faith, purchased a domain name made up of generic terms for bona fide and non-commercial purpose, without any knowledge of the Complainant.

The disputed domain name was not registered for the purpose of selling or transferring it to the Complainant, or to tarnish or otherwise profit from the mark. The words comprising the domain name are generic and can be attributed to travel in jungle regions. Lack of distinctiveness in an alleged trade mark can be fatal to a complainant’s case. The Respondent waited several years after the .travel domain was introduced in 2005, to allow trade mark holders or other third parties to register the name. The Complainant has demonstrated previous years of inaction.

As the Complainant has provided almost no evidence or legal argument, nor any cases or statutory references in relation to either element, and failed to review or investigate the Respondent’s use of the website, it appears that the Complainant brought this Complaint solely to harass the Respondent.

Prior to the proceeding, the Respondent offered to consider the Complainant’s rights and transfer the domain name without cost, if the Complainant could provide proof of its trade mark registration and legal argument as to why it was entitled to the name. The Complainant failed to provide either. Before formal acceptance of the Complaint, Respondent again offered to transfer the name without cost, but this was refused.

The Respondent requests that the Panel find that the Complainant’s actions constitute reverse domain name hijacking, as proceedings were primarily brought to harass the domain name holder and constitutes an abuse of these proceedings.

 

8. Discussion and Findings

To succeed, the complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The onus of proving these elements is on the complainant.

A. Identical or Confusingly Similar

The Complainant has a registered Community trade mark over the word mark TRAVELJUNGLE. This trade mark was registered in 2006, at least 15 months before the Respondent registered the disputed domain name.

Yet the Respondent contends that this registration is not enough to satisfy paragraph 4(a)(i) of the Policy because the disputed domain name is descriptive or generic. The Respondent also notes that this trade mark is restricted to the European Union, while the Respondent is located in the United States of America.

In the “Overview of WIPO Panel Views”, it is noted that the consensus view is that ownership by a complainant of a registered trade mark satisfies the threshold requirement of having trade mark rights. The jurisdiction where the trade mark is registered is irrelevant in relation to paragraph 4(a)(i) of the Policy. (See for example Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503). While there may be exceptions to this general view, no circumstances warranting an exception apply in this case.

As the Complainant has demonstrated registered trade mark rights (which are identical to the disputed domain name), it is not necessary for the Complainant to provide evidence of use of that trade mark, either in the European Union, United States of America or elsewhere.

Whether the terms comprising the disputed domain name are generic are not relevant to this element of the Policy, because the Complainant has been able to show registered trade mark rights. However, such arguments may be relevant to the second and third elements discussed below.

When the .travel TLD of the disputed domain name is ignored, the domain name is identical to the Complainant’s trade mark.

For these reasons, the Panel finds that the disputed domain name is identical to the Complainant’s registered trade mark, and that the requirements of the Policy, paragraph 4(a)(i), are satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed 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 non-commercial 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.”

The Complainant states that the Respondent has not been licensed or authorized to use its TRAVELJUNGLE trade mark, and that the website does not contain adequate information to constitute bona fide offering of goods or services, or legitimate use.

The Respondent contends that it meets the criteria under paragraph (i) and (iii) above, in that was making a bona fide offering of goods or services under the domain name before notice of this dispute, and was also making a legitimate non-commercial use of the domain name.

The Respondent has removed the website, in what it says is an act of good faith, and has not provided a print out of the website in its Response. As the Panel is unable to view the content of the removed website, it is necessary to determine this issue according to print outs of the website contained in the Complaint (printed on July 28, 2008).

The print out of the website has a heading of “Expert Reviews and Research on All Kinds of Travel traveljungle.travel” and a subheading reading: “Travel Jungle reviews and research on every place to eat, sleep and play plus restaurants, hotels and shops. Plan your next trip at Travel Jungle”.

It then displays a page of links related to adventure travel, such as trips to Costa Rica, the Amazon jungle and the Inca Trail. A few entries are unrelated to travel, such as references to the MBA Jungle Magazine, and a Jungle Paws Travel Bouncer. The goods and services offered on this website (for example, tour packages and accommodation) are clearly very similar to the goods and services offered by the Complainant. It also appears that these entries are generated by a computer, not a human.

The Respondent asserts that the website displays search results for the purpose of providing an online directory, and that the links appearing on its websites are not paid links (and provides an example in relation to its website at “www.tourist.travel”). However the Panel cannot reasonably assume that the same position exists (or did exist) in relation to the disputed domain name, as no evidence is provided of that fact. The links that appear on the printed page of the website could feasibly be paid links, and as there are irrelevant links included, it appears likely that they are automatically sourced from a third party. For these reasons, the Panel is not convinced that the Respondent is or was making a legitimate non-commercial use of the disputed domain name, without intent for commercial gain.

The only remaining question is whether there was a bona fide offering of goods or services by the Respondent prior to notice of the dispute.

Relevant to this issue is the Respondent’s argument that the disputed domain name comprises a generic, descriptive term, and the offering of goods and services directly relates to that meaning. If the Respondent is using “traveljungle” as a generic term to describe its products or to profit from the generic value of the word without intending to take advantage of the Complainant’s rights, there will be a legitimate interest.

On this issue, the following paragraph from HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062 is relevant:

“A number of panels have concluded that a respondent has a right to register and use a domain name to attract internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant. See National Trust for Historic Preservation v. Preston, WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Where a respondent registers a domain name consisting of “dictionary” terms because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. But the domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark. Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964”.

While “travel” and “jungle” may individually be dictionary terms, there is a question as to the rather particular combination of these two specific terms in the domain name at issue. They are not two terms which are commonly used together.

As mentioned above, the website was used in connection with a collection of links, the majority of which relate to adventure travel, some of which do not. Of those that relate to adventure travel, not all relate to travel in a jungle (for example, an Inca Trail package has no reference to jungles). The Panel finds that the content of the website is not to a large extent, directly related to the meaning of the domain name.

It is not disputed that the Respondent undertook a bulk registration of 25,000 .travel domain names. The Panel infers from this that the Respondent did not intentionally choose the disputed domain or “create” the name “traveljungle”. It is unclear why the Respondent selected “traveljungle” as one of the 25,000 domain names that it registered. While there is no evidence that the Respondent knew of the Complainant or its trade mark, there is also no evidence that the Respondent undertook good faith searches, to ensure that the domain name did not infringe any third party rights.

The Panel refers to a further passage of HSBC Finance Corporation, which again applies equally to these circumstances:

“The Panel believes it is a reasonable inference that the Respondent did not acquire the disputed domain name based on a good faith belief that the domain name’s value derived from generic or descriptive qualities. Paragraph 2 of the Policy implicitly requires some effort to avoid registering and using a domain name corresponding to the trademark of another, but the Respondent has not indicated that it explored the possibility of third-party rights in any way before registering the disputed domain name. Simply stated, the Respondent could not have formed the requisite good faith belief by closing its eyes to whether the domain name was identical or confusingly similar to the trademark of another. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304”.

The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and the Respondent has failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy enumerates four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Complainant relies on subparagraph (ii), that the Respondent registered the domain name in order to prevent the Complainant from reflecting its trade mark in a corresponding .travel domain name. However this ground will only apply if the Respondent has engaged in a pattern of such conduct. As far as the Panel is aware, no previous cases have been decided against Labitrav or Labigroup Holdings LLC.

However the examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

As discussed under section B above, by engaging in a bulk registration process, the Respondent registered the disputed domain name with no investigation of the possibility of trespassing on third-party rights, and with apparent disregard whether the domain name it was acquiring for a website which ultimately contains links to other websites, corresponded to the trade mark of another. A simple Google search of the terms “travel” and “jungle” would have disclosed the Complainant’s .com and .co.uk websites.

It is also evidence of bad faith that the Respondent used the disputed domain name to link to websites that competed with the Complainant’s site (F. Hoffmann-La Roche AG v. Drug Sale, WIPO Case No. D2006-0066; Philip Morris Incorporated v. Eddy Fitch, WIPO Case No. D2002-0869; F. Hoffmann-La Roche AG v. Digi Real Estate Foundation, WIPO Case No. D2007-0946).

The Panel concludes, in light of all of the factors discussed above, that such actions on the part of the Respondent constitutes bad faith under the Policy. See Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304.

For the above reasons, the Panel finds that paragraph 4(b)(iv) is satisfied in this case and that the registration and use of the disputed domain name has been in bad faith. Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.

D. Reverse Domain Name Hijacking

As the Complainant has succeeded in this dispute, the Panel cannot find that this is a case of reverse domain name hijacking.

 

9. 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 <traveljungle.travel> be transferred to the Complainant.

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John Swinson
Sole Panelist

Dated: October 8, 2008