The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2007 via email. The Center received a hardcopy version of the Complaint on June 26, 2007. On June 21, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain names at issue. On June 21, 2007, Network Solutions, LLC 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 July 6, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2007. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 1, 2007.
Upon information of the Complainant, that the parties were in settlement negotiations, the Center notified the Parties on August 2, 2007 the suspension of the proceedings until August 15, 2007. Further suspensions were granted upon request of the Complainant. On November 23, 2007, the Complainant asked the Center to continue with the proceedings.
The Center appointed Christian Schalk as the sole panelist in this matter on December 3, 2007. 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 agrees with the Center’s assessment concerning the Complainant’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The language of the proceedings is English.
4. Factual Background
The Complainant uses the trademark UNIGLOBE in connection with travel agency services at least as early as 1981. It promotes and disseminates information on its goods and services in the Internet. Especially, Internet users can find information about becoming a franchisee of the Complainant and what kind of support and training services is offered by the Complainant. Together with its franchises the Complainant generated over two billion dollars in annual sales during the past years.
The Complainant owns two word and device trademark registrations for the term “Uniglobe” which have been registered with the US Patent and Trademark Office on December 7, 1982, and December 22, 1982. The Complainant owns also a trademark registration for the term “Uniglobe” as a word mark which registration date is June 7, 1983. Furthermore, it owns five US trademark registrations for UNIGLOBE in combination with terms such as “.com”, “Inhouse Travel”, “Vacations”, “Cruisecenters” and “7*24 Rescue Line” which registration dates are between 2001 and 2003.
Furthermore, the Complainant owns the domain names <uniglobe.com> (registration date June 14, 1994) and <uniglobetravel.com> (registration date May 11, 1999).
The Respondent registered the domain names <uniglobaltravelfranchisees.com> on March 26, 2007, and the domain names <uniglobaltravelfranchisees.org>, <uniglobaltravelfranchisees.net> and <uniglobaltravelfranchisees.info> on March 28, 2007.
All domain names at issue are linked with the same website which provides among others links to websites for franchise opportunities such as a franchisee portal offering more than 100 franchise profiles and to a travel agent.
When the Complainant learned about the registration of the disputed domain names by the Respondent, the Complainant sent the Respondent a letter on June 1, 2007. In this letter, the Complainant asked the Respondent to transfer the domain names at issue to the Complainant.
On August 3, 2007, the parties signed a domain name transfer agreement. In this agreement, the Respondent undertook to transfer all disputed domain names to the Complainant within five business days. However, the Respondent has not completed the agreed transfer of the domain names at issue. Therefore, the Complainant asked the Center to reinstitute the proceedings on November 23, 2007.
5. Parties’ Contentions
A. Complainant
The Complainant alleges that the disputed domain names are confusingly similar to the Complainant’s UNIGLOBE trademark. In this context, it states that the addition of a gTLD is without legal significance and that the addition of common terms to a domain name does not obscure the near identity of the disputed domain names to the Complainant’s trademarks. The Complainant explains that the Respondent has incorporated the UNIGLOBE mark in its entirety into the domain names at issue. In this context it believes that the addition of the descriptive term “franchisees” does nothing to distinguish the disputed domain names from the Complainant’s trademarks.
The Complainant alleges also, that the Respondent has no legitimate interest in the domain names at issue since it is not commonly known by the name Uniglobal Travel Franchisees. Furthermore, it is the opinion of the Complainant that the Respondent can not claim non-commercial fair use of the domain names at issue. It explains in this context that the Respondent’s only use of the disputed domain names is to divert customers by click-through links to third parties websites. These third parties are competitors of the Complainant. Their websites do also offer information about franchise opportunities. The Complainant believes that consumers, looking to become franchisees of the Complainant would get diverted to other franchise opportunities. Furthermore, the Complainant states that the Respondent receives click-through fees for diverting Internet users to such third party websites.
The Complainant alleges furthermore, that the Respondent registered and is using the domain names at issue in bad faith.
The Complainant believes that the Respondent tries to prevent the Complainant as trademark owner in several cases from reflecting its trademarks in corresponding domain names incorporating the term “franchisees” by simply substituting only the gTLD. In this context, the Complainant cites Inter-Ikea Systems B.V. v. Technology Education Center,
WIPO Case No. D2000-0522; and Australian Stock Exchange Ltd. v. Community Internet,
WIPO Case No. D2000-1384 to support its conclusions.
The Complainant states that the Respondent, moreover, has been also engaged in a pattern of registering domain names which incorporate well-known trademarks of others. The Complainant presents the Panel a list of several hundreds of domain names which incorporates many well-known trademark of others in combination of the term “franchisees”, like for instance, <mcdonaldsfranchisees.com>, <mcdonaldsfranchisees.org>, <mcdonaldsfranchisees.net>, <mcdonaldsfranchisees.info>, <hiltonfranchisees.com>, <hiltonfranchisees.org>, <hiltonfranchisees.net>, <hiltonfranchisees.info>, <embassysuitesfranchisees.com>, <embassysuiteshotelsfranchisees.com>, <carlsonwagonlittravelfranchisees.com>, <carlsonwagonlittravelfranchisees.info>. Many of these domain names have been registered during the same period of time where the domain names at issue have been registered by the Respondent.
Moreover, the Complainant alleges that the Respondent is intentionally attempting to attract users to its websites by creating a likelihood of confusion with the Complainant’s UNIGLOBE trademark and that the Respondent receives click-through fees for diverting Internet users to third parties websites
B. Respondent
The Respondent did not reply to the Complainant’s contentions. However, the Respondent sent an email to the Center on November 24, 2007 stating its willingness to voluntarily transfer the disputed domain names.
6. Discussion and Findings
The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, a domain name can be transferred only where the Complainant has proven that each of the following three elements is present:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The domain name holder 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.
It is essential to dispute resolution that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings initiated against the Respondent, and a reasonable opportunity to respond (paragraph 2(a) of the Rules). In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Center.
Since the Respondent has not contested the allegations of the Complainant, the Panel shall decide on the basis of the Complainant’s submissions, and all inferences that can reasonably be drawn therefrom (see Bayerische Motorenwerke AG v. Dariusz Herman, Herman DOMCREATE et co., WIPO Case No. DNAME2004-00001).
Although the Panel has the authority to order a transfer based on the Respondent’s consent without further analysis, the Panel has decided to address the merits.
A. Identical or Confusingly Similar
The Complainant has established trademark rights in the term “Uniglobe”. Although it is clear that the disputed domain names are not identical to any of the Complainant’s trademarks, the Panel finds the disputed domain names are confusingly similar to the Complainant’s trademarks. As indicated by the Complainant and in accordance with many decisions rendered under the Policy, the addition of descriptive terms to a trademark is not a distinguishing feature (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis*,
WIPO Case No. D2000-1807, for the domain name <bellsouthpages.com>; Bellsouth Intellectual Property Corporation v. Henry Chan,
WIPO Case No. D2004-0550, for the domain names <bellsouthbenefit.com>, <bellsouthchatroom.com>, <contactbellsouth.com>; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims,
WIPO Case No. D2000-0819, among others for the domain name <canoncopymachines.com>; Aventis, Aventis Pharma SA. v. John Smith,
WIPO Case No. D2004-0565 and
WIPO Case No. D2004-0624, with further references, for the domain names <aventislottery.org> and <aventisfoundationlottery.com>; Toyota France and Toyota Motor Corporation v. Computer Brain,
WIPO Case No. D2002-0002, for the domain name <toyota-occasions.com>). The word “franchisees” is a generic term in English.
B. Rights or Legitimate Interests
According to the material brought before the Panel and in the absence of a formal Response to the Complaint, the Panel finds that the Respondent does not have demonstrated rights or legitimate interests in the disputed domain names for the following reasons:
The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in any of the disputed domain names. Especially, there is no evidence that the Respondent is known by the domain names at issue. The Complainant has also never granted the Respondent a license or authorization to use any of its trademarks.
Furthermore, the fact that the Respondent has linked the disputed domain names at issue with websites of the Complainant competitors is not a bona fide offering of goods or services but rather one which seeks profit from confusion with the Complainant because the Respondent receives click-through fees for diverting Internet users to such third parties websites (see Caesars Entertainment, Inc. v. Infomax, Ltd.,
WIPO Case No. D2005-0032; Humana Inc. v. Henry Tsung,
WIPO Case No. D2005-0221; and Humana Inc. v. Domain Deluxe,
WIPO Case No. D2005-0231).
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered and is using the domain names in bad faith in violation of the Policy, paragraph 4(a)(iii). Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for the Complainant to show the Respondent’s bad faith registration and use of the disputed domain names:
(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 owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented outofpocket costs directly related to the domain name; or
(ii) the Respondent has 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 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 its website or location of a product.
According to the material brought before the Panel and in the absence of a formal Response to the Complaint, the Panel finds that the disputed domain names have been registered and are being used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:
It is a well-established principle under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia,
WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak,
WIPO Case No. D2003-0022) and under the Policy (see Section 2), that the domain name registrant represents and warrants to the registrar that, to this knowledge the registration of the domain name will not infringe the rights of any third party. Given the fact that the Complainant advertises its services in many printed media, that it has a considerable presence in the Internet and that it had coupled the term “Uniglobe” with the generic term “franchisees” which would not have been possible without knowledge of the Complainant, the Panel finds that the Respondent was aware of the Complainant’s trademark when it registered the disputed domain names (see Liseberg AB v. Administration Local Manage Technical,
WIPO Case No. D2003-0864). Therefore, the Panel believes that the Respondent registered the domain names at issue in bad faith.
Furthermore, given the nature of the website maintained by the Respondent, the only purpose of having registered the disputed domain names, was to divert traffic intended for the Complainant’s website to the website of the Respondent or otherwise benefit from likely Internet-user confusion, and thus to take advantage of the Complainant’s trademark and its reputation. Moreover, it provides Internet users, seeking information on the Complainant’s services, an access to goods and services of the Complainant’s competitors. The Respondent’s use of the disputed domain name puts the Complainant at risk of commercial losses.
The Panel further infers that the Respondent is benefiting from this confusion by receiving “click-through” commissions in accordance with conventional practice on the Internet when customers reach a site through a link on a portal (see also Humana Inc. v. Domain Deluxe,
WIPO Case No. D2005-0231).
Moreover, the Complainant has provided evidence indicating that the Respondent owns numerous domain names which correspond to well known third party trademarks. The Panel regards this as prima facie evidence so as to satisfy sub paragraph 4(b)(ii) of the Policy that the Respondent has been engaged in a pattern of such conduct (see also Inter-IKEA Systems BV v. Technology Education Center,
WIPO Case No. D2000-0522; and RTBD, Inc. v. The Goldstein Law Group,
WIPO Case No. D2007-1094).
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 names <uniglobetravelfranchisees.com>, <uniglobetravelfranchisees.info>, <uniglobetravelfranchisees.net> and <uniglobetravelfranchisees.org> be transferred to the Complainant.
Christian Schalk Sole Panelist
Dated: December 17, 2007
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