Cosmos European Travels AG v. United Cosmos Travel Group
Case No. D2008-0762
1. The Parties
The Complainant is Cosmos European Travels AG, Vaduz, Liechtenstein, represented by Carter, Ledyard & Milburn, United States of America.
The Respondent is United Cosmos Travel Group, Hong Kong, SAR of China, internally represented.
2. The Domain Name and Registrar
The disputed domain name <cosmosholidays.net> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2008. On May 15, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On May 16, 2008, Network Solutions, LLC transmitted by email to the Center its verification response confirming that:
(a) the domain name is registered with it;
(b) the Respondent is listed as the registrant;
(c) the contact details for the Respondent included in the Complaint are correct;
(d) English is the language of the registration agreement; and
(e) the domain name is subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy”).
The Center verified that the Complaint satisfied the formal requirements of 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 May 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2008. The Response was filed with the Center on June 6, 2008.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 19, 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 and its predecessors (for simplicity further reference will simply be to the Complainant) have been operating and promoting travel tours, such as coach holidays, since at least 1962.
Exhibit D to the Complaint contains details of 9 registered trade marks for COSMOS in Australia, Canada, the EU’s Community Trade Mark, New Zealand, the People’s Republic of China (“China”), Switzerland, the United States of America and two pending applications in India, mostly for services related to travel agency, arranging and conducting tourism and accommodation related services. These range in date from 1976 in Canada to December 2006 in the People’s Republic of China. Exhibit D also contains details of two registered trade marks for COSMOS TOURAMA in Canada and the United States of America for conducting travel tours. There is also a registration for COSMOS TROPICAL PARADISE for similar services in the United Kingdom.
The Complainant claims that these trademarks and the trademark COSMOS HOLIDAYS are famous marks at common law. It claims to have virtually invented the European budget vacation with its COSMOS continental coach and air holidays in 1962. Since then its operations have extended to include group trips to destinations in many countries on most continents. Examples of brochures are included in Exhibit E.
The Complaint also states that there have been over 2,400,000 passengers participating in the Complainant’s tours in the past five years. The Complainant’s tours have generated annual sales in excess of US$2.6 billion.
The Complaint states that in the past four years the Complainant and its licensees have spent over US$35 million on advertising and promotion by reference to its trademarks.
The Response claims that the Respondent is a well-known hotel reservation service provider in China. The Respondent claims that it registered the domain name in 2005. Exhibit I to the Complaint contains a print out of the website that the disputed domain name resolved to when the Complaint was filed. The website is in Chinese. Both the Complainant and the Respondent are in agreement that the Respondent’s website provides hotel accommodation and travel related services. According to the Respondent, the active web traffic to its website is locally from China. Since it registered the domain name, its website has won more than 600 registered travel agent users in China.
5. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(i) The domain name is 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 domain names; and
(iii) The domain name has been registered and is being used in bad faith.
The Panel deals with each of these elements in turn.
A. Identical or Confusingly Similar
There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to them?
The Complainant has demonstrated rights in the registered trademarks COSMOS, COSMOS TOURAMA and COSMOS TROPICAL PARADISE referred to above.
As noted, the Complainant also claims unregistered rights in those marks and COSMOS HOLIDAYS deriving from its extensive use of those marks. The materials included in Exhibits E, F and G to the Complaint clearly demonstrate usage of the trademarks COSMOS and COSMOS TOURAMA. The Panel is satisfied that the Complainant has demonstrated unregistered rights in these trademarks, particularly in the United Kingdom and the United States of America.
There is also some usage of COSMOS HOLIDAYS, mainly on the printouts from websites. The printouts included in Exhibits C and E are dated early in 2008. The Respondent disputes usage of this trademark except, perhaps, in the United Kingdom. It is unnecessary to resolve this particular part of the dispute between the parties as the Panel is satisfied that the domain name is confusingly similar to the Complainant’s trademark rights in COSMOS, COSMOS TOURAMA and COSMOS TROPICAL PARADISE.
Before explaining why, the Panel does note, however, that the Respondent’s position would not be improved if the Complainant’s rights in COSMOS HOLIDAYS be limited to the United Kingdom as the geographic limitation of trademark rights alleged by the Respondent would not be relevant to the issue at this stage. The question of resemblance for the purposes of the Policy requires a comparison of the domain name to the trademark rights which have been proved. This is a different test to that involved in trademark law where questions of the goods or services covered by the trademark rights can be relevant to the likelihood of confusion: see for example Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,
WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,
WIPO Case No. D2002-0420. The question of the scope of the Complainant’s trademark rights may of course be relevant to the issues under paragraphs 4(a)(ii) and 4(a)(iii).
The domain name differs from the COSMOS trademark only by the addition of the descriptive term “holidays” and the .net gTLD. These additions, however, can be discounted and do not remove the potential for confusion. See e.g. Telstra Corporation Limited v OzurlsWIPO Case No. D2001-0046. The potential for confusion is all the greater in view of the well-known practice of brand extension and the Complainant’s own practice demonstrated here of, at least, the “TOURAMA” and “TROPICAL PARADISE” variants of the COSMOS trademark and, arguably on the present record, the HOLIDAYS trademark.
Accordingly, the Panel finds that the domain name is confusingly similar to the Complainant’s proved trademark rights in COSMOS, COSMOS TOURAMA and COSMOS TROPICAL PARADISE.
B. Rights or Legitimate Interests
The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.
Paragraph 4(c) sets out three non-exhaustive examples of rights or legitimate interests for the purposes of the Policy. They are:
“(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 noncommercial 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.”
In view of the difficulty in disproving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case. For convenience the Panel refers only to WIPO Overview of WIPO Panel Views on Selected UDRP Questions paragraph 2.1.
It is common ground between the parties that the Respondent is not associated with the Complainant or authorised by it to use COSMOS in its domain name. A finding of this sort has often contributed to a finding that the Complainant has made out the required prima facie case, usually however in conjunction with other evidence suggesting that each of the circumstances outlined in paragraph 4(c) of the Policy does not apply. In some cases, the absence of association or licence has not been sufficient on its own: see e.g. Verisign Inc v. VeneSign CA,
WIPO Case No. D2000-0303. In others, it has: see e.g. Newman/Haas Racing v. Virtual Agents, Inc.,
WIPO Case No. D2000-1688.
As in the latter case, the Complainant also relies on the fame of its mark and the offering for sale of competing services by the Respondent to demonstrate the necessary prima facie case.
On the other hand, the Respondent points out that its name includes the word “Cosmos”. It says it is a well-known hotel reservation provider in China. It says further that it registered the domain name in 2005 without any knowledge of the Complainant because, it says, the Complainant and its business are unknown in China. Exhibit F to the Response purports to be a sworn statement verifying the lack of knowledge of the Complainant on the party of the Respondent.
More objectively, Exhibits D and E to the Response provide web traffic statistics compiled by the search engine at Alexa.com the Web Information Company for the disputed domain name and the Complainant’s domain name <cosmos.com>. These show that 100% of the traffic to the Respondent’s website comes from “China” and that, amongst other things, none of the traffic to the website at the Complainant’s domain name comes from “China”. (For completeness, the Panel notes that the traffic figures for the Complainant’s website at “www.cosmos.co.uk”, which features in the exhibits to the Complaint, show that about 95% of the traffic is from the United Kingdom. It does not appear possible to breakdown the country sources of the remaining 5%.) Exhibit C to the Response lists the top 100 agents using the Respondent’s website; they are all located in China.
Neither the Complaint nor the Response provides any substantive details about when the Respondent was incorporated under its name (if it is in fact incorporated) or otherwise adopted the name. The Response does indicate, however, that it was the Respondent’s existing name when the domain name was registered, as claimed by the Respondent, in 2005. (The Whois record included in the Complaint and the registrant information provided by the concerned registrar suggest that the domain name was registered in January 2006.)
As already noted, the Respondent denies knowledge of the Complainant when the domain name was adopted and (by inference) when its business started. In addition, the Panel notes that the element common to the Complainant’s trademarks and the domain name, “Cosmos”, is not a coined or invented word; unlike the term “Telstra” at issue in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The position is little different even if the Complainant’s trademarks include COSMOS HOLIDAYS.
The Complainant’s trademarks in China were not registered until December 2006; that is, almost 11 months after the latest date for registration of the domain name.
It is clear on the record that the Complainant had trademark rights and a well-established reputation in those trademarks in many parts of the world by the date the Respondent registered the domain name, whether in 2005 or January 2006. The real issue here is whether or not that reputation is shown to have extended to China or, if not, otherwise operated to preclude the Respondent from being able to claim rights or legitimate interests in China.
Apart from claiming that its trademark rights have the status of famous marks, the Complaint does not address the latter proposition. The Response at least implicitly disputes the contention.
The Complaint does state in paragraph 16 that destinations for its group trips include China. The materials included in Exhibits C, E, F and G provide some support for that, but there are several problems with these materials.
First, although the materials submitted in those exhibits amount to a bundle of pages some 2.5cm thick, there appear to be references to tours to China on only a very few pages. By far, the emphasis is on tours to other destinations.
Further, the Asia section of the Worldwide Travel Guide 2008 (which is in US dollars) included in Exhibit E lists tours to China only under the Globus, Monograms and Avalon Waterways brand names. The COSMOS trademark does not appear in this section. Other sections in the same document list tours from one or more of these brands and Cosmos, but to other destinations.
All of the references appear to be in materials relating to 2008, that is some two or three years after the domain name was registered.
The Complaint does not identify when the Complainant started tours to China. Nor does it quantify how many such tours or customers have been involved.
In all of the circumstances, the Panel is not prepared to infer on the present record that the Complainant’s undoubted reputation outside China was within the Respondent’s specific contemplation when the Respondent commenced using its name or the domain name.
Further support for this conclusion comes from the Respondent’s evidence that (i) the traffic to its website comes entirely from “China” and (ii) there is no traffic from China to the Complainant’s website. To the extent that “bona fides” are relevant to this issue (and can be assessed in a proceeding on the papers), the Panel also notes:
(a) the fact that Respondent’s website is in Chinese;
(b) the nature of “Cosmos” as a word in common usage in at least some languages; and
(c) the Respondent’s positive disavowal of any knowledge of the Complainant.
The finding that the Complainant had a worldwide reputation in the COSMOS and COSMOS TOURAMA trademarks made in Eurotech Inc. v. Cosmos European Travels AG 213 F. Supp. 2d 612 (ED Va 2002) does not assist the Complainant in this proceeding as that case was concerned with the position under US law and infringement of the Complainant’s rights in the United States of America.
In the Panel’s view, the record as a whole in this UDRP proceeding is more consistent on balance with the Respondent’s claim to have registered and used the disputed domain name because of its operation of a hotel reservation service within China under the United Cosmos name, than with the Complainant’s claim that the Respondent must necessarily have registered the disputed domain name with the Complainant’s mark and reputation specifically in mind.
Accordingly, the Panel finds that the Complainant has failed on the record in this case to establish that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
In the circumstances, there is no need to address the third requirement that the Complainant must demonstrate to succeed: that the disputed domain name has been registered and used in bad faith.
6. Decision
For all the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie Sole Panelist
Dated: July 4, 2008
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