WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WK Travel, Inc. v. Oukuk Sl

Case No. D2019-1254

1. The Parties

The Complainant is WK Travel, Inc., United States of America (“United States”), represented by Cowan, DeBaets, Abrahams & Sheppard, LLP, United States.

The Respondent is Oukuk Sl, Spain.

2. The Domain Name and Registrar

The disputed domain name <onetravele.com> is registered with Acens Technologies, S.L.U. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2019. On June 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 4, 2019, 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. In response to a clarification request by the Center, the Complainant filed an amendment to the Complaint on June 5, 2019.

The Center sent an email communication to the parties on June 5, 2019 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Spanish. The Complainant submitted a request for English to be the language of the proceeding on June 7, 2019. The Respondent did not submit any communication regarding the language of the proceeding.

The Center verified that the Complaint together with the amendment to 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 June 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2019.

The Center appointed George R. F. Souter as the sole panelist in this matter on July 12, 2019. 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

Preliminary Matter - Language of Proceedings

The language of the registration agreement is Spanish, and the Respondent is domiciled in Spain. The Complainant has requested that the language of proceedings should be English because the disputed domain name is an English language domain name, because English is the language used in the website operated under the disputed domain name, and because the Respondent did not exercise the option of taking part in these proceedings. The Complainant also claimed that, as a United States corporation, use of Spanish as the language of the proceedings would be unduly onerous on them. In the Panel’s opinion, the natural language of proceedings in this case would be Spanish. However, the Respondent received details of the proceedings in Spanish from the Center, and could have argued that Spanish be used as the language of the proceedings, but chose not to. In these circumstances, the Panel, in its discretion, considers that the balance of convenience supports the argument that the language of the proceedings in this case should be English, and so finds.

4. Factual Background

The Complainant is a United States corporation, which has used its ONETRAVEL trademark since December 31, 1998 in connection with its travel-planning industry services, and has spent over USD 100 million in promoting its ONETRAVEL trademark in connection with its services. The Complainant is the proprietor of United States trademark registration number 4,545,969, registered on June 10, 2014, in relation to its ONETRAVEL trademark. The Complainant also uses the domain name <onetravel.com>.

The disputed domain name was registered on February 10, 2019, and is being used in connection with a website offering travel-related services.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is confusingly similar to its ONETRAVEL trademark, containing its ONETRAVEL trademark in its entirety.

The Complainant alleges that the Respondent has used branding that looks similar to branding that the Complainant has used on its “onetravel.com” website.

The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that the Respondent, to the best of the Complainant’s knowledge, is not commonly known by the disputed domain name, and that the Complainant has never granted permission to the Respondent to use its ONETRAVEL trademark in connection with a domain name, or otherwise.

The Complainant alleges that the disputed domain name redirects Internet users to competing travel booking websites, including “us.myholidays.com”, “edreams.net”, “justairticket.com”, and “trip.com”, among others, giving Internet users the false impression that the Infringing Website is somehow affiliated with the Complainant or that the Complainant approves of or sponsors the services accessed through the redirected links.

The Complainant alleges that the disputed domain disputed domain name was registered in bad faith, and is being used in bad faith in connection with a website offering competing services to those offered by the Complainant, to the Complainant’s likely detriment.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:

(i) the disputed 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 disputed domain name; and

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

A. Identical or Confusingly Similar

The Panel accepts that the Complainant’s registration and use of its ONETRAVEL trademark is sufficient for the purposes of these proceedings.

It is well-established in prior decisions under the UDRP, with which the Panel agrees, that the mere addition of a generic Top-Level Domain (“gTLD”) indicator is irrelevant when comparing a trademark with a disputed domain name. Accordingly, the Panel finds that the gTLD indicator “.com” is irrelevant when comparing the disputed domain name with the Complainant’s trademark in the circumstances of the present case.

It is well-established in prior decisions under the Policy, with which the Panel agrees, that the mere addition of a descriptive or non distinctive element to a trademark in which the Complainant has rights is insufficient to avoid a finding of confusing similarity between the Complainant’s trademark and the disputed domain name. In the Panel’s opinion, the mere addition of a terminal “e” to the Complainant’s ONETRAVEL trademark is trivial, and the overall impression of the disputed domain name remains that of the Complainant’s ONETRAVEL trademark.

Accordingly, the Panel considers the additional letter “e” to be a merely descriptive or non distinctive element, and finds that the disputed domain name is confusingly similar to the Complainant’s ONETRAVEL trademark.

B. Rights or Legitimate Interests

It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.

The Panel considers the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. In the circumstance of the present case, in which the Panel believes that the Respondent has clearly had the Complainant’s trademark in mind when registering the disputed domain name, the Panel regards it as appropriate to find that the disputed domain name was registered in bad faith, and so finds.

It is well-established in prior decisions under the Policy, with which the Panel agrees, that the use of a disputed domain name in connection with a website offering services competing with those of the Complainant constitutes use of the disputed domain name in bad faith. The Panel, accordingly finds that the disputed domain name is being used in bad faith.

Accordingly, the Panel finds that the Complainant has satisfied all the requirements to succeed in these proceedings.

7. Decision

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 name <onetravele.com> be transferred to the Complainant.

George R. F. Souter
Sole Panelist
Date: July 29, 2019