The Complainant is Trivago N.V., Germany, internally represented.
The Respondent is Fleming Rostrup, Norway / kjell magnar mellingen, Norway / Registration Private, Domains By Proxy, LLC, United States of America (the “United States”) / Whois Agent (794500973), Whois Privacy, United States.
The disputed domain name <payments-trivago.com> is registered with eNom, Inc. and <rent-trivago.com> (the “Domain Names”) is registered with GoDaddy.com, LLC (the “Registrars”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2019. On August 7, 2019 and on August 9, 2019, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On August 7, 2019, the Registrar eNom, Inc. and on August 9, 2019, the Registrar GoDaddy.com, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 12, 2019 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint or to file a separate Complaint for each of the Domain Names. The Complainant filed an amended Complaint on August 13, 2019.
The Center verified that the Complaint together with the amended 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 August 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 6, 2019.
The Center appointed Karen Fong as the sole panelist in this matter on September 11, 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 7.
The Complainant provides a hotel comparison website under the brand name TRIVAGO which operates in 55 countries and is available in over 30 languages. The Complainant also provides a booking service for users of this website. The TRIVAGO trade mark is registered in many jurisdictions including the United States and Norway where the underlying Respondents appear to be located. The earliest trade mark submitted in evidence is dated August 18, 2006, registration number 910828 (the “Trade Mark”).
The Domain Name <payments-trivago.com> was registered by Fleming Rostrup (Respondent 1) who has an address in Norway on July 30, 2019. The Domain Name is not connected to an active website. The Domain Name <rent-trivago.com> was registered by Kjel Magnar Mellingen (Respondent 2) who also has an address in Norway on August 1, 2019. The Domain Name is also not connected to an active website. The Respondent advertises non existent apartments for rental on apartment rental and real estate rental websites. The Respondent then uses the Domain Names as email addresses such as “[email protected]” and “[email protected]” so as to obtain deposits and advance payments from customers as part of a fraudulent scheme that the Respondent calls the “Trivago Protection Programme”. The invoices provided by the victims of the scheme bear the Trade Mark in the multi-coloured logo used by the Complainant (the “Logo”) and includes the statement “Trivago certifies that the information of this invoices is true and correct…” and a “Trivago” stamp.
The preliminary issue to be determined is whether the Complainant is entitled to bring a consolidated complaint against the two Respondents, or whether it is necessary for the Complainant to bring individual complaints against the individual Respondent.
Paragraph 5(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative proceeding. In fact, paragraph 3(c) of the Rules, provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.
In relation to the position of a complaint being filed against multiple respondents, Section 4.11.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides that in such cases, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.
UDRP panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).
The panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 after reviewing the relevant UDRP decisions in relation to consolidation in multiple respondents took the view that the administrative provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfill the requisite criteria. Once a case is admitted on a prima facie basis, the respondent has the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.
In the present case, the Complainant submits that the Domain Names are subject to common control as both Domain Names are being used for the identical fraudulent scheme of purporting to be the Complainant and using the Domain Names as email addresses to request advance payments for rental apartments which do not exist.
In addition to the above, the Panel notes that the redacted invoices submitted in evidence bear identical layouts and language even though the email addresses bear the different Domain Names. The evidence submitted points to the fact that the Domain Names are subject of common control. The modus operandi of both Respondents appear to be identical, providing further evidence of common conduct based on the registration and use of the Domain Names and that such conduct interferes with the Trade Marks. Furthermore, the Complainant’s claims against the Domain Names involve common questions of law and fact.
The Respondents had the opportunity but did not respond to the Complaint. Accordingly, applying the principles to the facts in this case, the Panel finds that the Complainant has established more likely than not that the Domain Names are subject to common ownership or control. The Panel finds such common control to justify consolidation of the Complainant’s claims against the registrants of the Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all the Parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules.
In light of the above, the Respondents may be referred to collectively as the Respondent hereafter.
Accordingly the Panel determines that this Complaint consisting of multiple Respondents should, for the reasons discussed above, be permitted to be consolidated into a single Complaint for the purpose of the present proceedings under the Policy. The Respondent has not chosen to file a response and consequently there are no submissions to be taken into account on the procedural issues.
The Complainant contends that the Domain Names are confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to trade marks or service marks 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 Names were registered and are being used in bad faith.
7.2 Substantive Analysis
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case the Domain Names contains the Complainant’s distinctive Trade Mark in its entirety and one with the descriptive word “rent” and “-” as its prefix and the other with “payment” and “-” as its prefix. The addition of these terms do not negate the confusing similarity encouraged by the Respondent’s complete integration of the Trade Mark in the Domain Names. E.g., N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org, WIPO Case No. D2011-0260; Oakley, Inc. v. wu bingjie aka bingjie wu/Whois Privacy Protection Service, WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic, WIPO Case No. D2010-0207. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a standard registration requirement.
The Panel finds that the Domain Names are identical or confusingly similar to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant submits that the Respondent is not in any way connected or affiliated with the Complainant. The Respondent has not been authorized by the Complainant to make any use of the Trade Mark. The Respondent cannot assert that it was using or had made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services. The use of a third party’s trade mark in a domain name in connection with a fraud scheme cannot be considered a bona fide offering of goods or services as it is clearly a case where a respondent is seeking to defraud others by relying on the trade mark.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not provided any arguments to rebut the allegations of fraud. The use of a domain name to perpetrate fraud against third parties cannot ever confer rights or legitimate interests under this element. The Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Names. The documents which it used to defraud third parties bear the Trade Mark and purports to originate from the Complainant. It is implausible that it was unaware of the Complainant when it registered the Domain Names.
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with the fact that the Domain Names are being used as an instrument of fraud nor any explanation for the Respondent’s choice of the Domain Names are also significant factors to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith.
The Domain Names are also used in bad faith. The Domain Names are used as email addresses to perpetrate fraud. This amounts to using the Domain Names to intentionally attract for commercial gain, Internet users to an online location by creating a likelihood of confusion with the Complainant as the source, sponsorship, affiliation or endorsement of the website is bad faith in accordance with paragraph 4(b)(iv) of the Policy
From the above, the Panel finds that the Respondent has registered and used the Domain Names in bad faith and the Complainant has succeeded in proving the third element.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <payments-trivago.com> and <rent-trivago.com> be transferred to the Complainant.
Date: September 13, 2019
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