The Complainant is TripAdvisor LLC of Newton, Massachusetts, United States of America, represented by K&L Gates LLP, United States of America.
The Respondent is M. Lasage of Nijmegen, the Netherlands.
2. The Domain Name
The disputed domain name <tripadvisor.nl> (hereinafter the “Domain Name”) is registered with SIDN.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2009 by email and on March 9, 2009 by registered mail in hardcopy. On March 6, 2009, the Center transmitted by email to SIDN a request for registration verification in connection with the Domain Name. On March 10, 2009, SIDN transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On March 10, 2009, the Center notified the Parties that in principle, the language of the proceedings is Dutch and therefore requesting Complainant to provide at least one of the following:
1. satisfactory evidence of an agreement between Complainant and Respondent to the effect that the proceedings should be in English; or
2. the Complaint translated in Dutch; or
3. a request for English to be the language of the administrative proceedings, including arguments and supporting material as to why the proceedings should be conducted in English.
The Complainant on March 11, 2009, filed a request for English to be the language of proceedings. The Respondent on March 16, 2009 submitted by email a reply to the Center's request of March 10, 2009 regarding the language of proceedings. According to the Respondent, she is able to speak English to a certain degree however she can better express herself in the Dutch language. Therefore the Respondent requests to be allowed to file the Response in the Dutch language.
The Center verified on March 18, 2009 that the Complaint satisfied the formal requirements of the Regulations. In accordance with the Regulations, articles 5.1 and 15.5, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 18, 2009. In accordance with the Regulations, article 16, the Center has used its authority to take a provisional decision with regard to the language of proceedings. The Center has decided to accept the Complaint as filed in English and accept the Response of Respondent in either English or Dutch.
In accordance with the Regulations, article 7.1, the due date for Response was April 7, 2009. The Response was filed with the Center on April 6, 2009 by email and on April 9, 2009 in hardcopy by registered mail. Accordingly, the Center acknowledged receipt of the Response on April 7, 2009.
On April 15, 2009 the Complainant submitted a Supplemental Filing. In accordance with the Regulations, article 15.4, a copy of this request was sent to Respondent by email. The Center acknowledged receipt of this Supplemental Filing on April 15, 2009.
The Center appointed Paul L. Reeskamp as sole Panelist in this matter on April 21, 2009. The Panelist finds that he was properly appointed. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 8.2.
4. Factual Background
The Complainant, TripAdvisor LLC, is a company providing travel related services on the Internet through, amongst other websites, its website “www.tripadvisor.com”. The Complainant operates in the United States of America, the United Kingdom of Great Britain and Northern Ireland, Ireland, France, Germany, Italy, Spain, India and Japan. Through the Complainant's websites, among other things, customers can obtain information relating to travel accommodations, airline tickets, restaurants, vacation packages and cruises.
In April 2004, the Complainant's predecessor TripAdvisor, Inc. was acquired by IAC/InterActiveCorp, a worldwide, multi-brand interactive commerce company, which acquisition was announced publicly via news outlets.
The Complainant holds several Community trademarks, among which word marks and device marks, containing the name TRIPADVISOR. Furthermore, the Complainant provides its services using domain names consisting of the name TRIPADVISOR and specific country code top levels, including:
<tripadvisor.com>, <tripadvisor.co.uk>, <tripadvisor.it>, <tripadvisor.es>, <tripadvisor.de>, <tripadvisor.fr>, <tripadvisor.ie>, <tripadvisor.jp> and <tripadvisor.in>.
The Respondent became the holder of the Domain Name on January 30, 2008 through a change of ownership. The Domain Name consists of the name TRIPADVISOR and the country code top level domain for the Netherlands: “.nl”.
Currently, the Domain Name leads to a travel website that claims to give travel advice on the basis of weather forecasts. The website consists of several pages: (i) the main page, containing a link to “http://radar.weeronline.nl/”, (ii) a user forum, (iii) a ‘weather searcher', (iv) a travel advice page, (v) a page to submit travel stories and (vi) a photo page. In addition, the website contains several sponsored links to other travel related, websites.
5. Parties' Contentions
A. Complainant
The Complainant claims that it and/or its predecessors have been using the trademark TRIPADVISOR as early as 2000 on or in connection with a variety of goods and services. The services are mainly travel related services provided through the Complainant's websites. According to the Complainant, it attracts more than 25 million monthly visitors, has 10 million registered members, 20 million reviews and opinions, covers over 300,000 hotels and attractions. Furthermore, in January 2009 <tripadvisor.com> had 206,000 unique users from the Netherlands. According to the Complainant, substantial sums are invested in advertising and promoting its goods and services in connection with the TRIPADVISOR trademarks.
The Complainant claims to be the owner of trademarks worldwide consisting of or including TRIPADVISOR, including the following explicitly mentioned Community trademarks registered with the Office for Harmonization in the International Market:
- the Community device mark TRIPADVISOR (no. 4759767) filed on December 2, 2005 in classes 38 (providing on-line electronic bulletin boards for transmission of messages among computer users in the field of travel), 39 (travel information services, etc.), 42 (computer services, namely, providing search engines for obtaining travel data on a global computer network) and 43 (providing lodging information services; hosting a website containing reviews of hotel accommodations);
- the Community word mark TRIPADVISOR (no. 66441381) filed on November 15, 2007 in the classes 38, 39, 42 and 43;
- the Community trademark LOCAL PICKS BY TRIPADVISOR (no. 6608591) filed on January 25, 2008 in classes 39 (transport; packaging and storage of goods; travel arrangement), 41 (among other things, sharing information about restaurants and local attractions) and 42 (among other things, providing temporary use of on-line non-downloadable software that allows users to share information about travel, geography, leisure activities, restaurants and local attractions);
- the Community trademark CITIES I'VE VISITED BY TRIPADVISOR (no. 6608434) filed on January 25, 2008 in classes 39 (transport; packaging and storage of goods; travel arrangement), 41 (among other things, providing online social networking activities in the fields of geography, travel and leisure) and 42 (among other things, providing temporary use of on-line non-downloadable software that allows users to share information about geography, travel and leisure activities).
In addition, the Complainant claims to have a pending application for the Community device mark TRIPADVISOR (no. 6989404), filed on June 16, 2008, in the classes 38, 39, 42 and 43.
The Complainant claims that on the date on which Respondent became holder of the Domain Name, the TRIPADVISOR marks and the Complainant's websites were well-known. In addition, the acquisition of the Complainant's predecessor by IAC/InterActiveCorp had taken place which was publicized before the registration of the Domain Name by the Respondent.
A.1 Identical or confusingly similar
The Complainant has contended that the Domain Name is a second-level domain that is identical to the Complainant's TRIPADVISOR word mark and to the literal component of Complainant's device marks. In addition, it uses a dominant component of Complainant's LOCAL PICKS BY TRIPADVISOR and CITIES I'VE VISITED BY TRIPADVISOR marks. The “.nl” country code top-level domain should be disregarded (Verizon Trademark Services LLC v. Van Groenendael Adviesgroep, WIPO Case No. DNL2008-0029, September 18, 2008). The Complainant therefore holds that the Domain Name is identical to the Complainant's TRIPADVISOR marks and is confusingly similar to the Complainant's other marks.
A.2 Rights or legitimate interests
The Complainant has put forward that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant states that the Respondent can satisfy none of the circumstances stipulated in the Regulations, article 3.1:
- The Respondent is not using the Domain Name in connection with a bona fide offering of goods or service. The Respondent's ‘weather advice' consists solely of a radar screen showing precipitation in the Netherlands. A user who clicks on the radar screen or the link below is taken to a third party website held by WeerOnline B.V. This company is recently acquired by Zoover International B.V. (“Zoover”). Zoover is a competitor of the Complainant in the Netherlands with regard to travel-related services. Furthermore, the website consists of ‘placeholder' pages that indicate travel information, a ‘forum' link, a link to a ‘Sudoku' Game and third party advertisements at the bottom of the webpage. The Complainant presumes that the Respondent receives click-through fees for each customer it diverts to other websites. The Domain Name does not resolve to a website for legitimate commercial use (Deutsche Telekom AB and T-Mobile Netherlands B.V. v. A. Coppola, WIPO Case No. DNL2008-0058, December 29, 2008).
- The Respondent is an individual and not commonly known by the Domain Name, which consists of the Complainant's TRIPADVISOR mark and trade name. The Respondent has no connection or affiliation with Complainant, nor is it a licensee of the TRIPADVISOR mark. The Respondent does not have any rights with respect to the Domain Name, which wholly incorporates the Complainant's well-known TRIPADVISOR mark.
- The Respondent uses the Complainant's mark to misleadingly divert customers who are likely seeking the Complainant's travel-related services. These customers are directed to the Respondent's page instead. The Respondent's page includes only placeholders and links to third party websites. In addition, the Respondent's page includes advertisements and links for which the Respondent likely receives click-through fees.
A.3 Registered or used in bad faith
The Domain Name has been registered or is being used in bad faith. The Complainant addresses three of the four circumstances stipulated in the Regulations, article 3.2, as evidence for this claim:
- The Domain Name has been registered in order to prevent the Complainant from using it. The Complainant has worldwide presence most notably through its website “tripadvisor.com” and numerous country code top level domains using “tripadvisor” as second level domain. The Respondent likely knew of Complainant and its services before registering the Domain Name. The Complainant emphasizes that Respondent became holder of the Domain Name after the publicized acquisition of The Complainant. The timing of registration and the nature of the content on the Respondent's website indicate that Respondent was probably aware of the Complainant's business. By purporting to offer travel-related services similar to the Complaint's, the Respondent seeks to divert business from the Complainant to itself.
- The Respondent disrupts the Complainant's business activities by preventing the Complainant from targeting its Netherlands-based audience through the Domain Name. The Complainant wishes to use the “.nl” country code top level domain for its business in the Netherlands. In addition, the Complainant has reason to believe that the Respondent is associated with Zoover, the Complainant's competitor. Firstly, because of the link to the WeerOnline website, and secondly because the Respondent's residential address is identical to that of Mr. R. Driessen, founder of Zoover.
- The Domain Name has been or is being used for commercial gain by attracting Internet users to the Respondent's website through the likelihood of confusion which may arise with the Complainant's TRIPADVISOR mark. Internet users are likely to be confused as to the source, sponsorship, affiliation or endorsement of the website by the Complainant, because the Domain Name consists of the Complainant's mark. A user searching for the Complainant's services in the Netherlands would reasonably believe the Domain Name will lead to a website held by the Complainant. However, such user will be directed to the Respondent's website and the third party sites linked to this site. According to the Complainant, this diversion and attempt to capitalize on its well-known mark is evidence of the Respondent's bad faith use and registration.
Therefore, the Complainant is of the opinion that it is entitled to transfer of the Domain Name.
B. Respondent
The Respondent wishes to continue the use of her website under the Domain Name. In response to the claims of the Complainant, the Respondent states the following.
The Respondent indicated she intended to make a weather related vacation website. The Respondent further indicated that she was not aware of the Complainant or the press publications when she became holder of the Domain Name. She considers TRIPADVISOR a descriptive name. The registration was not a reaction to the press publication regarding the acquisition of the Complainant's predecessor.
The Respondent has been approached by the Complainant in 2009 with regard to a possible sale of the Domain Name and the website. However, the Respondent wishes to continue her website as the name suits her plans and the website brings in certain funds.
The Respondent acknowledges that her website is of a lower quality than <tripadvisor.com>, but she stresses that the website brings in funds and she claims that it can realize growth with the ‘weather-approach'. The Respondent does not in any way refer to the American website <tripadvisor.com> and is prepared to include a comment with regard to the Complainant to avoid any confusion. Furthermore, the Respondent emphasizes that payment for links is common on the Internet.
Finally, the Respondent acknowledges a close relationshop to Mr. Driessen, who works for Zoover. The link to “www.WeerOnline.nl” is purely coincidental. It is the biggest weather website in the Netherlands, and thus a logical spot to obtain weather information. The Respondent does not refer to “www.WeerOnline.nl” itself.
6. Discussion and Findings
Language of proceedings
The Complainant has filed the Complaint in the English language thereby requesting the administrative proceedings to be in the English language. The Complainant requested to conduct these proceedings in English, because the Complainant has no knowledge of the Dutch language, and the Respondent does have knowledge of the English language.
In response to the Center's request for documents with regard to the language of proceedings, the Complainant submitted by email a request that the Center allow the proceedings to be conducted in English as (i) the Complainant is a company located in the United States of America, (ii) none of the Complainant's employees involved in the matter has knowledge of the Dutch language and (iii) according to the Complainant the Respondent will not be prejudiced if English is the language of the proceedings.
In response to the Center's request for documents with regard to the language of proceedings, the Respondent requested to be allowed to respond on the merits in the Dutch language. The Respondent stated in an email of March 16, 2009 that she is able to speak English to a certain degree however that she can better express itself in the Dutch language.
The Center has provisionally decided to accept the Complaint as filed in English and accept a Response in either English or Dutch. Accordingly, the Respondent has submitted her Response in Dutch. The Panelist understands from the correspondence that the Complainant has been able to take note of the content of the Response.
According to the Regulations, Article 16, the Panelist is entitled to decide that the proceedings will be conducted in English, if a party has an insufficient comprehension of the Dutch language. The Complainant claims, in the Panelist's opinion convincingly, that it has no knowledge of the Dutch language. In her email concerning the language of proceedings the Respondent confirms that she does speak English to a certain degree. It further shows that the Respondent has understood the documents submitted in English, but that the Respondent prefers to give her Response in Dutch. The Panelist therefore, in line with the provisional decision of the Center, decides to accept the Response in the Dutch language and further that these proceedings will be conducted in English.
Complainant's request for an additional submission
In accordance with the Regulations, article 10.2, the Panelist has to judge whether the Supplemental Filing by the Complainant should be admitted in the proceedings.
The Panelist decides not to take the Complainant's Supplemental Filing into consideration for the following reasons:
- Under the Regulations the procedure in principle consists of a complaint and a response followed by a decision. The nature of this procedure in principle does not allow for extensive fact finding through for example witness or expert hearings. Hence, a complainant should in principle anticipate that the complaint will be its only possibility to present its arguments and to deliver evidence. For this reason a complainant should try to anticipate possible defences of a respondent, given that there is fair chance that a respondent will defend itself and will challenge the contentions of complainant.
- The Panelist appreciates that it may not always be possible to do so, for example because the defences are unknown or could not reasonably be expected. As demonstrated by the Complaint, it appears the Complainant has been able to anticipate on the defences of Respondent.
- In addition, in light of the overall purpose and framework of the Regulations for a Panelist to issue the transfer of abusive domain name registrations, there should be no reasonable doubt as to the absence of rights or legitimate interests or the existence of bad faith. If, as in this particular case, the contentions of parties require significant additional evidence, for example through witness and/or expert hearings, civil court proceedings are more appropriate and better equipped than the present procedure.
- Finally, the Panelist finds itself sufficiently informed to decide on the basis of the Complaint and the Response.
General remarks
In accordance with the Regulations, article 1, a complainant can only submit the following claim: “Change of domain name holder, whereby the complainant becomes the domain name holder instead of the Respondent.” The Complainant must prove in accordance with the Regulations, article 2.1, that:
“(a) a domain name is identical or confusingly similar to:
I. a trademark, or trade name, protected under Dutch law in which the complainant has rights;
II. a personal name registered in a Dutch municipal register of persons, or a name of a Dutch public legal entity or a name of an association or foundation located in the Netherlands under which complainant undertakes public activities on a permanent basis; and
(b) the domain name holder has no rights to or legitimate interests in the domain name; and
(c) the domain name has been registered or is being used in bad faith.”
A. Identical or Confusingly Similar
The Panelist finds that the Complainant has rights in the TRIPADVISOR trademarks listed above. The Community trademarks containing the component TRIPADVISOR are protected under Dutch law as of the registration dates. The Complainant indicated it uses TRIPADVISOR as a trade name as well. However, the Panelist notes that it cannot establish as of which moment this trade name is used in the Netherlands.
The distinctiveness of the trademark TRIPADVISOR has been examined in the registration procedure of the Office for Harmonization in the Internal Market. In accordance with the Regulation on the Community Trade Mark (No. 40/94), article 38 in conjunction with article 7, such filings will not be registered if the trade marks concerned are descriptive. In addition, the Panelist notes that a name can gain distinctiveness over the years in relation to the services (see also the Regulation on the Community Trade Mark, article 7 paragraph 3). The Complainant has a substantial amount of unique users from the Netherlands. TRIPADVISOR should therefore be considered as well-known in the Netherlands for travel services via Internet. In line with the Regulation on the Community Trade Mark, article 95, the Panelist will presume the Community trademarks to be valid as the Respondent does not claim the invalidity of the Community trademarks.
Since the name TRIPADVISOR is fully incorporated in the Domain Name and the country code top level may be ignored, the Panelist finds the Domain Name to be identical to the Community word mark TRIPADVISOR and confusingly similar to the other Community trademarks held by the Complainant.
The Panelist finds that the Domain Name is identical and confusingly similar to the Complainant's Community trademarks respectively. The Complainant has therefore complied with article 2.1(a) of the Regulations.
B. Rights or Legitimate Interests
According to the Regulations, article 2.1(b), the Complainant must demonstrate that the Respondent has no rights to or legitimate interests in the Domain Name. This condition is met if the Complainant substantiates prima facie that the Respondent has no rights or legitimate interests and the Respondent fails to rebut that by providing evidence of – for example – any of the three circumstances stipulated in the Regulations, article 3.1 (Société Air France v. A Coppola,
WIPO Case No. DNL2009-0001, February 23, 2009).
The Complainant has put forward that the Respondent has no rights to or legitimate interests in the Domain Name, because (i) the Respondent is not using the Domain Name in connection with a bona fide offering of goods or service, (ii) the Respondent is not commonly known by the Domain Name, and (iii) the Respondent uses components of the Complainant's trademarks to misleadingly divert customers.
The Respondent suggests it is using the Domain Name for bona fide offering of services, i.e. weather based travel advices. The website under the Domain Name is still under construction. Changes have been made in the period between the filing of the Complaint and the date of this decision. The Respondent does not substantiate the use of the Domain Name, nor does it substantiate which services or goods are offered by the use of the Domain Name. It is not clear to the Panelist neither from the Response, nor from the Respondent's website, what the precise services and/or goods are that the Respondent is offering or intends to offer. The Respondent has indicated to obtain funds by certain links to other sites and adds on the website under the Domain Name, however, this alone use does not qualify as offering bona fide goods or services in the context of the Regulations, article 3.1 (a).
Therefore, the Panelist is of the opinion that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, nor that demonstrable preparations to such use are made.
Furthermore, the Respondent does not claim, nor can the Panelist establish any indications, that the Respondent (i) is commonly known by the Domain Name, (ii) is making a legitimate non-commercial use of the Domain Name, or in any possible other way has a right to or legitimate interest in the Domain Name.
For these reasons, the Panelist finds that the Respondent has no rights to or legitimate interests in the Domain Name. The Complainant has therefore complied with article 2.1(b) of the Regulations.
C. Registered or Used in Bad Faith
On the basis of the Regulations, article 2.1 (c), the Complainant can only request a change of the domain name holder, if the Domain Name has been registered or is being used in bad faith.
The Complainant claims on the basis of Regulations, article 3.2 that the Domain Name has been registered in order to prevent the Complainant from using it and the Domain Name has been registered primarily for the purpose of disrupting the Complainant's business activities by preventing the Complainant from targeting its Netherlands-based audience.
The circumstance that the Domain Name has been registered in order to prevent the Complainant from using it requires awareness of the Complainant and its activities with the Respondent. Such awareness is necessary also, to evidence the existence of the circumstance that the Domain Name has been registered primarily for the purpose of disrupting the Complainant's activities. The Respondent claims that during registration of the Domain Name, it was not familiar with the Complainant and its activities, nor with any relevant press publications.
At the moment the Respondent enjoys a close connection to Mr. Driessen, involved in a direct competitor of the Complainant. It is fair to assume that Mr. Driessen must have been aware of the Complainant and its activities at the time the Respondent became the holder of the Domain Name. However, in the absence of further information about this connection, it is not possible to impute Mr. Driessen's knowledge to the Respondent at the time the Respondent became the holder of the Domain Name, also taking into account that the press publication might not have reached the Dutch public. The Panelist acknowledges that the Domain Name does disrupt the Complainant's activities and finds it unlikely that the Respondent was not aware of the Complainant and its activities at the time she became the holder of the Domain Name, given the travel related website of the Respondent and her relationship with a founder of a competitor. However in light of the Panelist's further considerations as set out below, the Panelist declines to reach a conclusion on bad faith registration on these grounds.
The Complainant further claims that the Domain Name has been or is being used for commercial gain by attracting Internet users to the Respondent's website through the likelihood of confusion which may arise with the Complainant's TRIPADVISOR trade marks and trade name.
The Domain Name leads to a website that offers travel related services and links to other travel related websites. The website is of a low quality and does not consist of many pages, nor of substantial content. The Respondent admits to receive funds with the links and/or adds on the website. The Panelist finds that there is no specific need for the Respondent to use this specific domain name (Pres Rb. Breda, 1 maart 2001, DomJur 2001-69, par. 3.4). At the moment, Internet users will end up at the wrong websites, which are websites of competitors of the Complainant. It is therefore very likely that the Respondent uses the Domain Name to attract Internet users to her website through the likelihood of confusion which may arise with the Complainant's TRIPADVISOR trade marks. Given the high exposure of the Complainant's trademarks in the Community and in the Netherlands more in particular, and the Complainant's repute in the travel services business, which is not contested by the Respondent, the Panelist is sufficiently convinced that the use of the Domain Name is in bad faith.
In addition, on the basis of Regulation on the Community Trade Mark, article 9 paragraph 1 sub (a), Complainant is entitled to prevent Respondent not having his consent from using in the course of trade any sign which is identical with Complainant's Community trademarks in relation to services which are identical with those for which the Community trademark is registered.
Therefore, the Panelist finds that the Domain Name is used in bad faith. The Complainant has therefore complied with article 2.1(c) of the Regulations.
7. Decision
For all the foregoing reasons, in accordance with articles 1 and 13 of the Regulations, the Panelist orders that the domain name <tripadvisor.nl> be transferred to the Complainant.
Paul L. Reeskamp Sole Panelist
Dated: May 8, 2009
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