TripAdvisor LLC and its subsidiary Smarter Travel Media LLC v. Hulmiho Ukolen / Poste restante
Claim Number: FA1410001584992
Complainant is TripAdvisor LLC and its subsidiary Smarter Travel Media LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Hulmiho Ukolen / Poste restante (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bookinhbuddy.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.Com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 15, 2014; the National Arbitration Forum received payment on October 15, 2014. The Complaint was submitted in both English and Finnish.
On October 19, 2014, Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com confirmed by e-mail to the National Arbitration Forum that the <bookinhbuddy.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 28, 2014, the Forum served the Finnish language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 17, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bookinhbuddy.com. Also on October 28, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 24, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant uses BOOKINGBUDDY to promote its hotel and vacation information and reservation service. The BOOKINGBUDDY mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. July 12, 2005, registered 2,966,035). The <bookinhbuddy.com> domain name is confusingly similar to the BOOKINGBUDDY mark in that it is a common misspelling of that mark.
2. Respondent has no rights or legitimate interests in the <bookinhbuddy.com> domain name. First, Respondent is not known by the <bookinhbuddy.com> domain name, nor has Complainant authorized Respondent’s use of the BOOKINGBUDDY mark in trade. Second, Respondent is using the domain name’s website to promote a website were generic advertising material is promoted.
3. Respondent registered and is using the <bookinhbuddy.com> domain name in bad faith. The domain name is listed for sale. The nature of the advertisements on the domain name’s website disrupts the BOOKINGBUDDY business. The confusing similarity of the domain name, coupled with the use of the domain name for advertising, suggests that Respondent is out to profit from a likelihood of confusion amongst Internet users.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is TripAdvisor LLC and its subsidiary Smarter Travel Media LLC of Newton, MA, USA. Complainant is the owner of domestic registrations for the mark BOOKINGBUDDY which it has used continuously since at least as early as 2002 in connection with the provision of travel and information services.
Respondent is Hulmiho Ukolen / Poste restante, of Helsinki, Finland. Respondent’s registrar’s address is listed as Shanghai, China. Respondent registered the <bookinhbuddy.com> domain name on or about July 11, 2006.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Finnish, thereby making Finnish the language of the proceedings. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Finnish language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English.
Complainant uses BOOKINGBUDDY to promote its hotel and vacation information and reservation service. Complainant indicates that the BOOKINGBUDDY mark has been registered with the USPTO (e.g., Reg. No. July 12, 2005, registered 2,966,035). The Panel finds that the USPTO registration satisfies Complainant’s required showing of rights under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant argues that the <bookinhbuddy.com> domain name is confusingly similar to the BOOKINGBUDDY mark in that it is a common misspelling of that mark. The Panel notes that the domain name merely misspells the mark and adds the irrelevant “.com” gTLD, neither of which dispel the confusing similarity of the domain name. See Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) (finding that the disputed domain name is confusingly similar to the at-issue mark despite the misspelling of the mark and the addition of a generic top-level domain). The Panel here finds that the domain name is confusingly similar to Complainant’s protected mark.
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant contends that Respondent is not known by the <bookinhbuddy.com> domain name, nor has Complainant authorized Respondent’s use of the BOOKINGBUDDY mark in trade. The Panel notes that “Hulmiho Ukolen” is listed as the registrant of record for the disputed domain name and that Respondent has not provided any arguments contrary to Complainant’s assertions. The Panel find that Respondent has not been commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant states that Respondent is using the domain name’s website to promote a website where generic advertising material is promoted. The Panel notes that the domain name resolves to a website promoting various travel-related advertisements. The Panel finds that Respondent has shown no Policy ¶ 4(c)(i) bona fide offering in promoting these various hyperlinks, and the commercial nature of the website prevents a finding of a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant points out that the domain name is listed for sale. The Panel notes that the WHOIS listing for the domain name included an advertisement that the domain name was available for purchase. The Panel finds that promotional offer serves as evidence of Policy ¶ 4(b)(i) bad faith. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
Complainant also claims that the nature of the advertisements on the domain name’s website disrupts the BOOKINGBUDDY business. The Panel notes that included in the hyperlinks on the disputed domain name’s website are links to websites such as “LowFare.com” and “Cheapest Tickets.” The Panel finds that commercial disruption of Complainant’s business in regard to the BOOKINGBUDDY mark, evinces Policy ¶ 4(b)(iii) bad faith. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant further contends that the confusing similarity of the domain name, coupled with the use of the domain name for advertising, suggests that Respondent is out to profit from a likelihood of confusion amongst Internet users. The Panel again recalls Respondent’s use of the domain name for hyperlink advertising. The Panel finds such advertising supports a finding of Policy ¶ 4(b)(iv) bad faith because users that visit the website may think the content is associated with Complainant when it is not. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <bookinhbuddy.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 8, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page