CW Travel Holdings, N.V. v. Fernando animas
Claim Number: FA2111001973551
Complainant is CW Travel Holdings, N.V. (“Complainant”), represented by Lindsay M.R. Jones of Merchant & Gould, P.C., Minnesota, USA. Respondent is Fernando animas (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mycwtravel.com>, registered with Dattatec Corp.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 16, 2021; the Forum received payment on November 16, 2021.
On December 14, 2021, Dattatec Corp confirmed by e-mail to the Forum that the <mycwtravel.com> domain name is registered with Dattatec Corp and that Respondent is the current registrant of the name. Dattatec Corp has verified that Respondent is bound by the Dattatec Corp 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 December 20, 2021, the Forum served the Complaint and all Annexes, including a Spanish and English language Written Notice of the Complaint, setting a deadline of January 10, 2022 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@mycwtravel.com. Also on December 20, 2021, the Spanish and English language 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 Forum transmitted to the parties a Notification of Respondent Default.
On January 12, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The Panel notes that the Registration Agreement applying to the disputed domain name is written in the Spanish language, thereby making the language of the proceedings to be in Spanish because of the provision in UDRP Rule 11(a). However, Complainant has submitted that the proceeding should be conducted in English.
In support of that contention Complainant has submitted that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine that the appropriate language of the proceeding should be a language other than that of the registration agreement, taking into consideration the particular circumstances of the administrative proceeding. The Panel has given consideration to that issue and has had regard to the decision in FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English).
Complainant contends the disputed domain name uses English characters and words, suggesting that Respondent is familiar with the English language. Further, Complainant alleges Respondent engaged in a phishing scheme, communicating with third-parties in English.
Having regard to all the circumstances, the Panel determines under UDRP Rule 11 (a) that the proceeding will be conducted in the English language and that the matter may go forward on that basis.
A. Complainant
Complainant made the following contentions.
Complainant engages in the travel management business, including the management of business travel, meetings, incentives, conferencing, and exhibitions. Complainant asserts rights in the CWT mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,006,062, registered on April 25, 2015). See Compl. Annex 3. Respondent’s <mycwtravel.com> is identical or confusingly similar to Complainant’s CWT mark, as it incorporates the mark in its entirety, only adding the generic terms “my” and “travel”, as well as the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized or licensed Respondent to use the CWT mark, nor is Respondent commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the disputed domain name and resolving website divert users from Complainant.
Respondent registered and uses the <mycwtravel.com> domain name in bad faith. Respondent disrupts Complainant’s business by redirecting users to Complainant’s competitors. Additionally, Respondent attempts to attract users for commercial gain through a phishing scheme. Respondent also had actual notice of Complainant’s rights in the mark, evidenced by the fame and notoriety of the mark, as well as attempting to pass off as Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Netherlands company that engages in the travel management business, including the management of business travel, meetings, incentives, conferencing, and exhibitions.
2. Complainant has established its rights in the CWT mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,006,062, registered on April 25, 2015).
3. Respondent registered the <mycwtravel.com> domain name on July 19, 2021.
4. Respondent has caused the disputed domain name and its resolving website to be used for a phishing scheme and to divert internet users from Complainant so that they compete with services provided by Complainant.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has trademark rights in the CWT mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,006,062, registered on April 25, 2015). See Compl. Annex 3. When a complainant registers a mark with the USPTO, it is sufficient to establish rights in the mark. See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”); see also H-D Michigan, LLC v. Private Whois Service, FA 1006001328876 (Forum July 12, 2010) (finding that “Complainant has sufficiently registered its HARLEY-DAVIDSON mark with the USPTO to prove Complainant’s rights in the mark according to Policy ¶ 4(a)(i), regardless of the fact that Respondent lives or operates outside the United States.”). Therefore, the Panel finds Complainant has sufficiently established its rights in the CWT mark.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CWT mark. Complainant argues Respondent’s <mycwtravel.com> domain name is identical or confusingly similar to Complainant’s CWT mark, as it incorporates the mark in its entirety, simply adding the generic words “my” and “travel”, in the latter case by blending the spelling of the mark together with the word “travel”, and adding the “.com” gTLD. The mere addition of a generic term and gTLD is not sufficient to differentiate a disputed domain name from a mark. See MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). The Panel therefore finds the <mycwtravel.com> domain name is identical or confusingly similar to Complainant’s CWT mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CWT trademark and to use it in its domain name, adding the generic words “my” and “travel”, in the latter case by blending the spelling of the mark together with the word “travel”, which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <mycwtravel.com> domain name on July 19, 2021;
(c) Respondent has caused the disputed domain name and its resolving website to be used for a phishing scheme and to divert internet users from Complainant to Respondent so that it can compete with services provided by Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights and legitimate interests in the <mycwtravel.com> domain name because Respondent is not authorized to use the CWT mark, nor is Respondent commonly known by the disputed domain name. Panels have previously looked at the available WHOIS information to determine whether a Respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Furthermore, lack of authorization to use a mark serves as further indication that a respondent is not commonly known by the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”); see also Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). Here, the WHOIS information shows Respondent is known as “Fernando animas” and there is no evidence to suggest Complainant authorized Respondent to use the CWT mark. See Compl. Annex 1. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues Respondent does not use the <mycwtravel.com> domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because the disputed domain name and resolving website attempt to deceive users into believing there is an association or affiliation between Complainant and Respondent. A panel may find a respondent is not using a disputed domain name in compliance with Policy ¶¶ 4(c)(i) or (iii) when the domain name and resolving website make it seem as if there is some sort of affiliation between the disputed domain name and the complainant. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). As the Panel agrees Respondent is using the confusingly similar <mycwtravel.com> domain name to deceive users, the Panel finds Respondent is not using the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and (iii);
(g) Complainant submits Respondent uses the resolving website to offer competing services, which is not a bona fide offering of goods and services or legitimate noncommercial or fair use. Using a disputed domain name to redirect users to a website that offers competing goods and services is not a bona fide offering of goods and services or legitimate noncommercial or fair use. See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). In the present case, the Panel notes Respondent uses the disputed domain name to offer competing travel services. See Compl. Annex 5. As the Panel agrees, the Panel concludes Respondent does not use the disputed domain name a bona fide offering of goods and services or legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(i) and (iii).
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits Respondent registered and uses the <mycwtravel.com> domain name in bad faith because Respondent disrupts Complainant’s business by redirecting users to a website that provides competing services. Using a disputed domain name that disrupts a complainant’s business may indicate bad faith. See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products). Here, the Panel has noted the screenshot showing Respondent’s competing services. See Compl. Annex 5. Therefore, the Panel finds Respondent has acted in bad faith.
Secondly, Complainant argues Respondent acts in bad faith because it attempts to attract users for commercial gain by attempting to pass itself off as the Complainant. When a respondent is using a disputed domain name to attract users and pass itself off as complainant, a panel may find a respondent acted in bad faith. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). In this case, the Panel notices the email sent by Respondent, attempting to pass itself off as Complainant and offering similar services to those of Complainant. See Compl. Annex 5. As the Panel agrees, it finds Respondent acted in bad faith.
Thirdly, Complainant also submits that Respondent had actual notice of Complainant’s rights in the CWT mark, as evidenced by Respondent’s use of the mark and its attempt to pass itself off as Complainant. Past panels have found there to have been actual notice of a complainant’s rights in the mark when the respondent uses the disputed domain name to pass itself off as the complainant or to offer competing services. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, the Panel again notes the screenshot of emails where Respondent attempts to pass itself off as Complainant and offers similar services. See Compl. Annex 5. Therefore, the Panel finds Respondent had actual notice of Complainant’s rights in the CTW mark.
Fourthly, Complainant contends Respondent engages in a phishing scheme, which further indicates bad faith. Using a disputed domain name in furtherance of a phishing scheme evidences bad faith per Policy ¶ 4(a)(iii). See Airbnb, Inc. v. JAMES GRANT, FA1760182 (Forum Dec. 28, 2017) (“Using a misleading email address to defraud unwary customers certainly constitutes bad faith.”); see also Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”). Here, Respondent uses the disputed domain name to email users and offer similar services to those of Complainant. See Compl. Annex 5. Therefore, the Panel finds Respondent’s attempt at a phishing scheme indicates use of the domain name in bad faith.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using CTW mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mycwtravel.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 13, 2022
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