TripAdvisor, LLC / Smarter Travel Media LLC v. Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT
Claim Number: FA1506001623462
Complainant is TripAdvisor, LLC / Smarter Travel Media LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT (“Respondent”), Isle of Man.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tripadvosor.com> and <trpadvisor.com>, registered with Fabulous.Com Pty Ltd, Fabulous.Com Pty Ltd..
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 9, 2015; the Forum received payment on June 9, 2015.
On June 11, 2015, Fabulous.Com Pty Ltd, Fabulous.Com Pty Ltd. confirmed by e-mail to the Forum that the <tripadvosor.com> and <trpadvisor.com> domain names are registered with Fabulous.Com Pty Ltd, Fabulous.Com Pty Ltd. and that Respondent is the current registrant of the names. Fabulous.Com Pty Ltd, Fabulous.Com Pty Ltd. has verified that Respondent is bound by the Fabulous.Com Pty Ltd, Fabulous.Com Pty Ltd. 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 July 13, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 3, 2015 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@tripadvosor.com, postmaster@trpadvisor.com. Also on July 13, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On August 4, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 names be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
Complainant owns and operates the world’s largest travel website, and does so in conjunction with the TRIP ADVISOR mark. Complainant has rights in the TRIP ADVISOR mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,171,193, registered on Aug. 29, 2003). Respondent’s <tripadvosor.com> and <trpadvisor.com> domain names are confusingly similar to the TRIP ADVISOR mark, because they are each differentiated by only the removal of the space between the words of the mark and the change or deletion of a single letter.
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <tripadvosor.com> and <trpadvisor.com> domain names, as the available WHOIS information lists “Domain Admin” as Registrant. In addition, Respondent has not been authorized to use the TRIP ADVISOR mark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because it uses the <tripadvosor.com> domain name to redirect Internet users to Complainant’s own website in violation of an affiliate agreement between Complainant and Respondent and the <trpadvisor.com> domain name to host links to third-party companies who are competitors of Complainant.
Policy ¶ 4(a)(iii)
Respondent registered and uses the <tripadvosor.com> and <trpadvisor.com> domain names in bad faith because Respondent offers each domain for sale, and because Respondent has demonstrated a history of bad faith use and registration through prior UDRP decisions decided against it. Respondent uses the <trpadvisor.com> domain name in a disruptive manner by hosting links to third-party companies who are competitors of Complainant, from which Respondent presumably receives referral fees. Respondent uses the <tripadvosor.com> domain name in bad faith to redirect Internet users to Complainant’s own website in violation of an affiliate agreement between Complainant and Respondent. In addition, Respondent registered the domains in bad faith by doing so with actual knowledge of Complainant’s rights in the TRIP ADVISOR mark, and by creating domain names that are typosquatted versions of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the <tripadvosor.com> domain name was created on June 11, 2004 and the <tripadvisor.com> domain name was created on April 14, 2004.
Complainant, through its representative, CitizenHawk, Inc., attached a document to its Complaint represented as an “Affiliate Agreement Between Complainant and Respondent”, but which appeared to consist of an agreement between “Commission Junction Inc.” and a party identified only as “You”. By two separate interlocutory orders, this Panel requested Complainant to provide documentary evidence of whether or not Respondent actually executed the Commission Junction agreement. However, Complainant declined to respond to these interlocutory orders, first, by providing a non-responsive submission, and next, by providing no response at all to the second interlocutory order.
In the absence of documentation from Complainant regarding an alleged affiliate agreement, despite having been provided with two additional opportunities through interlocutory orders to do so, the Panel must conclude that the statement by Complainant attesting to an affiliate agreement between itself and Respondent is inaccurate, despite Complainant’s certification of the information’s veracity.
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, and in view of Complainant’s failure to respond to this Panel’s interlocutory orders, 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.
Complainant alleges it has rights in the TRIP ADVISOR mark through its registration with the USPTO (e.g. Reg. No. 3,171,193, registered on Aug. 29, 2003). Complainant has provided documentation of this registration. Past panels have found that registration with the USPTO suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). Past panels have also found that registration in a respondent’s country of operation is not required, so long as rights can be established somewhere. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Accordingly, the Panel finds that Complainant has rights in the TRIP ADVISOR mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <tripadvosor.com> and <trpadvisor.com> domain names are confusingly similar to the TRIP ADVISOR mark because the <tripadvosor.com> domain name is merely differentiated by a change from the letter “i” to the letter “o” and the <trpadvisor.com> domain name is merely differentiated by the deletion of the letter “i.” Past panels have found such changes insufficient to differentiate a domain name from a mark under Policy ¶ 4(a)(i) analysis. Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar).
Complainant alleges that Respondent is not commonly known by the disputed domain names. The Panel notes that the WHOIS information lists “Domain Admin” as Registrant and that Respondent has failed to provide further evidence to indicate being commonly known by the disputed domain names. Complainant urges that Respondent is not authorized, or otherwise permitted, to use Complainant’s mark. Past panels have found such a lack of evidence sufficient to show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Accordingly, the Panel finds that Respondent is not commonly known by the <tripadvosor.com> and <trpadvisor.com> domain names under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent fails to use the <trpadvisor.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the resolving website to host links to services that compete with Complainant, such as <travelocity.com>, <applevacations.com>, and <expedia.com>. Past panels have found that hosting competitive links suffices to show a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and ¶4(c)(iii). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent fails to use the <trpadvisor.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and ¶4(c)(iii).
On the other hand, Complainant’s sole argument that Respondent’s use of the domain name <tripadvosor.com> does not meet the criteria of Policy ¶4(c)(i) and ¶4(c)(iii) is based upon its allegation of violation of an alleged affiliate agreement. As indicated in the Findings section of this decision, the Panel does not accept Complainant’s unsubstantiated allegation of an affiliate agreement, as this Panel has provided Complainant with two additional opportunities to provide evidence of such an agreement.
Thus, Complainant has satisfied Policy ¶ 4(a)(ii) with respect to <trpadvisor.com>, but not with respect to <tripadvosor.com>.
Complainant alleges that Respondent has demonstrated a history of bad faith use and registration through prior UDRP decisions decided against it. Complainant has provided copies of several prior UDRP cases decided against Respondent, including: Brown Shoe Company, Inc. and its subsidiary Brown Group Retail, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT, FA1520868 (Nat. Arb. Forum Nov. 6, 2013); Shoebuy.com, Inc. v. Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT, FA1557173 (Nat. Arb. Forum June 12, 2014); and Vanguard Trademark Holdings USA LLC v. Privacy Ltd. Disclosed Agent for YOLAPT, FA1493712 (Nat. Arb. Forum May 14, 2013). Past panels have found prior decisions decided against a respondent to be sufficient to show a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). Consequently, the Panel finds evidence of bad faith registration under Policy ¶ 4(b)(ii).
Complainant alleges, and provided evidence, that Respondent uses the <trpadvisor.com> domain name for the purpose of disrupting Complainant’s business operations by hosting links to third-party companies who are competitors of Complainant. Past panels have found hosting competitive links to constitute disruption under Policy ¶ 4(b)(iii), thereby showing bad faith use and registration. 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)). Therefore, the Panel finds that Respondent registered and uses the <trpadvisor.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant alleges that Respondent uses the <trpadvisor.com> domain name to take advantage of the confusion of Internet users for financial gain. Complainant urges that Respondent’s disruptive use of the <trpadvisor.com> domain name, described above, is done for financial gain because Respondent presumably receives referral fees for hosting competitive links. Past panels have agreed that such use constitutes bad faith use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). The Panel finds such use here and concludes that Respondent uses the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Further, Complainant alleges that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the TRIP ADVISOR mark. Complainant argues that because of Respondent’s choice to create the two specific domain names in question, Respondent must have had actual knowledge of Complainant’s rights in the TRIP ADVISOR mark at the time of registration. Past panels have found that when respondents have actual knowledge of a complainant’s rights in a mark, the registration of a confusingly similar domain name is done in bad faith under Policy ¶ 4(a)(iii). The Panel finds evidence that Respondent registered the domain names in bad faith under Policy ¶ 4(a)(iii) for this reason as well.
Finally, Complainant alleges that Respondent registered and operates the disputed domain name in bad faith because it has engaged in typosquatting. Complainant urges that Respondent’s <tripadvosor.com> and <trpadvisor.com> domain names take advantage of typographical errors in the TRIP ADVISOR mark. Past panels have found typosquatting, on its own, to provide sufficient evidence of bad faith under Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). This is another ground for determining bad faith under Policy ¶ 4(a)(iii).
Thus, Complainant has satisfied Policy ¶ 4(a)(iii) with respect to both <trpadvisor.com> and <tripadvosor.com>.
Having established all three elements required under the ICANN Policy with respect to <trpadvisor.com>, the Panel concludes that relief shall be GRANTED with respect to that domain.
Accordingly, it is Ordered that the <trpadvisor.com> domain name be TRANSFERRED from Respondent to Complainant.
Having not established the second element required under ICANN policy with respect to the <tripadvosor.com> domain, the Panel concludes that relief shall be DENIED with respect to that domain.
Accordingly, it is Ordered that the <tripadvosor.com> domain name REMAIN WITH Respondent.
David A. Einhorn, Panelist
Dated: September 24, 2015
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