Paragraph 15 of the Rules states that the Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In the case of default by a Party, Rule 14 states that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom at it considers appropriate. In this case the Respondent has not submitted any Response and consequently has not contested any of the contentions made by the Complainant. The Panel is therefore obliged to make its decision on the basis of the factual statements contained in the Complaint and the documents made available by the Complainant to support its contentions.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(i) the domain name registered by Respondent is identical or confusingly similar to a trade mark or service mark in which Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Taking each of these issues in turn, the Panel decides as follows:
A. Identical or Confusingly Similar
Based on the evidence put forward by the Complainant, the Panel finds that the Complainant has trade mark rights in the term COMPARETHEMARKET (UK trade mark Number 2522721).
The disputed domain name contains the additional word "holidays" after the Complainant's trade mark. However the Panel is of the opinion that this is a descriptive term and its addition is not sufficient to dissociate the disputed domain name from the trade mark in the mind of internet users. Numerous decisions under the Policy have held that incorporating a trade mark in its entirety in a domain name can be sufficient to establish that a domain name is identical or confusingly similar to a trade mark, and the Panel would agree with that assertion in this particular case.
Furthermore, the Panel considers that, as previously held in numerous Panel decisions, the generic top level domain suffix .ORG is without legal significance and has no effect on the issue of similarity. Neither does the fact that the trade mark is in upper case letters whilst the disputed domain name is only in lower case.
On the basis of these considerations, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).
The Policy (paragraph 4(c)) sets out various ways in which a Respondent may demonstrate rights or legitimate interests in the domain name, as follows:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has presented a clear prima facie showing of the Respondent's lack of rights or legitimate interests in the disputed domain name. As a result of its default, the Respondent has failed to rebut that showing.
In particular the Panel is of the view that redirecting internet users to a website offering various hyperlinks linking to services that are competitive with the Complainant's services using a domain name that is confusingly similar to the Complainant's trade mark cannot be considered to be a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy referred to above. The Panel accepts the Complainant's assertion that there is no real content on the website to which the disputed domain name is pointing, even though at first glance this may not appear to be the case, and that this has more than likely been done deliberately for Search Engine Optimisation purposes. Nor can such use be said to be a legitimate non-commercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii), as, in the Panel's opinion, the Respondent is undoubtedly earning revenue via "click-through" links.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The third element that the Complainant must prove is that the disputed domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy sets out various circumstances which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith, as follows:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
On the basis of the evidence put forward by the Complainant, the Panel is satisfied that the Respondent’s conduct falls within paragraph 4(b)(iv) of the Policy. By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to his website, by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation, or endorsement of his website.
Furthermore the Panel is of the view that the Respondent was aware of the Complainant when he registered the disputed domain name on 22 September 2011 and intended to take advantage of the Complainant's existing goodwill and reputation (the Complainant was already well known at that time). The Panel agrees with the Complainant that, unlike the phrase "compare holidays", the phrase "compare the market holidays" does not make sense unless understood as a reference to the Complainant's corresponding brand.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name COMPARETHEMARKETHOLIDAYS.ORG be transferred to the Complainant.
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