{ "case_number": "CAC-UDRP-101650", "time_of_filling": "2017-08-23 10:19:46", "domain_names": [ "ECONOMYBOOKING.COM", "ECONOMY-BOOKINGS.COM" ], "case_administrator": " Iveta Špiclová (Czech Arbitration Court) (Case admin)", "complainant": [ "Mr. Alen Baibekov", "Booking Group SIA" ], "complainant_representative": "Ms. Katrina Petersone", "respondent": [ "Mr. Daniel Chestnut" ], "respondent_representative": null, "factual_background": "The Complainants are Mr. Alen Baibekov, from Latvia, and the limited liability company, Booking Group SIA. Mr. Alen Baibekov is the shareholder and Member of the Board of Directors of the company Booking Group SIA. \r\n\r\nBooking Group SIA is a Latvian company established on 8 February, 2008, offering on-line car rental services via its partner companies worldwide. In 2015, the company’s turnover amounted to Euro 8,213,857 and was all generated through the use of the domain name .\r\n\r\nThe disputed domain names are registered on 27 August 2009, and , registered on 6 January 2017. The domain name is used in relation to on-line car rental services, and the domain name redirects to the Respondent’s website at www.economybooking.com. \r\n", "other_legal_proceedings": "The Panel is not aware of which are pending or decided and which relate to the disputed domain names.", "no_response_filed": "PARTIES' CONTENTIONS:\r\n\r\nA. The Complainants' assertions are the following:\r\n\r\n1. The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights (§4(a)(i) of the Policy).\r\n\r\nAccording to the Complainants, the disputed domain names and are identical or at least highly confusingly similar to the Complainants’ domain name , trade name ECONOMY BOOKINGS, unregistered trademark ECONOMY BOOKINGS.COM, and registered trademark ECONOMY BOOKINGS.COM, since the differences with the Complainants' signs are minimal.\r\n\r\n2. The Respondent has no rights or legitimate interests in respect of the disputed domain names (§4(a)(ii) of the Policy).\r\n\r\nThe Respondent registered the disputed domain names later than the Complainants started using the trade name ECONOMY BOOKINGS and the unregistered trademark ECONOMY BOOKINGS.COM in relation to car rental services. Article 8 of the Paris Convention for the Protection of Industrial Property of March 20, 1883 (hereinafter the “Paris Convention”), provides that “[A] trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark”. Since 177 countries are members of the Paris Convention, a trade name is protected in all the economically active countries regardless of whether the trade name is used in respect to services on-line or off-line.\r\n\r\nThe Complainants never authorised the Respondent to use the words ECONOMY BOOKING in relation to car rental services, including as part of the domain names and .\r\n\r\n3. The disputed domain names have been registered and are being used in bad faith (§4(a)(iii) of the Policy).\r\n\r\nThe domain name was registered on 27 August 2009 with the intention to provide services similar or identical to those provided by the Complainants since 2008.\r\n\r\nThe Respondent started imitating the Complainants’ trademark at least as of 8 September 2013. At least as of 20 December 2015, the Respondent starts using the same dominant colour scheme – yellow and blue – as the Complainants’. At least as of 19 July 2017, the Respondent has created a similar logo with almost identical brand name, similar colours and shapes. The Respondent has now created a look-alike website.\r\n\r\nThe Respondent is therefore evidently aware of the Complainants and of their prior rights, since so many similarities in the same narrow on-line car rental service market cannot be fortuitous. The look-alike website and the Respondent’s domain name , create the impression that the Complainants’ and the Respondent’s websites are connected one another, and consumers are likely to be misled.\r\n\r\nThe domain name was registered on 6 January 2017, with the intention to direct the Complainants’ customers to the Respondent’s website. This domain name matches the identical domain name and does not lead to an autonomous website. The domain name is used to redirect Internet users to the Respondent’s website at www.economybooking.com. Moreover, the Respondent is using the domain name to rent advertising space to third parties.\r\n\r\nThus, the Respondent had prior knowledge of the Complainants’ website and of their earlier rights as there was no logical necessity to register the domain name , since the Respondent had already the almost identical domain name .\r\n\r\nLastly, the Complainants suggest that the Respondent is not a real existing natural person, and that he provided false data at the time of the registration of the disputed domain names. The Respondent does not exist and his commercial activity is not registered.\r\n\r\nFor all these reasons the Complainants request that the disputed domain names be transferred to the Complainant, Mr. Alen Baibekov.\r\n\r\nB. The Respondent's contentions are the following:\r\n\r\n1. The disputed domain names are not identical or confusingly similar to a trademark or service mark in which the Complainants have rights (§4(a)(i) of the Policy).\r\n\r\nThe domain name is not identical or confusingly similar to the Complainants’ registered trademark, since the latter is a figurative trademark containing various different elements, and since the addition of the letter “s” at the end of the word “bookings”, in the Complainants’ trademark seems “less normal to native English speakers including nationals of the States”.\r\n\r\nThe disputed domain names consist of the merely generic and descriptive words “economy” and “booking”. The word “economy” means “economical or inexpensive to buy or use”, while the word “booking” refers to “a reservation, as for accommodations at a hotel” (source www.ahdictionary.com).\r\n\r\nThe Complainants cannot claim exclusive rights to the use of these words. An Office Action issued by the USPTO in relation to the US designation of the Complainants’ international trademark ECONOMY BOOKINGS.COM states that “[A]pplicant must disclaim the wording “ECONOMY”, “BOOKING”, and“.COM” because it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and\/or services, and thus is an unregistrable component of the mark”.\r\nThe Complainants’ trademark was registered in the US, only provided that “No claim is made to the exclusive right to use the following apart from the mark as shown: “ECONOMY”, “BOOKINGS” and “.COM”. Moreover, the trademark was registered much later than the date of registration of the disputed domain name \r\n\r\nThere are numerous businesses that use similar dictionary words to promote their activities on-line, such as , , , , , .\r\n\r\n2. Respondent owns rights or legitimate interests in respect of the disputed domain names (§4(a)(ii) of the Policy).\r\n\r\nThe Respondent contends that the Complainants failed to prove the Respondent's lack of rights or legitimate interests in the disputed domain names.\r\n\r\nThe Complainants did not provide sufficient evidence to establish common law rights over the wording “economy bookings”. The Complainants did not submit evidence to establish a strong secondary meaning from 2008 to 2015. There is no evidence that the mark had any distinctiveness in 2009, when the domain name was registered. The 2015 turnover does not show any proof of a secondary meaning in 2008-2009 and even if said proof existed, the trademark was not registered in 2009. It was therefore reasonable for the Respondent to assume that the Complainant was using the wording “economy bookings” in a descriptive sense rather than in a trademark sense. \r\n\r\nThe merely descriptive term “economy booking” was designed for use in the travel industry. The Respondent’s website at www.economybooking.com offers travel related services, including car rental reservations, hotel bookings, airport transportation, and the like.\r\nThe Respondent has been using the domain name in connection with a bona fide offering of services since 2010, shortly after its registration date, and has continued using this domain name for these services ever since.\r\n\r\nThe Respondent never tried to divert the Complainants’ customers, or to tarnish the Complainants’ trademark. The disputed domain names were never offered for sale to the Complainants or to anyone else. The Respondent never made references to the Complainants’ website. The disputed domain names were never used for a parking site. \r\n\r\nFor all these reasons the Respondent maintains that he owns rights and legitimate interest in the disputed domain names.\r\n\r\n3. The disputed domain names have not been registered and are not being used in bad faith (§4(a)(iii) of the Policy).\r\n\r\nThe domain name was registered in 2009 with the intention to offer travel related products and services, including car reservations services, hotel booking services, airport transfer bookings, and other travel related services. Apart from car rental reservations, the Respondent continues to offer hotel reservations. There was no intention to offer only “similar services, or the same services” of the Complainants, as indicated in the Complaint.\r\n\r\nThe registration of the domain name predates the Complainants’ trademark by many years. At the time of its registration, the Respondent did not search for the plural form of “booking”, since the word “bookings” is less normal to native English speakers including nationals of the States\". Thus, at this time, the Respondent was not even aware of the Complainants and of their website, which is based in Latvia.\r\nThe Respondent denies to have copied the Complainants’ web design and logo. The 2013 logo was in different colors, fonts, and layer positions. The logo, created in 2017 is not an imitation of the Complainants’ logo due to its different colors, shapes and font. In addition, the Respondent never tried to imitate the stylized letter “B” preceding the Complainants’ mark.\r\nThe respective websites adopt different structures. Many travel websites have “similarities” just because they usually offer the same services.\r\n\r\nThe domain name was registered in early 2017 to set up a new travel project in the future. As the site development requires time, the domain name is not yet developed and simply links to the Respondent’s main domain name . This domain name was not registered to disrupt the Complainants’ business, nor was it registered to sell or transfer it to the Complainant or to anyone else.\r\n\r\nThe Complainant does not have any exclusive rights to the words “economy”, “booking”, “bookings” and “.com”. Common words and descriptive terms are legitimately subject to registration as domain names on a “first-come, first-served basis”.\r\n\r\nThe Complainants did not take any action against the Respondent until 2017. During almost 8 years, the Respondent invested substantial time and significant resources to establish, develop, and support its website. \r\n \r\nIn view of the foregoing, the Complainants failed to demonstrate the Respondent’s bad faith in the registration and use of the disputed domain names.", "rights": "The Complainants have, to the satisfaction of the Panel, shown that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights (within the meaning of paragraph 4(a)(i) of the Policy).", "no_rights_or_legitimate_interests": "The Complainants have, to the satisfaction of the Panel, shown that the Respondent has no rights or legitimate interests in the disputed domain name (within the meaning of paragraph §4(a)(ii) of the Policy), but has failed to do so in respect of the disputed domain name , for the reasons better explained below.", "bad_faith": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy), but has failed to do so in respect of the disputed domain name , for the reasons better explained below.", "procedural_factors": "The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.\r\n\r\nThe Panel notes that after the Panelist's appointment, and therefore once all terms granted to the parties to present their respective arguments had expired, the Complainants spontaneously filed, by way of a Non-Standard Communication, additional arguments in reply to the Response, and in support of their case. \r\n\r\nUnder paragraph 10 of the UDRP Rules the Panel has the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition.\r\n\r\nUnder paragraph 12 of the UDRP Rules it is for the Panel to request, in its sole discretion, any further statements or documents from the parties it may deem necessary to decide the case.\r\n\r\nPanels have repeatedly affirmed that the party submitting an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its Complaint or Response. Unsolicited supplemental filings are usually only admitted in exceptional circumstance (See WIPO Jurisprudential Overview 3.0 and, among others, CAC Case No. 100765 VIRTUALEXPO.COM). \r\n\r\nIn this case, the Complainants' filed extensive additional arguments and supplied additional evidence, which were already available at the time of the filing of the Complaint. It does not seem to the Panel that this unsolicited supplemental filing is due to exceptional circumstances. It seems more likely that the Complainants omitted to include said additional arguments and evidence in the original Complaint, because they deemed they were unnecessary. After reading the Response, the Complainants felt the need to file additional arguments and information in support of their pleadings. This seems also to be confirmed by the name that the Complainants gave to this supplemental filing, i.e., \"ADDITIONAL SUPPLEMENTS OF THE COMPLAINT AND ARGUMENTS TO THE RESPONDENT`S RESPONSE\", which seems self-explanatory.\r\n\r\nThe UDRP was meant to be an expeditious proceeding and one of its main advantages is to get a decision within a very short deadline. For this reason, neither the Policy nor the Rules contemplate the possibility to make unsolicited supplemental filings. It is only the Panel who has the authority to request further statements or documents for the parties, if these are necessary to decide the case. In the instant case, as no exceptional reasons occurred, accepting the Complainants' additional filing seems to be against the spirit of the Policy and Rules and would be against the Panel's obligation to ensure an equal treatment between the parties.\r\n\r\nTherefore, the Panel decides not to admit the Complainants' unsolicited supplemental filing.\r\n\r\nOn 2 October 2017, the Panel issued a Non-Standard Communication asking to clarify whether the UDRP proceedings were intended to be brought by two Complainants or only by Mr. Alen Baibekov, since the point was not entirely clear to the Panel, and postponed the deadline for the decision until 9 October 2017. On 3 October 2017, the Complainants' representative confirmed that the Complaint was meant to be brought by both Mr. Alen Baibekov and by the company Booking Group SIA.\r\n\r\nArticle 3(a) of the CAC‘s UDRP Supplemental Rules provides that: \"it is possible to file a Class Complaint provided the following conditions are met:\r\nthe Class Complaint is based on legal arguments applicable equally, or substantially in the same manner, to all the disputed domain names;\r\nthe person representing several different Complainants joined in the Class Complaint must provide evidence that it is authorized to act on behalf of each of the Complainants\".\r\n\r\nFrom the contents of the Complaint it appears clear to the Panelist that the two conditions set forth above are satisfied and therefore the Panel has no objections in accepting this Class Complaint. \r\n", "decision": "Partially Accepted\/Partially Rejected", "panelists": [ "Angelica Lodigiani" ], "date_of_panel_decision": "2017-10-06 00:00:00", "informal_english_translation": "Booking Group SIA is the owner of the following trademarks:\r\n\r\n- ECONOMY BOOKINGS.COM (device), Latvian registration No. M 69 653, filed on August 13, 2015, and granted on April 4, 2016, for goods and services in classes 12, 35, 36 and 39, including \"rental of vehicle and apparatus for locomotion by land”;\r\n- ECONOMY BOOKINGS.COM (device), international trademark registration No. 1282011, of August 21, 2015, designating France, Benelux, Germany, Italy, Sweden, UK, USA and Russia, for goods and services in classes 12, 35, 36 and 39, including “rental of vehicle and apparatus for locomotion by land”. \r\n\r\nMr. Alen Baibekov is the owner of:\r\n\r\n- the domain name , registered on 2 February 2008;\r\n- the trade name ECONOMY BOOKINGS, used in commerce since at least 2008, in relation to on-line car rental services in various countries worldwide via its partner companies;\r\n- the unregistered trademark ECONOMY BOOKINGS.COM, used in the course of trade at least from the end of 2008 in connection with on-line car rental services.\r\n\r\nBoth the trade name ECONOMY BOOKINGS and the unregistered trademark ECONOMY BOOKINGS.COM have been licensed to the Complainant Booking Group SIA.", "decision_domains": { "ECONOMYBOOKING.COM": "REJECTED", "ECONOMY-BOOKINGS.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }