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#Trivago lost #UDRP case against the #domain name Traveltrow.com

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Travel booking giant, Trivago, became popular a few years ago due to the scruffy actor featured in its commercials.

In a recent UDRP case filed against the owner of Traveltrow.com, Trivago claimed that the two domains sound alike!

Despite the Respondent’s acknowledgement of copyright issues, and an asking price of $5,000 for the domain, the sole panelist at the WIPO delivered a finding of no transfer: TRIVAGO does not sound like TRAVELTROW.

The domain transfer was denied.

Full details on the decision for Traveltrow.com follow:

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Trivago N.V. v. Adam Smith
Case No. D2019-1957

1. The Parties

Complainant is Trivago N.V., Germany, represented internally.

Respondent is Adam Smith, Bangladesh.

2. The Domain Name and Registrar

The disputed domain name <traveltrow.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2019. On August 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 12, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 14, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 14, 2019.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 26, 2019. On September 3 and 4, 2019, the Center received two email communications from Complainant, including a supplemental filing to the Complaint. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 16, 2019. On September 16 and 17, 2019, the Center received two email communications from Respondent, in response to which the Center sent an email communication to the Parties on September 18, 2019, inviting them to explore settlement negotiations. On September 18, 2019, Complainant confirmed it did not wish to pursue settlement discussions.

The Center appointed Robert A. Badgley as the sole panelist in this matter on September 30, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On September 4 and October 1, 2019, Complainant made two unsolicited supplemental filings which the Panel read but did not consider in its decision, reasons which should become clear from the discussion and findings below.

4. Factual Background

Complainant operates an online travel and hotel reservation and booking service under the service mark TRIVAGO. Complainant owns various trademark registrations for the TRIVAGO mark, including international registration 910828 dated August 18, 2006. Complainant’s website is located at “www.trivago.com”.

The Domain Name was registered on May 9, 2019. The Domain Name resolves to a website whose landing page features the banner word “traveltrow”. The website purports to offer “Trivago flights” to Canada, as well as hotel booking and price-comparison services. The mark TRIVAGO appears several times on Respondent’s landing page and several more times on the internal pages of Respondent’s website.

After the Complaint in this proceeding was filed, Respondent reached out to Complainant, asserting that he was unaware of “the copyright issue” and seeking a discussion. Ultimately, Respondent sought payment of $5,000 for the Domain Name, claiming that he had put considerable time and effort into the website.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has established the three elements required under the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel concludes that Complainant has rights in the mark TRIVAGO through registration and use.

The Panel finds, however, that the Domain Name is not confusingly similar to the TRIVAGO mark. In fact, it is not really a close call, such that other considerations might be called upon in the Panel’s disposition of this element under the Policy.

Complainant argues, first and foremost, that the TRIVAGO mark and the Domain Name both have three syllables (one disregards the “.com” generic Top-Level Domain). Complainant then notes that the last syllable of the Domain Name (“trow”), rhymes with the last syllable of the mark (“go”). Complainant notes that the first syllable of the mark and the Domain Name begins with the letters “tr,” and that the second syllable of both begins with the letter “v.”

In the Panel’s view, the foregoing superficial common attributes do not come close to rendering the Domain Name confusingly similar to the TRIVAGO mark. First, the word “travel” is readily recognized in the Domain Name, while that word does not figure anywhere in the TRIVAGO mark. Second, the last syllable “trow” is visually far removed from the syllable “go”.

Complainant also asserts that the mark has an aural similarity to the Domain Name. The Panel notes, however, that the mark is pronounced with an accent on the second syllable, whereas the Domain Name clearly has an accent on the first syllable. Thus, the Panel concludes, someone pronouncing the Domain Name is exceedingly unlikely to detect some type of similarity to the TRIVAGO mark. In short, both visually and aurally, the Panel does not recognize the TRIVAGO mark within the Domain Name.

In apparent recognition of this problem, Complainant cites Schering-Plough Corporation v. Don Myers, WIPO Case No. D2008-1641, for the proposition that a panel may consider “the context in which the Domain Name was being used as a factor as to whether the Domain Name was confusingly similar to the trademark”. The panel in the Schering case did make such a statement. It appears, though, that the content of the respondent’s website in that case was not truly relevant to the “confusing similarity” issue. The two domain names at issue in the Schering case were <clarinx.com> and <clartin.com>, both of which differed from the complainant’s distinctive trademarks – CLARINEX and CLARITIN – by the omission of a single vowel. The panel in Schering cited this slight difference as the driving force behind the decision in that case. The panel found that the omission of a single letter constituted typo-squatting. As such, the panel’s further comments about the website content were, in this Panel’s view, not essential to the Schering panel’s disposition of the “confusing similarity” issue. In the present case, as noted above, there is far more than the omission of a single letter from the TRIVAGO mark. Further, there is no way to look at the TRIVAGO mark and the Domain Name, and then look at a standard keyboard, and imagine a case of typo-squatting.

The Schering case is not the only instance of a panel stating that the content of the respondent’s website may be a factor in the panel’s “confusing similarity” analysis, but the cases where the website content has truly mattered are rare, and the cases typically involve domain names bearing a much closer similarity to the subject trademark than we have here.

Under the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7 (entitled “What is the test for identity or confusing similarity under the first [UDRP] element?”), the consensus view is described as follows:

“It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.

This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. (This may also include recognizability by technological means such as search engine algorithms.) In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant’s trademark and the disputed domain name to ascertain confusing similarity.”

Section 1.7 goes on to say:

“In specific limited instances, while not a replacement as such for the typical side-by-side comparison, where a panel would benefit from affirmation as to confusing similarity with the complainant’s mark, the broader case context such as website content trading off the complainant’s reputation, or a pattern of multiple respondent domain names targeting the complainant’s mark within the same proceeding, may support a finding of confusing similarity.”

Section 1.15 of the WIPO Overview 3.0 (entitled “Is the content of the website associated with the domain name relevant in determining identity or confusing similarity?”), states in full:

“The content of the website associated with the domain name is usually disregarded by panels when assessing confusing similarity under the first element.

In some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name.

Such content will often also bear on assessment of the second and third elements, namely whether there may be legitimate co-existence or fair use, or an intent to create user confusion.”

From these tenets of the WIPO Overview 3.0, the Panel understands that the content of a respondent’s website is generally to be disregarded in an analysis of “confusing similarity,” but such content may be of some assistance in the event of a close call. The leading cases on this topic do not support the view that the website content can convert a clearly dissimilar domain name into a confusingly similar domain name. (See the decisions cited in conjunction with section 1.15 of WIPO Overview 3.0.) Rather, in those decisions, the complainant’s mark was generally recognizable within the contested domain name, such that the content of the respondent’s website was not truly a pivotal consideration. As the Panel has held above, that is not the case here. The mark TRIVAGO, in the Panel’s view, is not recognizable within the Domain Name. This is not really a close call.

It appears from the evidence of record that Respondent may be infringing Complainant’s TRIVAGO mark through Respondent’s liberal use of that mark at his website, which purports to offer services essentially identical to those offered by Complainant for years under the TRIVAGO mark. It may well be that Complainant has a valid trademark infringement or unfair competition cause of action against Respondent in a court of law. The UDRP, however, is focused on abusive domain name registration and use, not more generally with infringing conduct across the Internet. As such, if a domain name is not confusingly similar to the complainant’s trademark, the case is over, regardless of whether the respondent is a bad actor.

Complainant has not established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are making a legitimate noncommercial 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 need not consider this issue, given the conclusion above on the “confusing similarity” issue.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel need not consider this issue, given the conclusion above on the “confusing similarity” issue.

7. Decision

For the foregoing reasons, the Complaint is denied.

Robert A. Badgley
Sole Panelist
Date: October 20, 2019


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