In the recent domain dispute decision Smith Travel Research, Inc. v. Victor An (Nat. Arb. Forum 1259999, June 15, 2009), a single member Panel was faced with a dispute over the domain www.str.com. Complainant, Smith Travel Research, Inc., claims to be “the world’s foremost sources of hotel performance trends and will offer the definitive global hotel database and development pipeline.” Complianant maintains a web site at www.strglobal.com. Complainant owns multiple STR related three-letter trademarks based on providing lodging industry information since 1986. Respondent offers the disputed domain with a heading that states “Search for Travels and Reservations.” Complainant contends that Respondent is merely offering a linking page with click through referral fees and that it is not a bona fide offering of services. Respondent contends that STR is a very popular abbreviation and that there are over 90 co-existing trademarks using the three letters. Respondent explains that its travel and hotel booking services are different then Complainant’s informational services provided to industry insiders.
The Panel reviewed this information and applied the three element test described in the ICANN UDRP Policy paragraph 4(a). (1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the 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 addressing the first element, the Panel noted that although the domain is comprised of a common three letter combination, this does not deprive a Complainant of protection under section 4(a)(i) of the policy. In light of the identical nature of the domain to Complainant’s mark, the Panel found this element was satisfied.
Moving to the second element, whether the Respondent had any rights or legitimate interests, the Panel explained:
Respondent’s website resolves to a website offering internet-based travel services such as links to hotel reservation sites. Respondent itself does not provide the service, and receives referral or click-through fees from website owners. When this fact is coupled with the fact that Respondent is using the mark of a well-known travel industry company to attract users to its site, the Panel concludes that the Respondent is not using the name for a bona fide offering of goods or services, and therefore concludes that Respondent has no rights or legitimate interest in the name.
The Panel appears to have relied on prior cases which found that pay-per-click web sites were not bone fide offerings of goods. The panel found Complainant satisfied this element.
Moving to the last element, whether the disputed domain was registered and use in bad faith, the Panel found that Respondent was clearly trying to associate itself with the goodwill of Complainant and was seeking to profit from click-through fees. The Panel went further and explained:
The Panel recognizes that the three-letter combination in Complainant’s mark is used in other contexts and by other businesses. Nevertheless the Panel concludes that given Complainant’s notoriety in the travel business, it seems clear that it was no accident that Respondent chose the same three letters for its domain name in an attempt to attract users familiar with Complainant’s travel industry expertise.
Ultimately, the Panel found that Complainant had satisfied all three elements of the Policy and agreed to TRANSFER the disputed domain.
DefendMyDomain Commentary: This is another example of cases where Panels have differing views on pay-per-click pages. For example see See EU Prop. Portfolio Ltd. v. Salvia Corp., FA 873726 (Nat. Arb. Forum Feb. 7, 2007) (holding that the respondent’s website usage of pay-per-click links was a bona fide offering of goods and services); see also Accetta v. Domain Admin, FA 826565 (Nat. Arb. Forum Jan. 2, 2007) (finding the respondent’s use of the disputed domain name to operate a pay-per-click search engine was a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) because the terms of the disputed domain name were of common usage and did not refer to the complainant or its products).
