aerolineasargentinas.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Aerolíneas Argentinas, S.A. v. Cesar García Baltar

Case No. D2002-0700

Complainant is Aerolíneas Argentinas, S.A., Bouchard 547, piso 8, C.P. 1043, Buenos Aires, Argentina.

Respondent is Mr. Cesar García Baltar, Paris, France.

The Domain Name at issue is <aerolineasargentinas.com>.

The registrar is Go Daddy Software Inc.

The WIPO Arbitration and Mediation Center (the Center) received a Complaint (hereinafter the Complaint) according the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules), on July 24, 2002, (by email, hardcopy and exhibits). The Center acknowledged receipt of the Complaint via e-mail of July 25, 2002, to Complainant.

On July 25, 2002, the Center transmitted via email to Go Daddy Software, Inc., a request for registrar verification in connection with this case. On July 26, 2002, Go Daddy Software, Inc. transmitted via email to the Center, Go Daddy Software, Inc.'s Verification Response, confirming that the registrant is Mr. Cesar García Baltar and that the Domain Name registrations is in "active" status.

Having verified that the Complaint satisfied all the formal requirements of the Policy and the Rules, the Center transmitted on August 2, 2002, to Mr. García Baltar at the address originally indicated in the whois, the Notification of Complaint and Commencement of the Administrative Proceeding by post (with attachment), and by fax and email (without enclosures).

On August 2, 2002, the Respondent contacted with the Center stressing that the language of the registration agreement is English, therefore the language of the procedure should be English. The Center replies to the Respondent to ignore the prior notification and the same day notifies the Complainant the existence of formal deficiencies, giving the Complainant until August 12, 2002, to file the Complaint in English. The same day the Complainant replied that the nationality of the Respondent is Argentinean, as well as his domicile, and therefore the process should continue in Spanish. On August 7, 2002, the Center insists that the Procedure should be conducted in English. On August 13, 2002, the Complainant applies to the Center for an extension of the term until August 30, 2002, in order to translate the Complaint. On August 13, 2002, the Center agreed an extension of the term until August 30, 2002. On August 28, 2002, the Complainant supplies the Complaint in English to the Center.

Having verified that the Complaint satisfied all the formal requirements of the Policy and the Rules, the Center transmitted on October 25, 2002, to Mr. García Baltar at the address originally indicated in the whois, the Notification of Complaint and Commencement of the Administrative Proceeding by post (with attachment), and by fax and email (without enclosures).

The Respondent filed the Response on November 14, via email, duly acknowledged by the Centre on November 15.

On November 1, 2002, the Center invited Mr. Mario A. Sol Muntañola to serve as Panelist in the present procedure, who accepted. The Center appointed Mr. Mario A. Sol Muntañola as Panelist and set the deadline for rendering of the decision. On December 11, 2002, after requirement by the Panelist, the Center extended the term to render the decision to December 20, 2002.

There were not any ulterior supplies of documentation by the parties. The Complaint was done in English. The Respondent replied in English. English is the language of the domain name registration agreement. Although both parties are Argentinean nationals and therefore Spanish-speaking, considering that the Claimant has chosen the jurisdiction of the domicile of the Registrar (USA), English is the language in which the eventual court case would be conducted, the Panel decides that the procedure continues in English.

The Complainant is the most important airline company under Argentinean flag of its country. Founded in 1950, it is the holder of several "Aerolíneas Argentinas" registered trademarks and it has also presence in Internet through the website under several gTLDs and ccTLDs.

The Respondent is a physical person who is in the Internet business since 1999, having created many websites for their exploitation by himself or on behalf of third parties. In May 2002, he registered the domain name <aerolineasargentinas.com> and created a website that offers information on all Argentinean airlines as well as on tourism to Argentina, both for Spanish and English speakers.

The Complainant is an airline company, founded in 1950 and privatized in 1990, of well known presence in the international and in the Argentinean national market. The Complainant is the holder of the commercial name "Aeorolíneas Argentinas", with which it is known, and also of numerous Argentinean national registered trademarks, among which are the following:

-1.614.152 in class 39, figurative
-1.577.531 in class 39, figurative
-1.614.284 in class 39, figurative
-1.614.267 in class 39, figurative
-1.614.150 in class 42, figurative
-1.614.270 in class 42, figurative
-1.614.286 in class 42, figurative

The Complainant’s advertisement investments during years 1996 to 2000, have been of average US$6,550,600 per year.

In November 2002, the Complainant came to know of the registration by Mr. García Baltar of the domain name <aerolineasargentinas.com>, done on May 16, 2000. For this reason, on November 19, 2001, a letter was sent to his domicile in Buenos Aires, according to the Telephone Guide of the City. No reply was received.

The Complainant goes on by saying that the trademark and the domain name are identical, they use identical words, with identical sound and identical meaning. Therefore it is difficult to accept that the Respondent has behaved in good faith or without any illegal purpose. It is neither possible to accept that Mr. García Baltar did not have knowledge of the denomination that designates the air transport company and the national Argentinean flag known by all in Argentina and outside of it.

Mr. García Baltar does not have rights not interests in respect of the disputed domain name, having registered and used the domain name in bad faith and with commercial goals, attempting to attract with Internet users with profit-making intention and generating confusion. The Respondent’s is a website that links to different local air flight companies offering services and tourist tickets, and linking also, directly, with "Aerolíneas Argentinas".

The Complainant concludes stating that the behaviour of the Respondent constitutes an infringement of the rights of "Aerolíneas Argentinas" contemplated in Laws 22.362, 24.425 and 17.011 of Argentina, as well as in the Paris Union Convention and the TRIPs Agreements.

The Respondent claims a preliminary issue about two supposedly untrue affirmations made by the Claimant to confuse the Panel. The first about the sending of a warning letter that the Respondent never knew, because it was sent to an inexistent address in Buenos Aires, considering he is residing in France since November 2001. Such circumstance was known to the Complainant because his domicile in France appears at the Whois registrar. The second is relative to supposed telephone conversations that the Complainant, in its e-mail of August 2 to the Center, claims to have maintained during the year 2000 with Mr. García Baltar. The Respondent shows its puzzlement, considering that according to the Complaint the Complainant came to know about the registration of the disputed domain name in November 2001.

There does not exist identity between the confronted denominations, because the Respondent is using the terms "aerolinias" and "argentinas" in their generic sense. The joint use of the two terms does not make the mark distinctive. Moreover, the Complainant has not proven the existence of all the registered trademarks he claims to have, but only of a few national Argentinean registered trademarks. Also, the disputed domain name has been registered and is hosted in the USA, where the Claimant does not have any registered trademark. The holder of a trademark does not have the right to exclude all countries in the world by one territorial registration.

The Respondent says to be a professional of Internet since March 1999, having created many websites for international companies. In May 2000, he had the idea of creating a website that would offer information on one place on all the argentine airlines as well as on tourism to Argentina, both for Spanish and English speaking persons. He started to look for a domain name that represented this concept, and found that the most appropriate was "aerolineas argentinas". He checked the availability of this domain name and found out it was available. In May 16, 2000, he decided to register it. Since its creation, the website has been offering information in good faith to thousands of visitors.

The Complainant cannot prove the domain name <aerolineasargentinas.com> has been registered in bad faith. It has not been registered for reselling, renting it nor transferring it. It has neither been registered in order to prevent the owner of the trademark from reflecting his mark in a corresponding domain name. The Complainant has been able to reflect its trademark for a long time under other gTLDs and ccTLDs. It the Complainant has not done it is because it has not wanted to. The gTLDs ".net" and ".org" are still available, and the gTLDs of new creation ".bizz" and ".info" have been registered by the Complainant, although it does not use them. Surprisingly neither has the Complainant registered it s trademark under the restricted TLD ".aero", which shows its scarce interest in reflecting its trademark.

The Complainant has neither wanted to reflect its own trademark in the countries where it flies under the ccTLD of the country, but has only covered a few countries. The Respondent considers very interesting that the Complainant registered the domain name <aeroargentinas.com.ar> in 1997, three years before the Responded registered the disputed domain name, thus showing scarce interest of the Complainant in registering it when it was available. The best evidence of the lack of interest of the Complainant is found in the Complaint itself, in which the Complainant states that it has invested great efforts in promoting its website <aerolineas.com.ar>.

The Complainant is not a competitor of the Respondent. The first is an air flight company, the second is in Internet business. The business of the Complainant has never been disputed by the Respondent. They have cohabited for more that two years. And at most the Complainant has benefited from the Respondents activity which surely has sold tickets to Fly with Aerolineas Argentinas.

The Respondent has never used the disputed domain name in bad faith. There is no reference nor logo in the Respondent’s website that may lead to assume it is linked or related to the Complainant. The website clarifies that it is "the site of all the argentine airlines", both in the text of its pages and in its meta names descriptions. The Respondent states that its website has never been used for business purposes, only transfers visitors to other websites that do sell products or services.

The Respondent finishes by applying for the Panel to declare, according to rule 15(e) of the Policy, the existence of bad faith in the Complainants Complaint.

(a) According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint on the basis of the

- statements and documents submitted by the parties
- What is set out in the "Policy" and in the "Rules" themselves, and
- According to any rules and Law principles that the Panel considers applicable.

(b) The rules and principles applicable to the procedure other than the Policy, the Rules and the Additional Rules, must not imply a different or unequal treatment in relation to the nationals of the countries that are not party in the given controversy and the national rules and principles of which may be different to those applied. In such sense, the Panel considers that the internationally and conventionally uniform rules must be applied, as well as those that govern the administrative procedure, and only in their defect the national legislations may be taken into account for interpretative or clarifying purposes.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and,

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

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

It is evident that the Complainant’s trademark and the disputed domain name <aerolineasargentinas.com> are identical, they use identical words and with identical sound. With respect to whether they have identical meaning or not, the Panel shall give his opinion under the following section.

The Panel considers that the Complainant has proved that according to paragraph 4(a)(i) of the Policy, the domain name <aerolineasargentinas.com> is identical to the mark "Aerolíneas Argentinas".

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the dispute domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

(a) He has made 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 prior to the dispute;

(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or

(c) He intends to make 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.

The Panel remarks that it may be difficult if not impossible for the Complainant to prove the lack of rights or legitimate interests of the Respondent; this requirement should therefore be interpreted in a broad sense, allowing a certain inversion of the burden of proof.

The Panel sets out from the presumption that the Respondent knew the denomination "Aerolíneas Argentinas" as well as that he knew it was the denomination of the national-flag carrier, due to several reasons. In the first place, because the Respondent is of Argentinean nationality and has lived in Argentina until the year 2000. Secondly, because he has not denied at any time knowing that the disputed denomination is the one that identifies those airlines. In the third place, because –as opposed to the former– the wording at the heading of the home page of the website of the Respondent is "the site of all Argentinean airlines" among which there is the company of the Complainant, towards which there is a link. And lastly, because in the source code of his website there are more than a hundred airlines listed from all over the world, among which there are the most important and where, of course, "Aerolíneas Argentinas" has a preeminent place.

Despite this knowledge the Respondent has chosen the domain name <aerolíneasargentinas.com> for his website because he considered it the most appropriate to identify the products and services he offers in it. In order to justify such fact the Respondent claims that the denomination "Aerolíneas Argentinas" was free and was a descriptive trademarks.

In relation to the first question, the Panel wonders (as the Respondent does) why the Complainant has not registered is trademark under the gTLDs ".com" or ".aero", to name some. But whichever the answer is, it is not enough justification for someone else to register them if legitimate interest is not shown. One cannot require the holder of a trademark to register under all of the possible suffixes in order to avoid abusive practices. From another point of view, many domain names remain available, but this does not mean they are appropriable by the first person to register them.

As for the second question, as the Respondent states, the trademark "Aerolíneas Argentinas" is composed by two descriptive voices, which is understandable considering the public origin of the aeronautical company of Argentinean flag. But although its originally generic descriptive character, and regardless of its public or private nature, the trademark of the Complainant has achieved a powerful position in the market as a distinctive sign, benefiting from the doctrine of the secondary meaning. In the Panel’s opinion "Aerolíneas Argentinas" evokes in the mind of the consumer a determined airline company and not the description of a service of generic Argentinean flights. The same happens with other airlines that the Respondent well knows, considering they appear in the metatags of his website (American Airlines, Air France o British Airways, to name some). The Respondent himself, by using in his source code and extensive list of metatags, is recognizing the distinctive value of those "tags" regarding the respective airlines to which they refer (Annex N of the Response).

In consequence, taking into account that the Panel considers the Complainant enjoys a trademark right of which the Respondent lacks, the only possibility left is that there may be a legitimate interest of the Respondent.

Such interest vanishes if we note that the Respondent was not and is not known in the relative sector before the creation of the website. Therefore, and because of the indubitable knowledge the Respondent had of the Complainant’s trademark, the Panel considers the maximum prudence and distance is required in selecting a domain name that is to identify a website and that is actually going to be used to offer services relative to those offered by the Complainant. And it is to be required because there exist alternatives to the domain name chosen by the Respondent and that equally identify the idea he had in mind when he decided to create his website dedicated to trips and flights to Argentina.

Moreover, against what the Respondent states, in his website there is a clear profit-making aim. There may not be direct commercial exchange, but there is indirectly, since as the Respondent himself confirms, he has formal agreements with two websites (<expedia.com> y <despegar.com>), through which services and products relative to the subject matter of his own website can be contracted.

It is evident that the only interest that the Respondent may have is that which may be gathered form the website he has created under the domain name <aerolineasargentinas.com> which is actually the disputed interest and that is not grounded on any convincing precedents.

The Panel therefore, finds that Respondent has no rights or legitimate interests in respect of the Domain Name, according to paragraph 4(a)(ii) of the Policy.

For the purpose of Paragraph 4(a)(iii) of the Policy, the following circumstances set forth in Paragraph 4(b) of the Policy, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:

(i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder 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 the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ s website or other online 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 the holder’s website or location.

It is acknowledged that this is not an exhaustive list but provides illustrations of what may amount to bad faith, should the Complainant meet its burden to provide convincing evidence.

The Panel can only be guided by the facts, and those must be put in relation with the inexistence of a right or interest of the Respondent to register the disputed domain name. The Respondent knew the existence of the denomination of the Complainant, and registered it as a domain name in order to create a website related directly to the business to which the Complainant is dedicated. Such attitude implies a registration in bad faith.

The domain name is an identifying sign of the virtual space in which commercial or information exchanges are generated. The use of the domain name in a web page linked to the official site of the Complainant, aimed to the same potential consumer, offering the same services, focused upon the main geographical business area of the Complainant, implies the existence of parasitical commercial exchanges in the exclusive space of a competitor, as well as taking advantage of its reputation and name for self profit, also existing the possibility of generating confusion.

The Panel therefore finds that the Respondent, according to paragraph 4(a)(iii) of the Policy, has registered and is using in bad faith the domain name.

The domain name <aerolineasargentinas.com> is identical to the trademark "Aerolineas Argentinas", over which the Complainant has rights. Further, the Panel has considered that the Respondent lacks the rights or legitimate interests regarding the domain name, that it was registered in bad faith, and that it is being used in bad faith.

Therefore, according to Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel decides to accept the Complaint, and to give order for the registration of the domain name <aerolineasargentinas.com> be transferred to the Complainant.