The Complainant is Emirates, Dubai, United Arab Emirates, represented by DLA Piper UK LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Domain Admin, of “no valid address” (as confirmed by the registrar).
2. The Domain Name and Registrar
The disputed domain name <flyemirates.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2007. On November 15, 2007, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On November 15, 2007, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 20, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2007.
The Center appointed Alistair Payne as the sole panelist in this matter on December 19, 2007. 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.
4. Factual Background
The Complainant is a large multinational company operating from Dubai and is one of the world’s largest airlines. The Complainant owns various trademarks for EMIRATES and other variations of EMIRATES in the United States, the UK and the Europe among other places. The Complainant has been operating under the name “Emirates” since its inception in 1985. The Complainant uses the domain name <emirates.com> which has been registered since 1996 and has been operating since at least 1998.
The Complainant is seeking the transfer of the Disputed Domain Name.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Disputed Domain Name is identical to its common law trademark for FLY EMIRATES. The Complainant suggests that it has established common law rights in this mark as a result of the use of the FLY EMIRATES slogan in the cricket World Cup and at the Chelsea football club during the 2000-2001. The Complainant also contends that the Disputed Domain Name is aurally and conceptually confusingly similar to its registered trademarks for EMIRATES and that the addition of the word “fly” does not distinguish the Disputed Domain Name. The Complainant alleges that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. The Complainant contends that it has a significant reputation and the Respondent must have been aware of its rights. Furthermore, the Complainant notes that the use of the trademark EMIRATES in the Disputed Domain Name could not be accidental given that the trademark is so well known. Finally, the Complainant notes that the Respondent registered the Disputed Domain Name without authorization.
The Complainant contends that the Disputed Domain Name was registered in bad faith. It points to the fact that the Respondent provided no address details and the details that are provided in the register are incomplete and inaccurate. The Complainant contends that this is sufficient evidence of a bad faith registration. The Complainant contends that the Disputed Domain Name is being used in bad faith because it is clearly indicative of the Complainant’s business and cannot have been registered for any purpose other than to intentionally attract internet users to <flyemirates.com> for commercial gain by creating a likelihood of confusion with the Complainant’s registered trademarks.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
If the Complainant is to succeed, it must prove each of the three elements referred to in Paragraph 4(a) of the Policy, namely that:
i. the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and
ii. the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
iii. the Disputed Domain Name has been registered and is being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in Paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has used the phrase “Fly Emirates” as a trade mark in the past, however, the Panel has not been provided with sufficient evidence of use to determine whether the Complainant has on-going common law rights in “Fly Emirates”. In any event the Complainant has numerous registered trademarks for EMIRATES and recognizing the high degree of international renown attaching to these marks the Panel considers that the addition of the word “fly” to the Disputed Domain Name does not eliminate the likelihood of confusion with the Complainant’s trademarks. See PepsiCo, Inc. v PEPSI, SRL and EMS Computer Industry, WIPO Case No. D2003-0696. In fact the Panel considers that the inclusion of this word only serves to increase the likelihood of confusion when it is combined with EMIRATES which is a trademark registered for, among other things, air transportation services. Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s mark and that the Complainant has satisfied the requirements under Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
As already noted, the Panel is satisfied that the Complainant has substantial rights and interests in the EMIRATES trademarks. The Complainant must, therefore, establish a prima facie case that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. The Panel accepts that it is highly unlikely that the Respondent’s choice of domain name was co-incidental. The Panel also accepts the inference that the Respondent knew of the Complainant’s business in circumstances that the Respondent registered the Disputed Domain Name a number of years after the Complainant initially began operating a business under the EMIRATES trademark. Furthermore, the Respondent was not authorized or licensed by the Complainant to register or use the Disputed Domain Name. The Panel is, therefore, satisfied that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Respondent did not reply to this Complaint and the Panel has been given no evidence to justify the registration and use of <flyemirates.com>. The Disputed Domain Name resolves to a GOOGLE powered search engine. This in itself is not an illegitimate use of a domain name, however, the fact that the Respondent choose to register the Complainant’s well known trademark and business identifier implies that the Respondent intended to piggyback off the established reputation of the EMIRATES trademarks. The search engine at <flyemirates.com> provides hits from the GOOGLE search engine along with a number of sponsored links some of which advertise airlines that are in direct competition with the Complainant. As this is a commercial use, the Panel is prepared to imply, that the Respondent intended to take advantage of the Complainant’s trademarks for commercial gain.
Accordingly, the Panel is satisfied, in the absence of evidence to the contrary, that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Panel finds that the Complainant has satisfied the requirements of Paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
For the reasons given above in paragraph 6.B. and in the absence of any rebuttal evidence from the Respondent, the Panel finds that the Respondent registered and used the Disputed Domain Name in bad faith with the intention of attracting internet users to <flyemirates.com> for commercial gain by creating a likelihood of confusion with the Complainant’s trademarks. The Complainant has satisfied Paragraph 4(b)(iv) of the Policy. The Panel is, therefore, satisfied that the Complainant has fulfilled Paragraph 4(a) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <flyemirates.com> be transferred to the Complainant.
Alistair Payne Sole Panelist
Dated: January 14, 2008
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