Complainant is Emirates, of Dubai, United Arab Emirates, represented by Damian Herrington DLA Piper UK LLP, United Kingdom of Great Britain and Northern Ireland.
Respondent is Melanie A. Orchard, of Emery Ville, California, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <emirateairline-groups.com> is registered with Melbourne IT Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2008. On December 1, 2008, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On December 3, 2008, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that 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” 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 3,2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 24, 2008.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on January 7, 2009. 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 trademark upon which the Complaint is based is EMIRATES. According to the documentary evidence and contentions submitted, Complainant owns a number of trademark registrations for the EMIRATES trademark around the world, including in the United States (Registration No. 2,254,666 of June 22, 1999). Complainant also owns various domain name registrations, including the domain names <emirates.com> registered in July 1996, <emirates-holidays.com> registered in December 1997, and <emirate-airlineservices.com> transferred to Complainant in August 2008.
According to the documentary evidence and contentions submitted, Complainant is the official international airline of the United Arab Emirates, flying to over 100 destinations in 62 countries. Complainant's business activities, directly or through related companies, include passenger air services, freight services, ground logistics and tourism, and aircraft engineering and maintenance. Complainant operates in various cities around the world and through Complainant's website at “www.emirates.com”, and has worldwide recognition also due to its high profile sponsorship of sport events.
According to the documentary evidence and contentions submitted, the domain name <emirateairline-groups.com> was registered on October 20, 2008.
5. Parties' Contentions
A. Complainant
Complainant contends, relying on previous WIPO domain name cases, that the disputed domain name is identical or confusingly similar to Complainant's trademark because it incorporates the EMIRATES trademark and the addition of the term “airline”, a hyphen and the term “groups”, which are generic terms.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because: (i) Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as the domain name could not have been chosen for any reason other than its association with Complainant's trademark; and (ii) the type of activities carried out at the website to which the disputed domain name resolves gives no justification for Respondent's use and registration of the disputed domain name.
Finally, Complainant contends that Respondent has registered and used the disputed domain name in bad faith because: (i) Respondent is using the website to which the disputed domain name resolves in relation to an illegal scam operation and those actions are likely to damage Complainant's reputation; (ii) the EMIRATES trademark is well-known and registration of a domain name containing a well-known trademark constitutes opportunistic bad faith; (iii) Respondent is using the disputed domain name to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant's mark and website.
B. Respondent
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
A. Effect of the Default
The consensus view is that respondent's default does not automatically result in a decision in favor of complainant and that complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc.,
WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contac., WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc., supra and RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
B. Identical or Confusingly Similar
The Panel concurs with the opinion of several prior WIPO UDRP panels which have held that, when a domain name wholly incorporates a complainant's registered trademark, that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,
WIPO Case No. D2000-0047; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,
WIPO Case No. D2000-1525; Kabushiki Kaisha Hitachi Seisakushuo (d/b/aHitachi, Ltd.) v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903; Bayerische Motoren Werke AG v. bmwcar.com,
WIPO Case No. D2002-0615; adidas-Salomon AG v. Mti Networks Ltd.,
WIPO Case No. D2005-0258; AT&T Corp. v. William Gormally,
WIPO Case No. D2005-0758.
That is particularly true where the trademark is highly recognizable, as in the instant case. The disputed domain name incorporates the widely known EMIRATES trademark, with the deletion of the “s” letter, and that fact may lead the public to think that the disputed domain name is somehow connected to the owner of the registered trademark. Utensilerie Associate S.p.A. v. C & M,
WIPO Case No. D2003-0159.
In addition, it has been consistently decided that the addition of generic or descriptive terms to an otherwise distinctive trademark name is to be considered confusingly similar to the registered trademark. V&S Vin&Sprit AhB v. Giovanni Pastore,
WIPO Case No. D2002-0926; Thomson Broadcast and Media Sfolution Inc., Thomson v. Alvaro Collazo,
WIPO Case No. D2004-0746; Sanofi-aventis v. US-Meds.com, WIPO Case No. D2004-0809; F. Hoffman La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049.
The word “airline” is purely descriptive of Complainant's activity, and the combination of “emirate” with “airline” creates an immediate potential for false association with the EMIRATES trademark and a high degree of initial confusion. adidas-Salomon AG v. Digi Real Estate Foundation, Patrick Williamson,
WIPO Case No. D2006-0748. The word “groups” is generic and does not generally affect a finding of similarity where a registered trademark is incorporated into a domain name.
Finally, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith,
WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies,
WIPO Case No. D2006-0582.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
C. Rights or Legitimate Interests
Complainant argues that Respondent chose the disputed domain name to create an association with Complainant's EMIRATES trademark, and contends that the reputation of said trademark has been confirmed in Emirates Corporation v. 2220 Internet Coordinator,
WIPO Case No. D2005-1311. This Panel finds that a trademark associated with an international airline flying to various destinations and countries does render the trademark immediately recognizable around the world.
The facts of this case are rather similar to those in Emirates Group Headquarters v. Erica Vennum,WIPO Case No. D2008-0883, involving the domain name <emirate-airlineservices.com>. In that decision, the panel found that “[t]he web pages associated with the domain name in dispute display a number of Complainant's trade marks and also reproduce the pictures and information provided on Complainant's website virtually in its entirety. Respondent's website associated with the domain name in dispute looks almost identical to and strongly resembles the Complainant's own website at ‘www.emirates.com'”. As a result, the panel concluded that, in the absence of any evidence to the contrary by respondent, “Complainant has proven that Respondent does not have any rights or legitimate interests in the domain name in dispute.”
As in Emirates Group Headquarters v. Erica Vennum, supra,the website at “emirateairline-groups.com” strongly resembles Complainant's website at “www.emirates.com”, and is also being used as part of an apparently illegal scam operation devised to extract money from individuals who believe they are applying for a job with Complainant. Therefore, the Panel finds that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. Given the similarities between the two cases, including the fact that both respondents are domiciled in the same city, Complainant further contends that Respondent is the same as in Emirates Group Headquarters v. Erica Vennum,supra. The Panel finds it unnecessary to make such finding. Similar or almost identical facts lead to the same conclusion irrespective of whether or not respondents are the same.
In short, the Complainant has satisfied its burden of providing sufficient evidence to make a prima facie case showing that Respondent lacks rights to or legitimate interests in the disputed domain name, and Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
D. Registered and Used in Bad Faith
First, the Panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name may be a clear indication of bad faith in itself. See Pepsico, Inc. v. “null”, aka Alexander Zhavoronkov,
WIPO Case No. D2002-0562; Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,
WIPO Case No. D2000-0163; Pepsico, Inc. v. Domain Admin,
WIPO Case No. D2006-0435.
In addition, given the extensive and worldwide reputation of the EMIRATES trademark in the field of airline services, the Panel sees no plausible explanation for Respondent's adoption and use of the term “emirate” in conjunction with the term “airline” in the disputed domain name other than to attract for commercial gain Internet users by creating a likelihood of confusion with Complainant's trademark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com",
WIPO Case No. D2000-0847. That circumstance is evidence of registration and use of a domain name in bad faith under paragraph 4(b) of the Policy.
The Panel accepts Complainant's contention that the likelihood of confusion is reinforced by the resemblance of the websites operated by both Complainant and Respondent and by the fact that Respondent's website even provides links to the Complainant's website.
As the panel held in Emirates Group Headquarters v. Erica Vennum,supra,“Respondent is involved in opportunistic bad faith in adopting, registering and using the confusingly similar domain name in dispute in association with a webpage associated with the services provided by Complainant. See, Xerox Corp v Stonybrook Investments Ltd.,
WIPO Case No. D2001-0380, where the Panel stated that the domain names in question “are so obviously connected with the Complainant and its services that their very use by someone with no connection with the Complainant suggests ‘opportunistic bad faith”.
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 <emirateairline-groups.com> be transferred to the Complainant.
Manoel J. Pereira dos Santos Sole Panelist
Dated: January 16, 2009
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