Complainant is Luxair SA, Luxembourg, represented by Philippe Gilliéron, Switzerland.
Respondent is Puma Industrial Co., Ltd, Taiwan, Province of China, represented by Wragge & Co LLP, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <luxair.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2009. On February 6, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On February 6, 2009, Network Solutions, LLC 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 February 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2009. The Response was filed with the Center on March 10, 2009.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on March 17, 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
Complainant registered the service mark LUXAIR on the trademark register of the Benelux countries, registration No. 659001, dated October 18, 1999, and used that registration as the basis for ten (10) additional country designations/registrations of that mark (e.g., in Bulgaria and Switzerland) through the Madrid System, international registration No. 733522, in International Classes (ICs) 37, 39 and 42. Complainant has also registered the service mark LUXAIR as Community Trade Mark, registration No. 001348986, dated December 12, 2000, in ICs 37, 39 and 42. Complainant's service mark registration covers, inter alia, repair of aircraft and motors, transportation of passengers and freight, and restaurant services. (Complaint, Annexes 6 & 7)
Complainant is the national airline company of Luxembourg. According to Complainant, it was created in 1948 and adopted the name “Luxair” in 1962. Complainant operates regular flights to approximately 20 European destinations, serving over one million passengers each year. Complainant has registered a number of domain names that incorporate “luxair”, including, e.g., <luxair.be>, <luxair.de> and <flyluxair.com>.
According to the Registrar's verification response, Respondent is registrant of the disputed domain name. According to that response, the record of registration of the disputed domain name was created on February 24, 1998.
According to a webpage printout provided by Complainant, as of February 11, 2009, the disputed domain name was used to direct Internet users to a Network Solutions “under construction” webpage that included links to various commercial enterprises, including Complainant, but also third-party travel agency services (e.g., “Last Minute Plane Tickets” and “Cheap Airline Tickets”).
Respondent has provided evidence of registration of the trademark “LUX Air” on the trademark register of the China Trademark Office, registration No. 788548, dated February 24, 1994, in IC 7, covering “air compressors, pneumatic tools, electric tools and spray guns”. Respondent's evidence consists of computer database printouts from the trademark search facility sponsored by the China Trademark Office. The aforesaid registration was renewed on July 11, 2005 and is valid until June 11, 2015. (Response, Annex 1) Respondent has further provided a copy of a brochure in Chinese and English advertising “LUX Air Compressors”, including a trademark registration notice (®) alongside that designation. (Response, Annex 2) Respondent (through its counsel) has indicated that Tissan Industrial Inc., the enterprise listed on the brochure, is its subsidiary company. Respondent indicates that sales of products under its LUX Air mark have amounted to USD150 million over a 14-year period, which is 5% of Respondent's total revenue.
The Registration Agreement in effect between Respondent and Network Solutions, LLC, subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties' Contentions
A. Complainant
Complainant alleges that it has rights in the trademark LUXAIR and that the disputed domain name is identical to its mark.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant argues that it has not licensed or otherwise authorized Respondent to use its trademark. Complainant indicates that Respondent's selection of a domain name identical to Complainant's mark cannot be a mere coincidence. Complaint alleges that Respondent is obviously not known by the term LUXAIR, and that Respondent's failure to establish an active website addressed by the disputed domain name for a period of 10 years (i.e., passive holding) cannot constitute a legitimate interest.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith. Complainant argues that because the disputed domain name is identical to the trademark of the national airline of Luxembourg, Respondent's registration of that name suggests “opportunistic bad faith”. Complainant refers to dispute settlement decisions under the Policy finding that passive holding of a domain name may constitute bad faith. Complainant suggests that inactivity can lead to a presumption of registration with the intent to sell a domain name in bad faith. Complainant argues that Respondent must have known of its well-known mark when it registered the disputed domain. Finally Complainant indicates that Respondent's use of the disputed domain name in connection with a parking page linking to third-party advertisements constitutes bad faith, whether or not Respondent derives commercial gain from the sponsored links.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
B. Respondent
Respondent does not address the allegation that the disputed domain name is identical to Complainant's trademark.
Respondent argues that it has rights and legitimate interests in the disputed domain name. Respondent provides evidence that Respondent registered the trademark LUX Air on the trademark register of the China Trademark Office on February 24, 1994 (see Factual Background, supra). Respondent further argues that it has used that trademark in commerce for 14 years in connection with the advertisement and sale of air compressors and related products. Respondent indicates that it registered the LUX Air trademark prior to Complainant's registration of its LUXAIR service mark. Respondent contends that it has used a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
Respondent denies that it registered or has used the disputed domain name in bad faith. Respondent indicates that Complainant has provided no evidence that Respondent had actual knowledge of Complainant's trademark when it registered the disputed domain name. Respondent argues that it should be apparent that it registered the disputed domain name as part of its “intellectual property portfolio” related to its LUX Air trademark. Respondent contends that in light of its legitimate interests in the disputed domain name, its use in connection with a parking website cannot be considered bad faith within the meaning of the Policy.
Respondent asks the Panel to reject Complainant's request for transfer of the disputed domain name.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
Respondent received notice of the Complaint and commencement of the administrative proceeding from the Center and filed its Response in a timely manner. Respondent received adequate notice of these proceedings and had reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent's domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has furnished evidence of rights in the service mark LUXAIR based on registration in the Benelux countries and elsewhere (see Factual Background, supra), and has provided evidence of the use of the mark in commerce. Respondent has not challenged the validity of this evidence. The Panel determines that Complainant has rights in the service mark LUXAIR.
The disputed domain name is identical to Complainant's LUXAIR service mark, but for addition of the gTLD “.com”. Respondent has not challenged Complainant's assertion that the disputed domain name is identical to Complainant's service mark for purposes of the Policy. The Panel determines that the disputed domain name and Complainant's LUXAIR service mark are identical within the meaning of the Policy.
Complainant has established that it has rights in the service mark LUXAIR and that the disputed domain name <luxair.com> is identical to that mark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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. (Policy, paragraph 4(c))
Respondent has provided substantial evidence that it registered the trademark LUX Air on the trademark register of the China Trademark Office in 1994.
There is no evidence on the record of this proceeding to suggest that Respondent's China trademark registration should be disregarded.
In light of the affirmative evidence provided by Respondent, and in the absence of contradictory evidence, the Panel determines that Respondent has established rights in the trademark LUX Air in China.
The disputed domain name is identical to Respondent's LUX Air trademark from the standpoint of the Policy.
The brochure furnished by Respondent showing use of the LUX Air trademark refers to an enterprise other than Respondent. Respondent indicates that the other enterprise is its subsidiary company that has used the trademark with its permission. If the brochure were the only evidence of Respondent's rights in its trademark, the Panel might have requested further substantiation of the link between Respondent and the subsidiary enterprise. However, the brochure is not critical to the Panel's determination regarding rights or legitimate interests. Those rights are established by Respondent's registration of the LUX Air trademark in China. That registration was accomplished prior to Complainant's registration of its LUXAIR service mark.
It is not so difficult to believe that Respondent, a Taiwanese company, would have been unaware in 1994 (when it registered its trademark in China) of the existence of a Luxembourg airline company carrying passengers between destinations in Europe. It is also not so difficult to believe that Respondent would have been unaware of Complainant and its service mark in 1998 when Respondent registered the disputed domain name. In 1998 Complainant had not yet first registered its trademark in the Benelux countries.
Respondent does not need to have used the disputed domain name to establish rights or legitimate interests in it. Absent evidence of a “sham” registration, it is sufficient that Respondent had (and has) rights in a trademark corresponding to the disputed domain name to establish that it has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.
The fact that Respondent has used the disputed domain name in connection with a “link farm” parking page furnished by its registrar does not act to deprive Respondent of rights in its trademark or in the corresponding disputed domain name.
Respondent's parking page may create Internet user confusion regarding whether Complainant sponsors or is affiliated with the website identified by that parking page. However, this is not a trademark infringement preceding. The issues addressed by the Policy are significantly more limited than the issues potentially encompassed in trademark infringement proceedings. In a dispute settlement proceeding under the Policy, a respondent may succeed in establishing rights or legitimate interests in a domain name notwithstanding that it may be using that domain name in a way that infringes a third party trademark holder's rights outside the scope of the Policy. In the present circumstances, if Complainant considers that Respondent is using the disputed domain name in a way that inappropriately takes advantage of Complainant's rights in its service mark, it is open to Complainant to initiate other proceedings in an appropriate forum.
Respondent has established that it has rights in the disputed domain name <luxair.com> because that domain name is identical to a trademark in which it has established rights.
Because Complainant has failed to establish that Respondent lacks rights or legitimate interests in the disputed domain name, Complainant does not succeed in this proceeding. The Panel need not and does not address the issue of bad faith.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott Sole Panelist
Dated: March 31, 2009
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