The Complainant is AIDA Cruises - German Branch of Costa Crociere S.p.A. from Rostock, Germany, represented by Selting und Baldermann, Germany.
The Respondent is Futuron Internet Oy/ Noponen Consulting of Helsinki, Finland, represented by Jussi Tolvanen, Finland.
The disputed domain name <aidacharter.com> (the “Disputed Domain Name”) is registered with CSL Computer Service Langenbach GmbH dba Joker.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2011. On March 3, 2011, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com. a request for registrar verification in connection with the disputed domain name. On March 3, 2011, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant. 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 the Respondent of the Complaint, and the proceedings commenced on March 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2011. The Response was filed with the Center on March 17, 2011.
The Center appointed Jacques de Werra as the sole panelist in this matter on March 30, 2011. 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.
The Complainant is a Germany company based in Rostock which operates cruises in Europe, the United States of America, the Caribbean, and Asia. The Complainant is the owner of the German word trademark number 397 01 328 AIDA which was registered on March 17, 1998 and of the European Community word trademark AIDA number 468 19 87 which was registered on January 24, 2001 covering both travel services (“the Trademark”).
The Disputed Domain Name has been registered on February 17, 2009. It is used in connection with charter sailing services in Finland.
The Complainant claims that the Disputed Domain Name is identical to the Trademark knowing that the other parts of the Disputed Domain Name can be neglected particularly because “charter” is solely descriptive (meaning “renting of boats”).
It further alleges that the Respondent has no right to use or legitimate interests in respect on the Disputed Domain Name because this would require that the Respondent shall use the Disputed Domain Name not commercially or in connection with a bona fide offering of goods and services. The Respondent has not obtained a right to use the Trademark. He has neither obtained a license nor a permission to use the Trademark from the Complainant. The Respondent rather uses the Disputed Domain Name in order to offer commercial sailing charter services. A bona fide offering of services cannot be admitted from the information of the website associated to the Disputed Domain Name. Even though the Respondent offers services on the website, these services have to be assumed to be more recent than the Trademark of the Complainant. The Complainant contacted the Registrant for the first time on July 1, 2009, and asked for the recognition of its priority right in the Disputed Domain Name to which the Respondent did not react. Therefore, it can be assumed that the Respondent’s activities under the Disputed Domain Name are more recent than the Trademark of the Complainant and therefore cannot be offered bona fide.
The Complainant finally claims that the Respondent uses the Disputed Domain Name in bad faith. The Respondent uses the Complainant’s Trademark identically in the Disputed Domain Name. The Respondent is marketing services of its boat charter company which are similar to cruises for which the Complainant has trademark rights. The Respondent was well aware of the Complainant’s Trademark. Even though the Respondent is a Finnish company, the Registrar of the Disputed Domain Name is a German company.
The Disputed Domain Name was registered by the Respondent on behalf of one of its clients Noponen Consulting which has “rights and registered use for the trade name “Aida Charter” and therefore has rights and legitimate interests in respect of the [Disputed Domain Name]”.
The website associated with the Disputed Domain Name demonstrates that it is not used in bad faith but for a legitimate and active business use in Finland.
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
i) that the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
iii) that the Disputed Domain Name has been registered and is being used in bad faith.
Complainant has established that it is the owner of the Trademark.
Complainant contends that the Disputed Domain Name incorporates the Trademark and that the addition of the descriptive term “charter” cannot affect a finding of identity between the Trademark and the Disputed Domain Name.
The Panel finds in this respect that the use of the Trademark in conjunction with the descriptive word “charter” (which is a dictionary word which can particularly be used to describe services offered by the parties) does not affect the overall impression created by the Dispute Domain Name. The inclusion of this word consequently does not defeat the confusing similarity created by the use of the Trademark in the Dispute Domain Name.
For these reasons, the Panel finds that Complainant has rights in the Trademark and that the Disputed Domain Name is confusingly similar to the Trademark so that the requirements of paragraph 4(a)(i) of the Policy are met.
Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or a legitimate interest in a domain name:
(i) before any notice of the dispute, respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) respondent is 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.
The Policy places the burden on a complainant to establish the absence of a respondent's rights or legitimate interest in the disputed domain name. Because of the inherent difficulties in proving a negative fact, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 2nd ed., paragraph 2.1.
In the present case, the Panel is not fully convinced that the Complainant has established a prima facie case showing that the Respondent would have no rights or legitimate interests in the Disputed Domain Name. In this respect, it does not appear sufficient to this Panel to merely claim that the Respondent’s activities in connection with the Disputed Domain Name are more recent than the registration of the Trademark in order to establish a prima facie case.
In any case, even assuming the showing of a prima facie case, the Panel considers that the Respondent has brought sufficiently convincing evidence that it has used the Disputed Domain Name in connection with a bona fide offering of goods or services, i.e. charter sailing services in Finland. As resulting from the reference to the official Finnish Joint business information system of the National Board of Patents and Registration and the Tax Administration (www.ytj.fi), Respondent has established that the name “Aida Charter” is officially used as the auxiliary trade name of the company Noponen consulting, on behalf of which the Disputed Domain Name has been registered by Respondent. The Panel also notes that the use of the Disputed Doman Name corresponds to the Respondent’s apparent charter sailing service.
On this basis, given that the Complainant (who ultimately bears the burden of proof) has not been able to establish the absence of Respondent's rights or legitimate interest in the Disputed Domain Name, the Panel finds that the conditions of paragraph 4(a)(ii) of the Policy are not met.
Given that the three conditions under Paragraph 4(a) of the Policy are cumulative and that this condition has not been established by the Complainant, the Panel would not need to enquire about the third condition so that it shall only briefly address it.
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of a domain name in “bad faith”:
(i) circumstances indicating that respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) that respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's website or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent's website or location or of a product or service on respondent's website or location.
In this case, the Panel notes that the Complainant has not alleged nor brought any evidence that the Disputed Domain Name would have been registered in bad faith by Respondent and that Respondent (apparently residing in Finland) was aware of the Complainant’s Trademark at the time of registration of the Disputed Domain Name. In its letter of July 1, 2009 sent to the Respondent, Complainant’s counsel leaves this issue open by stating that it assumed that Respondent was not aware that it was violating Complainant’s rights and that it assumed that the registration of the Disputed Domain Name was a mistake. The Panel further notes that no subsequent factual element persuasive to this Panel has been brought by Complainant for the purpose of demonstrating a bad faith registration and use of the Disputed Domain Name by the Respondent.
On this basis, there is no evidence convincing the Panel that Respondent was aware of the Complainant's Trademark at the time when it registered the Disputed Domain Name and that its registration and use of the Disputed Domain Name was made in bad faith.
As a result, the Panel holds that the Complainant has not satisfied its burden of proving that the Respondent registered and used the Disputed Domain Name in bad faith according to paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, the Complaint is denied.
Jacques de Werra
Dated: April 11, 2011
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