WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Air Transport Association (IATA) v. Traverse Too and ASB (Schweiz)
Case No. 2000-0192
1. The Parties
A. The Complainant is the International Air Transport Association (hereafter IATA or Complainant).
IATA is incorporated under Canada law as a not-for-profit corporation, and its executive offices are located in Geneva, Switzerland with branch offices in approximately 60 countries around the world.
B. The Respondents are:
(1) for the domain name "iata.com" "Traverse Too", and
(2) for the domain name "iata.net" ASB (Schweiz).
Both are said by Complainant to be affiliated with or closely linked to Park Lane Travel Related Service.
2. The Domain Names and Registrar
A. The domain names at issue are "iata.com" and "iata.net". IATA already has the registered domain name "iata.org".
B. The Registrar with which the domain names are registered is Network Solutions, Inc.
3. Procedural History
A. The complaint was received by the WIPO Arbitration and Mediation Center (hereafter : the "Center") on March 21, 2000, and e-mail acknowledgment of the receipt of complaint was sent on March 24, 2000. The same day, a request for registrar verification was issued and answered by Network Solutions, Inc.
B. On March 27, 2000, the complaint was notified to Respondents and the administrative proceedings commenced.
C. Respondents did not answer, although the Panel is satisfied that the Center served notice of the complaint per fax, courier and e-mail. Therefore, on April 21, 2000, Respondents were found to be defaulting.
D. On April 21, 2000, the Center appointed as Sole Panelist Professor François Dessemontet, who had submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
E. The present decision is rendered within the time limit fixed on May 5, 2000.
4. Factual Background
A. IATA is the principal trade association for the world's international airlines. While already active before the second world war, it was limited to European airlines until 1939, when Pan-American joined. Its Articles of Association date from 1945. It owns a U.S. trade mark N° 73-470 320 registered in 1985, comprising a design of a globe with two wings, the letters IATA and a rounded delineation, for the international class 42, as well as similar trade marks in various other countries. IATA also registered the Internet domain name "iata.org" with Network Solutions, Inc. and operates a fully developed web site under that domain name.
B. Respondents and Park Lane Travel Related Services are defaulting. The only information available to the Panel has been supplied by Complainant, according to which Park Lane offers to sell to travel agents e-mail addresses ending in "@iata.com" or "@iata.net" in exchange for payment of a monthly fee to Park Lane. This offer is apparent on the home page http://www.iata.com/terms.htm. The administrative contact for both domain name is Mr. Andrew M. Reichmuth in Rotkreuz, Canton of Zug, Switzerland, who may be known also as Mr. Andreas Reichmuth according to Dun & Bradstreet reports.
C. Respondents are bound by the dispute resolution policies adopted by Network Solutions, Inc. as they requested or maintained the registration of their domain names once the registrar adopted the ICANN Policy Rules.
5. Parties Contentions
A. Complainant maintains that the domain names "iata.com" and "iata.net" are identical or confusingly similar to the IATA trade mark, that neither of the Respondents has a right or a legitimate interest to use such a domain name, and that they registered the domain names in bad faith and are using them in bad faith to exploit commercially the IATA trade mark. Respondents further create a false impression of an affiliation with IATA by stating that IATA official travel agent may indicate their registration number with IATA and mentioning in that connection "our" number.
Complainant requests therefore that the domain names be transferred to it.
B. Respondents are defaulting.
6. Discussion and Findings
A. The IATA trademark and logo is certainly a well-known trade mark within the meaning of Article 16 of the Agreement on Trade Related Aspects of Intellectual Property (TRIPs). TRIPs extends the Paris Convention provision on the protection of well-known marks to service marks (such as the complainant's mark) and further extends the protection of well-known trademarks to cases of dilution by use for different goods and services where that use is damaging.
B. The similarity between the verbal part of the IATA trade marks and the distinctive part of Respondents' domain names is confusing, the only possible difference being the top-level domain name. For research engines as well as for individuals viewing them on the screen, those domain names are identical to the trade mark and official domain name of Complainant.
C. Respondents do not appear to have any rights or in fact bona fide interests in the use of a domain name which includes the acronym "iata".
On the contrary, it is a violation of the Swiss Law Against Unfair Competition of 1986 (Art. 3 [b]) to give false or misleading information on oneself, one's enterprise, one's trade name, one's wares, works, services, prices, inventories, sales methods or business.
Thus, to imply a sponsorship or official relation, such e.g. as an authorized dealership, as is implied here with IATA when no relationship exists, is prohibited by law in the Respondent's country. Respondents are to be found also lacking in good faith in fact, since IATA is world-renowned in the field of air travel and its better rights could not possibly be ignored by Respondents.
D. Respondents appear to have registered the domain names in bad faith and to use them now in bad faith with the sole purpose of financial gain. They try to reap profits through the offering to travel agents of subscriptions purporting to enable them to enjoy the benefit of an "iata.com" or "iata.net" domain name.
In view of the better rights of Complainant, the contentions of Respondents' web sites in this regard are misleading.
Further, confusion is raised by the use of the domain names "iata.com" and "iata.net" on the home page. Although the web site mentions that it is "not the homepage of IATA, the International Air Transport Association", this disclaimer does not dispel the false impression that there exists a connection with or a sponsorship by Complainant. Such impression is rooted in the use of the IATA well known acronym, and in the hyperlink that is proposed to the site "iata.org" for "IATA training programs, rules and regulations", as well as in the invitation extended to "Official Travel Agent(s)", which is a well-known category with air ticketing agencies.
Finally as has been seen, it is also misleading under the Swiss Unfair Competition Law of 1986 [Art. 3 (b)] to give false information on oneself and one's activities.
This is what Respondents do most generally when creating the false impression that they are sponsored or endorsed by Complainant, for example when writing that customers may obtain an "iata.net" e-mail address by using "our assigned
8-digit IATA-Numbers" (emphasis added), although only IATA is assigning those numbers.
Therefore, not only the choice of domain names, but the text of the home page to be reached under those names is proof enough that bad faith presided over the choice and the use of the IATA element of the domain names, with the intent to mislead and to divert travel agents and the general public from the truly authorized IATA site.
The Registrar is hereby required to transfer the domain names "iata.com" and "iata.net" to the Complainant.
May 4, 2000
1. See W.R. Cornish, Intellectual Property, 4th ed. London 1999, p. 606.
2. See Federal Tribunal Decision of 24 March 1988, Arrêts du Tribunal fédéral / Bundesgerichtsentscheide 114 II 104.