WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Singapore Airlines Limited v. Robert Nielson (trading as Pacific International Distributors)

Case No. D2000-0644

 

1. The Parties

The Complainant is Singapore Airlines Limited, a corporation under the laws of the Republic of Singapore with its address at Airline House, 25 Airline Road, Singapore 819829. The Complainant is represented by Mr. Roy Goldbert of Schnader Harrison Segal & Lewis LLP, Attorneys of Washington DC, U.S.A.

The Respondent is Robert Nielson of 16060 Ventura Boulevard, #326, Encino, CA 91436, USA. The Respondent is not represented by counsel and has filed no Response. The Respondent appears to trade under the name Pacific International Distributors also.

 

2. The Domain Name and Registrar

The domain name at issue is "singaporegirl.com". The domain name is registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America ("NSI").

 

3. Procedural History

The Complaint submitted by Singapore Airlines Limited was received on June 20, 2000, (electronic version) and June 22, 2000, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").

On or about June 21, 2000, a request for Registrar verification was transmitted by the WIPO Center to NSI, requesting it to:

- Confirm that a copy of the Complaint had been sent to it by the Complainant as required by the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).

- Confirm that the domain name at issue is registered with NSI.

- Confirm that those identified as the Respondents are the current registrants of the domain name.

- Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.

- Confirm that the Uniform Domain Name Dispute Resolution Policy was in effect.

- Indicate the current status of the domain name.

By email dated June 30, 2000, NSI advised WIPO Center as follows:

- NSI had received a copy of the Complaint from the Complainant.

- NSI is the Registrar of the domain name registration "singaporegirl.com".

- Robert Nielson is shown as the "current registrant" of the domain name "singaporegirl.com". His addresses is as given above.

- Robert Nielson is also shown as the Administrative, Technical, Zone and Billing Contact at the following address:

Pacific International Distributors

PO Box 986, Bethel, AK 99559

Phone 907-543-3579; Fax 907-543-5307.

- NSIís 5.0 Service Agreement is in effect.

- The domain name registration "singaporegirl.com" is in "Active" status.

NSI has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").

The advice from NSI that the domain name in question is still "active", indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with NSI. Accordingly, the Respondent is bound by the provisions of NSIís Domain Name Dispute Resolution Policy, i.e., the ICANN policy. The Respondent has not challenged the jurisdiction of the Panel.

Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on July 6, 2000, transmitted by post/courier and by email a notification of Complaint and Commencement of Administrative Proceedings to the Respondents. A copy of the Complaint was also emailed to NSI and ICANN.

The Complainant elected to have its Complaint resolved by a single panel member: it has duly paid the amount required of it to the WIPO Center.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by July 25, 2000). The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. The Respondent has filed no Response. A Notice of Default was forwarded by WIPO Center to the Respondent on July 31, 2000.

On August 17, 2000, the WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand, to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.

On August 17, 2000, the Honourable Sir Ian Barker QC advised his acceptance and forwarded to the WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.

On August 21, 2000, WIPO Center forwarded to the Honourable Sir Ian Barker QC by courier the relevant submissions and the record. These were received by him on August 25, 2000. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by September 4, 2000.

The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.

The language of the administrative proceeding is English, being the language of the registration agreement.

 

4. Factual Background

The Complainant has since 1962, operated a high profile, successful international airline. It flies to 70 cities in 35 countries in Asia, Europe, North America, Africa and Australasia.

For almost 30 years, the Complainantís advertising and promotional campaigns have centered on the "Singapore Girl", a female flight attendant dressed in a sarong, as symbolic of the high standard of service on board the Complainantís airline. The mark has come to be synonymous with the Complainant.

The Complainant exhibited media references from a variety of publications over several years which discussed in complimentary terms the "Singapore Girl" advertising strategy. Further fame was achieved in 1993, when Madame Tussaudís waxworks in London displayed a "Singapore Girl".

The Complainant obtained registration in the United States (No. 1161347) in 1981, of the mark "Singapore Girl" in International Class 39 for the provision of air transport services. Similar registrations have been made in Singapore, New Zealand and the Philippines. The Complainant asserts a common law trademark in those jurisdictions that recognize common law trademarks.

When accessed by an internal user, the Respondentís website shows a title page of "Singapore Ladies", with links (inter alia) to "Cupidís Network Affiliate", "Where Singles Meet" and "SingleSites.com". When the "Singapore Ladies" icon is engaged, a page comes up entitled "Cherry Blossoms, Inc Ė The Worldís 1st Personals since 1974!". If a user engages the link to "SinglesSites.com", the user will be presented with hyperlinks to "singles sites", as well as to websites containing pornographic content.

The Complainant has given no rights to the Respondent in respect of the domain name.

 

5. Partiesí Contentions

The Complainant submits that the only possible conclusion must be the Respondent registered and is using its world-famous mark, "Singapore Girl," in bad faith. It asserts that the Respondent is intentionally attempting to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship or endorsement of the Respondentís website. The Complainant also alleges that the Respondentís use (a) intentionally misleads customers for commercial gain; and (b) tarnishes the Complainantís mark (see Policy 4(b)(iv) and 4(c)(ii)). Although internet users would ultimately discover no business relationship between the Complainant and the Respondent, the latter would have gained website traffic from the establishment of the link.

The Respondent has made no submissions.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

h That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

h That the Respondent has no rights or legitimate interests in respect of the domain name; and

h That the domain name has been registered and is being used by the Respondent in bad faith.

The domain name "singaporegirl.com" is obviously identical or confusingly similar to the Complainantís mark. The Panel so decides. The ".com" addition is of no consequence in making this assessment.

Likewise, the Panel decides that the Respondent has no rights or legitimate interests in the domain name at issue. The Respondent has never suggested to the contrary. There is no suggestion of any license from the Complainant to use the name. Nor that the Respondent is known by a name similar to the domain name.

Paragraph 4(b) of the ICANN Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) Circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

It should be noted that the circumstances of bad faith are not limited to the above.

The Panel considers that the Respondent has registered and used the domain name "singaporegirl.com" in "bad faith" for the following reasons:

(a) "singaporegirl.com" is so obviously connected with such a well-known airline that its very use by someone with no connection with the airline suggests opportunistic bad faith.

(b) The connection of the Respondentís website with apparent "adult" offerings clearly tarnishes or dilutes the Complainantís mark.

(c) The Respondent is using the domain name for commercial gain, hoping that persons surfing the Internet, seeking information on the Complainantís services, will be diverted into the Respondentsí less salubrious offerings.

(d) It strains credibility that the Complainant was oblivious of the existence of the "Singapore Girl" mark when he registered the domain name.

The present situation is similar to that found in Nokia Corporation v. Nokiagirls.com a.k.a IBCC (WIPO Case D2000-0102) where the WIPO Panel ordered cancellation of the domain name "nokiagirls.com". The Complainant was a manufacturer of cell phones known internationally. The domain name was connected to a website displaying a menu with certain word links. There was also a picture of a womanís face and shoulder and a list of countries grouped by continents. When one clicked on the link "MORE", two additional pages were displayed, with one picture each of girls in blue uniforms. The loading of the website caused a rotating banner to appear. The banner contained hyperlinks to other sites. The Panel concluded that the domain name had been registered and used in bad faith because the registrant was using the domain name to create traffic to its website in a financially driven attempt to draw Internet users to its website. Although the registrantís website did not contain pornographic material, it nevertheless created an impression that the site was adult-oriented Ė which "constitute[d] an aggravating element in the assessment of the bad faith with which the Domain Name is being used".

In National Football League Properties, Inc. et al. v. One Sex Entertainment Co., (WIPO Case No. D2000-0118), the Respondent "used the domain name Ďchargergirls.netí to direct Internet users to its pornographic website Ďonesex.comí. As such, the Respondent used the name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion whether Complainant was the source, sponsor, affiliate, or endorser of its website. Although Internet users might soon discover the unlikelihood of a business relationship between Complainant and Respondent, Respondent would have gained website traffic from the establishment of the link via the Ďchargergirls.netí domain name."

Accordingly, for all the various reasons discussed above, the Panel finds that the domain name "singaporegirl.com" has been registered and is being used by the Respondent in bad faith.

 

7. Legal Considerations

The decisions of United States Courts cited by the Complainant indicate that the Respondentís use of the disputed domain name dilutes unlawfully the Complainantís mark. The mark appears to meet the criteria for being "famous" found in the US Federal Trademark Dilution Act 1995: see Hasbro Inc. v. Internet Entertainment Group Ltd, 1996 WL 84853 (W.D. Wash. 1996). The Respondent is tarnishing and therefore diluting the Complainantís mark by linking it to an "adult" website.

A similar situation to the present came before the High Court of New Zealand in New Zealand Post Ltd v Leng [1999] 3 NZLR 219. There, the New Zealand postal administration, known as NZ Post, objected to the defendantís registration of a domain name "nzpost.com". The site contained links directing the browser to pornographic material. The Court granted the injunction sought by NZ Post, holding that the defendantís domain name was an instrument of deception, if not of fraud. The Court followed English and US authorities to similar effect.

 

8. Decision

For the foregoing reasons, the Panel decides:

(a) that the domain name registered by the Respondent is identical or confusingly similar to the trademark to which the Complainant has rights;

(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(c) the Respondentís domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name "singaporegirl.com" be transferred to the Complainant.

 


 

Hon Sir Ian Barker QC
Panelist

Dated: August 29, 2000