WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital
Case No. D 2000-1260
1. The Parties
Complainant is Alitalia – Linee Aeree Italiane S.p.A., a company being incorporated and existing under the laws of Italy, and having its principal place of business in Rome, Viale Alessandro Marchetti, No. 111, 00148, Italy. The Complainant’s contact details are Viale Alessandro Marchetti 111, Rome, Italy. The Complainant’s authorized representative in this administrative proceeding is Angelica Lodigiani, Esq., Via S. Crescenziano 10, 00199, Rome, Italy.
According to Internic’s and Network Solutions’ Whois database, the Respondent in this administrative proceeding is Colour Digital, a Dutch company located in Turfmarkt 28, The Hague, ZH, 2511 CA, The Netherlands. The Respondent is not represented by counsel and has filed no Response.
2. The Domain Name and Registrar
The domain name at issue is <alitaliacargo.com>. The registrar with which the domain name is registered is: Network Solutions, Inc., 505 Huntmar Park Drive Herndon, VA 20170, USA.
3. Procedural History
The complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail on September 25, 2000 and in gardcopy on September 26, 2000, and complied with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Supplemental Rules"). The appropriate fees were paid by the Complainant.
On September 27, 2000 a Request for Registrar Verification was transmitted to the Registrar. On September 29, 2000 the Registrar confirmed by e-mail to the Center that it had received the Complaint from the Complainant, that the Registrar is the registrar of the domain name <alitaliacargo.com>, that the Respondent is the current registrant of the said domain name, that the Network 4.0 Service Agreement is in effect, and that the said domain name is in "Active" status.
On October 2, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding relating to the <alitaliacargo.com> domain name to the Respondent by Post/Courier (with enclosures), by facsimile (Complaint without attachments) and by e-mail (Complaint without attachments). A copy of said Notification was sent to the authorised representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to Network Solutions Inc., the Registrar of the <alitaliacargo.com> domain name (Complaint without attachments).
Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the Administrative Proceedings had commenced on October 2, 2000 and that the Respondent was required to submit a Response to the Center on or before October 21, 2000.
The Respondent failed to submit a Response and on October 24, 2000 the Center sent a Notification of Respondent Default to the Respondent advising the Respondent that the consequences of said default included inter alia that the Center would proceed to appoint a single member Administrative Panel.
On October 31, 2000 the Center invited Prof. Dr. Thomas Hoeren to act as Administrative Panel in these proceedings and having received a Statement of Acceptance and Declaration of Impartiality from the said Thomas Hoeren the Center proceeded to appoint this Administrative Panel consisting of a single member on November 14, 2000. On the same date, the case file was transferred to the Administrative Panel.
In the view of the Administrative Panel, the proper procedures were followed and this Administrative Panel was properly constituted.
4. Factual Background
Given the Respondent's failure to file a Response in this case, the Administrative Panel accepts as true and accurate, all statements of fact made by the Complainant in its submissions (see: Talk City Inc. v. Robertson, (WIPO Case D 2000-0009, February 24, 2000); Eauto, L.L.C. v. EAuto Parts, (WIPO Case D 2000-0096, April 9, 2000).
The Complainant, Alitalia Linee Aeree S.p.A. (hereinafter Alitalia), is one of the largest airlines of the world, established in 1946 and actually serving more than 66 countries around the world, The Netherlands (the country where the Respondent is located) included. In 1999 it carried more than 25 millions passengers worldwide.
Alitalia owns trademark rights on its own name ALITALIA in several countries around the world, noticeably in the European Union (thus The Netherlands included), due to the Community Trademark ALITALIA (word), registration No. 900829, filed on August 7, 1998 and granted on December 21, 1999 to cover building construction; repair; installation services, in international class 37; transport; packaging and storage of goods; travel arrangement in international class 39, providing of food and drink; temporary accommodation; temporary accommodation reservations in international class 42. True and correct copy of the aforementioned trademark is provided as Annex [C] to the Complaint. Trademark Alitalia enjoys reputation in Italy and all over the world. Indeed, Alitalia is the Italian national airline, operating since 1946 (Alitalia adopted its current name in 1957) in the field of transportation of passengers, goods and mail, on national, international and intercontinental roots. Alitalia links Italy with 60 different countries and has offices in several countries in the five continents. Alitalia is expanding the network of its commercial agreements with other Italian and foreign airlines. In this frame, Alitalia has concluded alliances with Continental Airlines, Air Seyschelles, Canadian Airlines, Japan Airlines, Northwest Airlines and other airlines of nations all over the world.
5. Parties’ Contentions
The Complainant requested this Administrative Panel to issue a decision that the contested domain name be transferred to the Complainant. The Complainant asserts that each of the three conditions in paragraph 4(a) of the Policy are satisfied:
i) The Complainant submitted that the <alitaliacargo.com> domain name is identical or confusingly similar to a trade mark in which the Complainant has rights. It is submitted that the name <alitaliacargo.com> domain name is identical to the Complainant´s trade marks and service marks. It is the Complainant's opinion that ALITALIACARGO is closely similar to, and makes use of, its registered trademark ALITALIA. The distinctive term ALITALIA is a component of the domain name ALITALIACARGO.COM and this should be considered a sufficient condition to establish that the trademark ALITALIA and the domain name ALITALIACARGO.COM are confusingly similar to one another. In addition the domain name ALITALIACARGO.COM is identical to the unregistered trademark ALITALIA CARGO used by Alitalia all over the world to identify its division in charge of transportation of goods. Accordingly, the domain name ALITALIACARGO.COM being a combination of the well-know trademark ALITALIA and the term CARGO, is capable of causing confusion and mistake into consumers, diluting and impairing the distinctive reputation of the Complainant's trademarks and goodwill and considerably harming the Complainant's commercial interest.
(ii) The Complainant submitted that the Respondent should be considered as having no rights or legitimate interests in respect of the <alitaliacargo.com> domain. The Complaiant held among others:
From the Respondent's web site "www.colourdigital.nl" it appears that the Respondent's activity is that of a typing office, namely printing, copying, typing, binding documents and materials. Thus, the Respondent's activity is completely unrelated to the Complainant's one. The Respondent is not a licensee nor is it otherwise permitted to use the Complainant's trademark. The Respondent has not used, nor demonstrated to have made any 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 with a legitimate non-commercial or fair use of the domain name. Indeed, the domain name ALITALIACARGO.COM, resolves to an in-construction web page and not to an active web-site. Furthermore, the domain name is not the legal name of the Respondent, Colour Digital, nor has the Respondent been commonly known by the domain name. Finally, as specified more in detail below, the Respondent's did not even reply to the letter sent by the Complainant.
(iii) The Complainant further submitted that the said <alitaliacargo.com> domain name has been registered and is being used in bad faith. The Complainant believed that the Respondent was aware of Alitalia in light of the specific circumstances surrounding the Complainant's activities in the Netherlands at the time of the registration of the domain name. The Complainant concluded a strategic alliance with the Dutch airlines KLM, on November 27, 1998 (i.e., six months before the registration of the domain name ALITALIACARGO.COM). This alliance was the subject of several articles in international and Dutch media starting from 1997. A copy of a Dutch Web page dating back to December 19, 1997, when talks of the alliance between the Complainant and KLM were officially confirmed, as well as a copy of the announcement of the conclusion of the alliance dated November 28, 1998 are enclosed in the Complaint as Annex [I]. Given the publicity around the deal it is most credible that the Respondent was therefore aware of the existence of the Alitalia airlines. Furthermore, the Complainant's belief is also supported by the fact that among the several domain names registered in the Respondent's name are included domain names referring to other airlines, shipment services, or airline services in general, such as KOREANAIRCARGO.COM, NWACARGO.COM, KLM-EXEL.COM, DUTCHARTS.COM, KLM-ALPS.COM, KLM-CITYHOPPER.COM, TAP-AIR.COM, MARTINAIRCARGO.COM, etc. In the light of the foregoing, the Complainant suspected that either the Respondent had registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name, or it had intention, by using the domain name, to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant instructed its Intellectual Property Counsel to get in contact with the Respondent for arranging the transfer of the domain name ALITALIACARGO.COM. The Complainant, as a gesture of goodwill authorized its Intellectual Property Counsel to state the Complainant's willingness to waive any claim of reimbursement, damages or other relief or any cause of action that it might have had against the Respondent, if the transfer would take place with undue delay. Copy of the letter sent via registered mail on June 27, 2000 and received by the Respondent on July 10, 2000 is provided as Annex [M] to the Complaint. The Respondent did not reply to the letter requesting the transfer of the domain name. Had the domain name been registered in good faith, the Respondent would probably have replied to the letter sent on behalf of the Complainant and explained the alleged legitimate reasons that led it to register ALITALIACARGO.COM.
Finally, the list of domain names incorporating famous trademarks registered by the Respondent indicate - according to the Complainant - the existence of a pattern of conduct which is prima face evidence of bad faith according to Par. 4b (ii) of the Policy (Banca Popolare Friuladria S.p.A. v. Giovanni Zago - Case No. D 2000-0793).
The Respondent has made no submissions.
5. Discussion and Findings
According to Paragraph 4 (a) of the UDRP, the Complainant has to prove that the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The domain name <alitaliacargo.com> includes the terms "Alitalia" and "Cargo". While the term "Cargo" is a generic term referring to the transportation of goods, the term "Alitalia" is protected by registered trademarks. As the complainant has described and proven by copies of the registrations (Annex C), he owns trademark rights on its own name "Alitalia" in the European Union due to the Community Trademark No. 900829, filed on August 7, 1998, in the international classes 37, 39 and 42. The trademark registration include the home country of the respondent, the Netherlands.
As well, there is a likelihood of confusion with the trademark as the term "Alitalia" is part of the domain in question. Although it is not clear for which business the domain name would be used, there is a high danger that users might combine the domain name with the business of the complainant which is well known throughout the world as one of the leading airlines. This danger is not eliminated by the additional word "cargo". As the establishment of a cargo service forms an integral part of the work of an airline, the danger increases further as users identify the domain with the activities of the complainant.
As for Paragraph 4 (a)(ii), the Respondent has not given evidence that he has a legitimate interest or right in respect of the domain name. The Complainant has stated that he has not licensed the trademark rights to the Respondent. Prima facie the Respondent has not been commonly known by the said domain name. In the absence of any response filed or submissions made by the Respondent, there is no evidence that the Respondent makes any legitimate non-commercial or fair use of the said domain name.
The question whether the Respondent has acted in bad faith (Paragraph 4 (a) iii) is however difficult to answer. Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) the following circumstances, in particular but without limitation, if found by the Administrative Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has 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 the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has 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 Complainant's 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.
None of these circumstances can be found in the existing case. In particular the Respondent has not tried to sell the domain to the Complainant. Nothing indicates that he is a competitor or linked with a competitor of the Complainant so that his purpose in the registration could not have been to disrupt the business of a competitor. In addition, it cannot be proven that the Respondent has intentionally attempted to attract internet users to his web site. The Respondent does not use the domain name for building up his own web site. As a matter of fact, the Respondent prevents the Complainant from using the mark in a corresponding trademark. But there is no evidence that the Respondent has engaged in a pattern of such conduct as it has been foreseen in Paragraph 4 (b) (iii).
Nevertheless, the provision of Paragraph 4 (b) only contains a non-exclusive list of circumstances which indicate bad faith. Several WIPO domain name panels have extended the scope of the term "bad faith" (cf. Telstra Corporation Ltd. V. Nuclear Marshmellows, Case no. D2000-0003; Stralfors AB v. PDS AB, Case No. D2000-0112; McNeil Consumer Brands Inc. V. Mirweb Solutions, Case No. D2000-0612). Such an extensive interpretation has however to be regarded as dangerous. The element of bad faith is not part of the trademark law system of most countries. Regularly, the infringement of trademarks and similar rights can be prohibited in cases of wilful and negligent actions; in the case of strict liability, the intention of the infringer is even totally irrelevant. Therefore, the UDRP only deals with a specific sector of trademark infringement, i.e. cases of wilful infringement. Therefore, it is not the task of a WIPO domain name panel to solve all infringement cases; the scope of competence of such a panel is restricted compared to the possibilities of national courts.
In general, the mere registration of a domain name containing elements of a third person´s trademark does not amount to "bad faith" (see Maureen A. Healy v. Andreas Kuhlen, Case No. D2000-0698). As Paragraph 4 (b) (ii) shows, the registration itself can only justify the assumption of "bad faith" if the Respondent is shown to have engaged in a pattern. Similarily, the UDRP rules do not apply where the Respondent refuses to transfer a domain name without having a rights or legitimate interests in them. The Respondent is allowed to refuse the transfer of a domain name and use the name in the absence of a court decision if the Complianant cannot prove that he has registered and used the domain name in bad faith. The increasing tendency to mingle the two elements of Art. 4 (b) (ii) and (iii) – no legimate interest and bad faith – contradicts the wording of this rule and the structure of the UDRP. Art. 4 (a) contains not a two, but a a three step test: Likelihood of confusion, no legitimate interest and bad faith. It is necessary to prove all of these three elements independently. If the scope of "bad faith" is to be extended, the circumstances have thus to be comparable to the situation of a "pattern" or the other situations mentioned in Paragraph 4 (b). As the Panel already stated in detail in the Telstra case mentioned above (Telstra Corporation Ltd. V. Nuclear Marshmellows, sub 7.11), the registration and passive holding of a domain name can amount to bad faith "in respect of the particular facts of a specific case". The Telstra Panel introduced a test which might be used in this case as well. It has to be determined whether it is possible to conceive of any plausible, actual, or contemplated active use of the domain name by the Respondent that would not be illegitimate" (sub 7.12). Similar criteria might be found in recent decisions of European trademark courts (see for instance the English Court of Appeal in the case of British Telecom & Others v. One in a Million  4 All ER 476).
The following considerations demonstrate that there are particular circumstances which amount to bad faith registration and use:
- The Complainant is a well-known airline with a worldwide network of activities. The company can be historically traced back to 1946. The services include the Netherlands (the country where the respondent is located). The company name "Alitalia" is registered in all EU member states as part of a Community Trademark. Therefore, it can be asserted that "Alitalia" is a well-known trademark with a strong reputation, including in the Netherlands where the Respondent has one of his seats.
- The Respondent has his seat in the Netherlands. It can be assumed that he is familiar with the Complainant and his business.
- The Respondent has registered further domain names containing references to airlines and their cargo activitities such as "Koreanaircargo.com" or "KLM-Cityhopper.com" (see Annex L).
- In 1997/1998, the Complainant started to build up an alliance with the Dutch airline KLM. The alliance started officially on November 27, 1998, six months before the registration of the domain name "Alitaliacargo.com." Thus, there is a close relationship in time between the alliance plans and the domain registration which leads to the assumption that the Respondent wanted to take advantage of the merger situation. This situation explains why the Respondent has chosen to register additional domain names including the trademarks of international airlines including KLM. He apparently must have been well aware of the value of the Complainant´s trademark when making the registration.
- The Respondent has provided no evidence whatsoever of any actual or contemplated good faith registration or use by it of the domain name. In particular, there are no indications that the business of the Complainant was subject of any public discussion at the time of registration. Therefore, it is not very probable that the Respondent could have registered the domain for the establishment of a discussion forum or even a virtual fan club (see Julia Fiona Roberts v. Russell Floyd, Case No. D2000-0210).
There are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose. The similarity of the names and all the surrounding circumstances lead to the conclusion that the domain name was produced to enable passing off, was adapted to be used for passing off and, if used, was likely to be fraudulently used.
With specific reference to Paragraphs 4(i) of the Policy and 15 of the Rules this Administrative Panel decides that the Respondent has registered the domain name <alitaliacargo.com> identical or confusingly similar to the Complainant´s trademarks, that the Respondent has no rights or legitimate interest in respect of that domain name and that the Respondent has registered and used that domain name in bad faith. Accordingly, this Administrative Panel decides that said domain name <alitaliacargo.com> should be transferred to the Complainant.
Prof. Dr. Thomas Hoeren
Dated: November 23, 2000