WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Galileo International, L.L.C. v. Raphael Consulting and Mary B. Nash & Associates, Inc.

Case No. D2001-1068

 

1. The Parties

The Complainant is: Galileo International, L.L.C., a Delaware limited liability company with offices at 9700 West Higgins Road, Suite 400, Rosemont, Illinois 60018, U.S.A. The Complainant is represented by Angelo J. Bufalino, Esq., Vedder, Price, Kaufman & Kammholz, 222 North LaSalle Street, Chicago, Illinois 60601-1003, U.S.A.

The Respondent is: Raphael Consulting, a business located at 12820 Viscaino Road, Los Altos Hills, California 94022, U.S.A. (N.B.: From May 28, 2000, until July 11, 2001, the disputed domain name was registered in the name of Mary B. Nash & Associates, Inc.)

 

2. The Domain Name and Registrar

The domain name in dispute is: <apolloscripts.com>.

The registrar for the disputed domain name is: Network Solutions, Inc. (NSI), 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A.

 

3. Procedural History

This dispute is to be resolved in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Centerís Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Center, the Supplemental Rules).

The Complaint was filed on August 27, 2001, by e-mail, and on August 29, 2001, in hard copy. On August 30, 2001, the Center requested that the registrar NSI check on the registrant for the disputed domain name <apolloscripts.com>. On September 1, 2001, NSI reported to the Center that the registrant was the Respondent Raphael Consulting and that the Policy was in effect. On September 1, 2001, the Center forwarded a copy of the Complaint to Respondent by registered mail and e-mail and this proceeding officially began. The Response was received at the Center by e-mail on October 2, 2001, and in hard copy on October 4, 2001. (Note: On October 4, 2001, the Center received a Response in hard copy from one of the two named Respondents, Mary B. Nash & Associates, Inc., stating it no longer owned the domain name. This information is borne out by the registrar NSIís response. Therefore, the Panel is primarily evaluating the competing claims to the disputed domain name of the Complainant and the current domain name owner/Respondent, ie, Raphael Consulting).

The Administrative Panel submitted a Declaration of Impartiality and Independence on October 16, 2001, and on October 17, 2001, the Center proceeded to appoint the Panel.

The Panel finds the Center has followed the Policy and the Rules in administering this Decision.

This Decision is due by October 31, 2001.

 

4. Factual Background

The Complainant is in the business of providing computerized travel reservation systems and support systems . The Complainant operates a website at <apollo.com>. The Respondent acquired the disputed domain name, <apolloscripts.com> from its business associate Mary B. Nash & Associates, Inc., on July 11, 2001. Mary B. Nash & Associates, Inc., registered the disputed domain name on May 28, 2000. Both the Respondent and Mary B. Nash & Associates used and use the domain name in connection with their business of producing travel reservation software compatible with the Complainantís Apollo computerized reservation system.

On October 5, 2000, the Complainant sent a cease and desist letter to Mary B. Nash & Associates alleging trademark infringement (Complaint Exhibit G) and demanding the transfer of the disputed domain name <apolloscripts.com> to the Complainant. On October 6, 2000, the Mary B. Nash & Associates, Inc., answered the Complainant and among other things agreed to post a disclaimer on its web page clarifying they were in no way connected with the Complainant (Complaint Exhibit H). On November 1, 2000, the Complainant wrote to the Respondent and reiterated that a disclaimer at the disputed domain name website was only a provisional measure and that the disputed domain name had to be transferred to the Complainant (Complaint Exhibit I). The Complainant now seeks transfer of the disputed domain name in this proceeding.

 

5. The Partiesí Contentions (summarized)

Complainantís Contentions:

- Since 1971, Complainant has continuously used the trademark Apollo to identify its system of computer hardware, software, instruction manuals, and on-line travel reservation services.

- Complainant owns trademarks for the Apollo mark both at common law and in the records of the U.S. Patent and Trademark Office.

- Complainantís Galileo trademark is famous as a result of favorable industry acceptance and recognition worldwide.

- Respondent registered and used the disputed domain name which appropriates and incorporates all of Complainantís valuable, famous and protectable Apollo trademark without authorization and appends a generic travel industry term thereto. As a result, the disputed domain name is virtually identical and confusingly similar to Galileoís famous Apollo mark.

- Respondent attempts to trade off the good will of Galileoís famous Apollo trademark by registering and using a confusingly similar domain name.

- Respondent registered the disputed domain name with actual knowledge of rights to the famous Apollo mark.

- Respondent admits active participation in the travel industry since at least the early 1990ís, particularly involvement with travel agency bookings, reservations and software, including specific knowledge of the Apollo system and services.

- Complainant has never at any time authorized Respondent to use or register the disputed domain name, or to use the mark or trade name Apollo, either singularly or in combination with the generic word scripts.

- The Respondent is commonly known in the travel-related industry as "Raphael Consulting". The Respondent has no right or legitimate interest in the disputed domain name <apolloscripts.com>.

- Respondent registered the disputed domain name in bad faith and uses the domain name to attempt to attract for financial gain Internet users to the website associated with the disputed domain name by creating a likelihood of confusion with Galileoís famous Apollo mark as to source, sponsorship, affiliation, or endorsement of the Respondentís website and its products.

- The Complainant and the Respondent both offer software which interfaces with Complainantís Apollo computer system.

- The word "scripts" is generic when used with software compatible with one or more computer systems.

- Based on Complainantís mark registrations, Respondent at least had constructive knowledge that Complainant had rights in the Apollo mark.

- Based on Respondentís admission and extensive experience in the travel industry, Complainant contends Respondent had actual knowledge that Complainant has rights in the famous Apollo mark.

Respondentís Contentions:

- The Policy is narrow in scope and only covers clear cases of cybersquatting and cyberpiracy.

- Throughout the Complaint, Complainant has made numerous unproven, unsupported statements but uniformly fails to establish proof.

- The disputed domain name is no different from <javascripts.com>, which belongs to a company that has no relationship with Sun Microsystems. Like JavaScripts, ApolloScripts is intended to be descriptive of Respondentís products.

- Clearly Respondent was using the disputed domain in connection with its bona fide offering of goods or services prior to any awareness of the dispute. Therefore by definition Respondent has demonstrated a legitimate interest in the domain name in question.

- Respondent placed extensive disclaimers prominently on the website to ensure that no one could believe that this website was sponsored by, affiliated with, or endorsed in any way by Complainant.

- While the term "Scripts" does have a generic sense in the computer and travel industries, "Apollo Scripts" has a much more specific meaning. Complainant provides its customers with tools and training for developing custom software that works uniquely with its Apollo system.

- The registration of a domain name that includes a trademarked term, such as <javascripts.com> and <mercedesparts.com> is perfectly legal and does not necessarily imply any misrepresentation, fraudulent or otherwise.

- The disputed domain name was registered and is being used in good faith to describe third-party scripts and custom scripting services that work with Complainantís Apollo system but that do not compete with any of Complainantís products.

 

6. Discussion and Findings

In order for Complainant to prevail and have the disputed domain <apolloscripts.com> transferred to it, the Complainant must prove the following (the Policy, para 4a(i-iii):

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

- the domain name was registered and is being used in bad faith

Identical or Confusingly Similar

The Complainant has exhibited exemplary copies of its Apollo mark registrations. To mention a few: service mark registration no. 1,268,761 dated February 28, 1984, on the principal register of the United States Patent and Trademark Office international class no. 39 for travel reservation and ticketing services for travel agents; there is also mark registration no. 1,907,630 dated July 25, 1995, on the United States principal register in international classes 39, 41, and 42 for, inter alia, providing access to a computer database in the field of travel information services, and providing travel reservations and bookings for temporary lodging (Complaint Exhibit D). The Complainant also has demonstrated it has been using the Apollo mark for several decades in connection with computerized travel reservations (Complaint Exhibit E).

The disputed domain name, <apolloscripts.com>, has added the word "scripts" to Apollo, a mark in which Complainant has amply demonstrated rights. Interestingly, both the Complainant and the Respondent stated that scripts, when used in connection with computer programs and systems, is generic and means software or program (e.g. Complaint at pp. 14 and 15; and the Response at p. 11). From this, the Respondent attempts to construct an argument that the entire disputed domain name is merely descriptive. The Panel disagrees.

The Panel agrees with the Complainant and the Respondent that scripts when used to refer to a computer program is generic. However, the Panel further agrees with the Complainant that the disputed domain name does not constitute either a new mark or a generic or a merely descriptive name. The disputed domain name, <apolloscripts.com>, is instead composed of the Complainantís well-known mark and a generic word describing the service and goods the Respondent as well as the Complainant are offering using the same mark.

In conclusion, the Panel finds the Complainant has met its burden of proof that the disputed domain name is confusingly similar to a service mark in which the Complainant has rights. (Cf. Yahoo! Inc. v. Jorge O. Kirovsky, WIPO Case No. D2000-0428, August 9, 2000, where the Panel found the disputed domain name <yahooemail.net> confusingly similar to the Yahoo! mark because Ďe-mailí was a generic term referring to a service the public would find Yahoo likely to offer, i.e., bridging the gap as the Complainant has termed it. In a similar vein, see Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022, March 3, 2000, involving the domain names <christiandiorcosmetics.com> and <christiandiorfashions.com>)

Legitimate Rights or Interests

The Respondent contends it has rights in the disputed domain name under the Policy at para 4a(ii):

"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."

The Respondent uses the disputed domain name to further its software business and to promote its ApolloScripts software in particular. As both parties agree, this softwareís purpose is to interface with the Complainantís widely used and known Apollo travel reservation system. Under the premises, the Panel does not believe the Respondent was in bona fide when offering its software using the disputed domain name. Instead, the Panel finds that even though the Respondent was offering its goods and services before being notified of this domain name proceeding, the Respondent was doing so in bad faith and was well aware it was infringing the Complainantís trademark. This is not a legitimate right or interest under the Policy and no other legitimate rights or interests are apparent to the Panel from the facts of this Case.

Registered and Used in Bad Faith

The Respondent claims not to have been in bad faith when it registered and began using the disputed domain name because it believed the domain name was merely descriptive of the Respondentís products without any association with the Complainant. The Complainant on the other hand alleges the Respondent registered and was using the disputed domain name in bad faith in violation of the Policy at 4b(iv). As the Complainant contends, the Panel finds the Respondentís years of work in the travel reservation industry make it a virtual certainty that the Respondent had actual knowledge of the Complainant and its Apollo reservation systems when the Respondent registered the disputed domain name <apolloscripts.com> on July11, 2001.

The Panel finds the Respondentís interest in registering and using the disputed domain name is to augment the market for its software ApolloScripts. The Respondent doubtless hopes the public transiting the disputed domain name website will associate the Respondentís product with the Complainant and its widely known and used Apollo computer travel reservation systems. This is a clear violation of the Policy at 4b(iv):

"[b]y using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or a product or service on your website or location."

 

7. Decision

The Panel has found the Respondent registered a domain name confusingly similar to the Complainantís well-known service mark. The Panel next found the Respondent did not have legitimate rights or interests in the disputed domain name because its business use was not bona fide. The Panel lastly found the Respondent registered and was using the disputed domain name in bad faith; the Respondent hoped the Complainantís Apollo mark would attract Internet users for the Respondentís commercial gain.

Hence, per ICANN Policy para 4(i) and Rule 15, the Panel orders that the disputed domain name, <apolloscripts.com> be transferred from the Respondent, Raphael Consulting, to the Complainant, Galileo International, L.L.C.

 


 

Dennis A. Foster
Sole Panelist

Dated: November 1, 2001