WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Delta Air Transport NV (trading as SN Brussels Airlines) v. Theodule De Souza
Case No. D2003-0372
1. The Parties
The Complainant is Delta Air Transport NV (trading as SN Brussels Airlines) of Zaventem, Belgium, represented by Liedekerke Wolters Waelbroeck Kirkpatrick, of Belgium.
The Respondent is Theodule De Souza of San Ramon, California, United States of America, represented by its attorney, Stephen H. Sturgeon of the law firm, Stephen H. Sturgeon & Associates, PC of Washington, United States of America.
2. The Domain Names and Registrar
This dispute concerns the domain names: < brussels-airliner.com>, <brusselsairline.com> the "Domain Names".
The registrar with whom the Domain Names are registered is Tucows, Inc., Toronto, Canada.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 15, 2003. On the same day the Center transmitted by email to Tucows a request for registrar verification in connection with the Domain Names at issue. Tucows transmitted by email on May 16, 2003, to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 May 21, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was on June 17, 2003. The Response was filed with the Center on June 18, 2003.
The Center appointed Clive L. Elliott, Tony Willoughby and G. Gervaise Davis III as panelists in this matter on July 7, 2003. The Panel finds that it was properly constituted. Each member of 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.
Two extensions of time were sought and obtained by the Panel to enable it to conclude this matter. The decision was forwarded to the Center on August 5, 2003.
4. Factual Background
From 1966 until the beginning of 2002, the Complainant was a Belgian regional airline trading under the name ĎDATí. During these years the Complainant was a privately owned company. During the nineties, Sabena, the former Belgian national carrier, became its only shareholder. Sabena went into bankruptcy in 2001. Several Belgian companies decided to develop a new Belgian national airline and they formed a new company by taking over Sabena. The Complainant, as it then became, changed its name to "SN Brussels Airlines".
The Complainant owns, among other trade marks, Benelux registration number 716.325, registered for the mark SN BRUSSELS AIRLINES for use in classes 16, 39 and 43. This trade mark was originally registered by MTDS on January 31, 2001. MTDS was the publicity company in charge of defining the Complainantís image and publicity strategies. It was used by the Complainant and was thereafter transferred to the Complainant in 2002.
The Respondent does not identify his occupation. However, he appears to have a purported interest in domain names for purposes of expressing certain views.
The Respondent registered the domain name <brussels-airliner.com> with Tucows Inc. on January 1, 2003, and on January 29, 2003, it registered the domain name <brusselsairline.com> with the same registrar.
5. Partiesí Contentions
The Complainant asserts that it makes extensive use of the SN BRUSSELS AIRLINES mark, which it uses on its airplanes, advertising throughout the world, its website, its frequent flyer program, and in its passenger lounges in more than thirty European airports.
It has a website active at "www.flysn.com", but it has also registered and actively uses, among others, the domain names <snbrusselsairlines.com>, <www.brusselsairlines.com>, and <www.brussels-airlines.com> from where the Complainant redirects Internet users to its "www.flysn.com" website.
The Complaint states that a person called Euthyme de Souza, who is a member of the Respondent's family, was a disappointed purchaser of a Sabena airplane ticket. Upon Sabena's bankruptcy the ticket purchased by Euthyme de Souza became worthless. Sabena informed him of this.
On September 12, 2002, Euthyme de Souza claimed a refund for the lost Sabena ticket, threatening that if the reimbursement was not made before a certain date, he would undertake a campaign against the Complainant. On January 20, 2003, the Respondent wrote and confirmed this intention. He furthermore informed the Complainant of the existence of the website "www.brussels-airliner.com". On the only page of this website, an airplane of the Complainant was pictured, together with a derogatory message.
The Complainant states that it sent a formal notice to Euthyme de Souza on February 6, 2003, reminding him that Sabena and SN Brussels Airlines were different corporate entities, that the founders of SN Brussels Airlines and its shareholders are entirely different from these of the former Sabena and that SN Brussels Airlines does not endorse Sabenaís debts or liabilities.
The Respondent then changed the picture of the SN Brussels Airlines airplane to a picture of a Sabena airplane and eventually deactivated his "www.brussels-airliner.com" site.
The Respondent, however, started operating a site on another website address, namely "www.brusselsairline.com". The content of this site, which changes from time to time, is very similar to the previous "www.brussels-airliner.com" site.
On April 14, 2003, the Respondent and Euthyme de Souza sent a letter to the Complainant, informing the Complainant of the new website address and setting an ultimatum to the Complainant threatening to intensify their anti-publicity campaign against SN BRUSSELS AIRLINES if by April 30, 2003, their airline tickets and supplementary costs originated by their actions, or 1800 Ä, were not entirely reimbursed by April 30, 2003.
Furthermore, as of April 25, 2003, the Complainant discovered that if someone tried to send an e-mail to an employee of the Complainant (e-mail addresses that all end with "@brusselsairlines.com") but mistakenly forgot to add the last letter Ďsí of "@brusselsairlines" he/she receives an automatic reply from the Respondent telling the sender of the e-mail to be careful in choosing his airline and inviting him/her to visit the Respondentís website.
It is argued that an Internet user searching for the Complainantís web site may initially encounter the Respondentís web site by mistake either by running the "SN BRUSSELS AIRLINES" mark through a search engine or by making a spelling mistake and entering "brusselsairline.com" as the domain name.
The Complainant notes that if the Respondent genuinely intended to create a forum for disappointed Sabena customers, he could have chosen a domain name indicating this fact (e.g. in using the Sabena trade mark together with a prefix or suffix).
The Respondent claims to be the "victim and the witness of" inappropriate activities of Brussels Airlines and its predecessor. He also claims he has been harmed as a result of the actions of the organization.
The Respondent states he wishes to exercise his rights to freedom of expression, free speech and freedom to criticize in order to publicize and attempt to warn other individuals about the business practices of Brussels Airlines and its predecessor. Accordingly, the Respondent asserts he has established a website which is a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent suggests that the words Brussels and Airlines are generic in nature and should not be protected under the UDRP.
The Respondent says that the Complainant has failed to sustain its burden of proving that the Respondent did not have any legitimate interest in the Domain Names.
The Respondent claims his actions cannot be characterized as consistent with intent for commercial gain to misleadingly divert consumers and that that phrase refers to the kind of confusion that arises in a trade mark infringement context, when a competitor diverts consumers to its site and, potentially, diverts sales.
The Respondent argues that even though some internet users might initially be confused into thinking that because of the use of the mark in the Domain Names, his website is linked to the Complainantís official web site, this is of little concern. First, any such confusion would immediately be dispelled by the Respondentís prominent disclaimer and the link that is displayed to Complainantís official site. Second, and in any event, it is argued that such a low level of confusion is a price worth paying to preserve the free exchange of ideas via the internet.
It is contended that the web site the Respondent operates at the Domain Names is maintained as a genuine criticism site. The goals of the Policy are said to be limited and do not extend to insulting trade mark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain.
The Respondent also goes on to suggest that similarly, the instant case is not a clear case of "cybersquatting" and "cyber piracy". Accordingly, he requests that the Panel not grant the Complainantís request to have the Respondentís Domain Names transferred.
6. Discussion and Findings
The following is the decision of the Majority. Where it refers to "we" it denotes the Majority view. It is followed by panelist G. Gervaise Davis IIIís dissent.
A. Identical or Confusingly Similar
The Complainant has registered and uses SN Brussels Airline as its name. There is only one airline that can sensibly be described as Brussels Airline and that is the Complainant. It also uses the domain names <snbrusselsairlines.com>, <brusselsairlines.com>, and <brussels-airlines.com> from where the Complainant redirects Internet users to its "www.flysn.com" website. We find that the Domain Names are likely to identify the Complainant to some Internet users even though there is no evidence of the number or extent of hits to either the Complainant or the Respondentís site. Even so, we find there is sufficient evidence to support the Complainantís assertions.
We accept that the mark Brussels Airline is descriptive if not highly descriptive, but in the airline industry many airlines have highly descriptive names. Two examples are British Airways, and American Airlines. No doubt they function as trade marks and would provide their proprietors with enforceable rights.
While each of the three limbs of the test needs to be established, each needs to be kept in context. The test under 4(a)(i) should not in our view be interpreted so as to require rights established beyond reasonable doubt. This would constitute an undue obstacle. It would also defeat one of the primary purposes of the Policy if a domain name, otherwise registered in bad faith, could survive in the face of strongly arguable trade mark rights.
The Domain Names serve to indicate the Complainant. If a competitor was to set up under the name Brussels Airline, the Complainant would, as a matter of practicality, be likely to be able to restrain use of the name, whether by way of passing off or unfair competition action. In our view, confusion would be likely and, on that basis, we regard the Domain Names to be confusingly similar to the registered trade mark and arguably the unregistered rights.
We find it difficult to accept the Respondentís argument that the Domain Names are not confusingly similar to the Complainant's trade mark, whether it is the unregistered mark Brussels Airline or the registered mark, given that the Respondent has deliberately used the Domain Names to indicate the Complainant and expecting them to indicate the Complainant to Internet users. Indeed, on the face of it, the Domain Names serve no other useful purpose;
The Respondent is using the Domain Names as unique identifiers and they are thus serving the purpose of trade marks. The Respondent is the last person to assert that the name does not to some material extent identify the Complainant to Internet users - that is why he is using the Domain Names. His campaign would be rather pointless were it otherwise.
The Complainant has put its case at risk by not putting more evidence before the Panel. That is, by way of reliable evidence of actual use to establish unregistered trade mark rights. Having said this, the majority is of the view that just enough evidence exists to make a finding. Even so, we have to say that the Complainant only got home on this ground by a slim margin.
Accordingly, the Majority finds the ground is made out.
B. Rights or Legitimate Interests
The purpose of registering the Domain Names was initially to try and force the Complainant to refund an airline ticket. This then mushroomed into a more general campaign to pressurize the airline to refund other tickets. The motive thus seems to have been to gain a direct financial benefit or at least to embarrass the airline. Even if the parties are not in direct (or indeed any competition), this would, in our view, constitute the type of questionable conduct contemplated by the Policy.
In our view, potential public harm is not necessarily limited to buying products or using a competitor's services by way of some form of direct deception. To our mind, the deception in the present case is likely to arise by luring members of the public to a website which purports to be that of an airline, only to find that it is in fact a website designed to put pressure on that same airline to refund various tickets issued by its predecessor or another airline. There is nothing in the Domain Names themselves to suggest that users will be directed to a criticism site. The Respondentís conduct has the hallmarks of a "bait and switch" strategy and in our view is not legitimate.
Further, it can be argued that the public has the right to not be misled about who they are dealing with. They are entitled to know, upfront, whether they are contacting the airline and not a pressure group of disgruntled former passengers seeking to criticize and embarrass the airline. This is not a legitimate use of the Domain Names.
On this basis the Majority finds that the ground is made out.
C. Registered and Used in Bad Faith
Given our findings above that the Domain Names are confusingly similar to the Complainant's trade mark, (whether of the unregistered mark Brussels Airline or the registered mark) and that the Respondent has deliberately used the Domain Names to suggest to Internet users a link to the Complainant, we are compelled to find that the Domain Names were registered and are being used in bad faith.
Again the Majority finds the ground is made out.
Given certain comments made by panelist G. Gervaise Davis III in his dissent, with which we with great respect differ, the Majority wishes to clarify a few issues.
If the dissent below is taken as indicating that the Majority might be more concerned with trade mark infringement than the Policy, we disagree. Our view is that trade mark rights are, however, the starting point expressly provided for in the Policy. We seem to be in agreement with the learned G. Gervaise Davis III in taking the view that trade mark infringement and abusive registration within the meaning of para 4(a)(iii) of the Policy are two different things. We also concur that the fact that a particular set of facts may constitute trade mark infringement has of itself no bearing on whether it is an abusive registration.
In essence, where we seem to differ is that we take the view that what the Respondent has done is an abuse of the system. In our assessment, if it needs to be accommodated into the express wording of the Policy Ė probably para 4(b) (not a view to which we subscribe - para 4(b) appears to be a non-exhaustive list of abuses), it can be fitted into para 4(b)(iv) of the Policy. The reasons for our conclusion can be found in the Majority decision - the deceit of Internet users was deliberate, the 'free speech' is directed abusively at the wrong party and the Respondent is seeking a direct and, on the face of it questionable, financial benefit.
Finally, we note G. Gervaise Davis IIIís view that an assessment of the Respondentís conduct centres on essentially factual issues and that the Panel has insufficient facts on which to decide this key matter. Again, with respect, we see it slightly differently. In our view, the Respondentís purpose and modus operandi appears to be reasonably clear. Indeed, the Respondent does not shrink from what it is doing. The principal issue, as we see it, is as to any inferences and conclusions we are entitled to reasonably draw, on what we regard as largely undisputed facts.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Majority of the Panel finds for the Complainant and orders that the domain names, <brussels-airliner.com> and <brusselsairline.com> be transferred to the Complainant.
Clive L. Elliott
Dated: August 5, 2003
I respectfully dissent from the decision of the Majority in this case, not because I disagree with the concept that there could be some momentary confusion between the Respondent and the Complainant airline, but because, once again, a WIPO Panel is taking on the role of a trademark court and not following the very specific requirements of the UDRP in ordering a transfer of a domain. I feel that the Majority decision here arrogates to this Panel the power to make legal determinations in a trademark case that properly belongs in the national courts, and makes key findings on significant factual issues that have not been fully presented or considered, as even the Majority acknowledges in its decision.
It is my understanding that the sole purpose of the UDRP was to prevent the abusive commercial registration of trademarks as domain names, and to provide a simple and fair means of stopping this practice by people bent on making money by what was effectively extortionate conduct. Most such abusive registrants registered existing, well known trademarks for the purpose of forcing the trademark owner to purchase the domain name. There is absolutely no evidence of such conduct here.
Furthermore, the parties are not competitors and the use of the domain here is not commercial so that the concern about "bait and switch" tactics is inapposite and improperly used to make this determination, especially since this is a factual issue that we have insufficient facts on which to decide this key matter. See FN22 in Checkpoint Systems, Inc. v. Check Point Software Technologies, Inc., 269 F.3d 270; 2001 U.S. App. LEXIS 22524; 60 U.S.P.Q.2D (BNA) 1609, which explains that.
Other courts appear to have adopted a facts and circumstances approach to evaluating initial interest confusion. Big Star Entm't, Inc. v. Next Big Star, Inc., 105 F. Supp. 2d 185, 211 (S.D.N.Y. 2000) (declining to apply initial interest confusion in the context of an internet case involving non-competitors whose web addresses were not identical); Northland Ins. Cos. v. Blaylock, 115 F. Supp. 2d 1108, 1120 (D.Minn. 2000) ("Initial interest confusion" exists when the defendant stood to materially or financially gain from said initial confusion by trading in on the value of plaintiff 's mark to initially attract customers.").
I continue to be concerned that in a well-meaning but misguided effort to stop what the Majority here calls "trademark infringement," WIPO and other UDRP panels are substituting their judgments for those of properly constituted national courts of law which are the only ones legally and practically equipped to take evidence and to evaluate conflicting factual and legal issues. UDRP panels are simply not designed to handle trademark infringement cases, which are often factually intensive and which may turn on critical issues like freedom of speech, which for example, here differs greatly between the U.S. and Belgium because of the strength of the U.S. Constitution on this issue.
I would respectfully remind the Majority here that the UDRP does not deal with trademark infringement cases and does not use that language except in one single reference to "infringe" which it later defines in a manner that has nothing to do with typical trademark infringements, except for item (iv) noted below. See, UDRP Rule 4(b), which defines the conditions that must exist in order for a Panel to order a transfer:
b. Evidence of Registration and Use in Bad Faith. 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.
The only possible basis for transfer in this case is found in Rule 4(b)(iv) which by its own terms requires an attempt "for commercial gain" to attract the user to "a product or service on the web site." There is no product or service here, only a complaint that the airline in question does not operate fairly because it will not refund tickets from the predecessor airline whose IATA designation "SN" the Complainant here is still using for its own commercial gain. I do not think that complaint is fairly construed as commercial use by any reasonable stretch of the imagination.
In my judgment this is a classic example of the exercise of free speech which Complainant may not like, but which is not properly within the purview of the UDRP since it is not an abusive registration, and more specifically, it is a case as to which Complainant has not provided this Panel with evidence to establish its case. As it is not a commercial use, but criticism and free speech, Complainant should not prevail. See, for example, the Ballysucks case, Bally Total Fitness Holding Corporation, v. Andrew S. Faber, 29 F. Supp. 2d 1161, 1998 U.S. Dist. LEXIS 21459, 50 U.S.P.Q.2D (BNA) 1840, which expressly held that a criticism website was not commercial use of a mark. I recognize that there are some other domain name cases that have disagreed with this decision, but many of them have, themselves, been severely criticized by commentators.
In my judgment there are also a number of other reasons that the Complainant here should not prevail, but since I have already provided an extensive explanation of my primary basis for this Dissent, I will not go on. Suffice it to say, I would not order the transfer of the domains here, and I therefore respectfully dissent from the decision of the Majority.
G. Gervaise Davis III
Dissenting Panelist (NAF)
Dated: August 5, 2003