WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Croatia Airlines d.d. v. Modern Empire Internet Ltd.
Case No. D2003-0455
1. The Parties
The Complainant is Croatia Airlines d.d. of Zagreb, Croatia, represented by Hrvoje Miladin of Croatia.
The Respondent is Modern Empire Internet Ltd. of Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name <croatiaairlines.com> is registered with NamesDirect.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 13, 2003. On June 16, 2003, the Center transmitted by email to NamesDirect.com a request for registrar verification in connection with the domain name at issue. On June 16, 2003, NamesDirect.com transmitted by email 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 24, 2003. The Center verified that the Complaint together with the amendment to 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 June 25, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on July 17, 2003.
The Center appointed Hub J. Harmeling as the sole panelist in this matter on August 6, 2003. The Panel finds that it was properly constituted. 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.
4. Factual Background
Given the absence of a response, the following facts are undisputed:
The Complainant, Croatia Airlines d.d., is the Croatian national air carrier with ten years experience in the air carriage business and has been a member of the International Air Transport Association since 1992. The company has been registered in the Commercial court register of Zagreb, Croatia, since 1989 and has its principal place of business in Zagreb.
The Complainant is the owner of the trademark "CROATIA AIRLINES" for classes 8 (knives, forks and spoons), 16 (paper, cardboard, printed products) and 21 (flatware and cutlery not of precious metal). Complainant has also registered the service mark "CROATIA AIRLINES" with the State Intellectual Property Office in Croatia for classes 35 (advertising and marketing, business management) 39 (air transportation) and 42 (tourism) of the International Classification of Goods and Services.
The only information available about the Respondent Modern Empire Internet Ltd. is that this company is based in Hong Kong. Respondentís website, which can be accessed at "www.croatiaairlines.com" offers various goods and services including airline tickets.
The disputed domain name has previously been registered and used by the Complainant, but this registration expired. The Complainant points out this was not its intention. On May 12, 2003, the Respondent registered the disputed domain name.
5. Partiesí Contentions
The Complainant relies on the above factual background and contends the following:
• Complainant is the Croatian national air carrier operating for ten years and owner of both the trade and service mark "CROATIA AIRLINES". The disputed domain name <croatiaairlines.com> is identical to Complainantís registered marks and hence constitutes a ground for confusion amongst (potential) customers.
• The Respondent has no rights or legitimate interests in respect of the disputed domain name since Respondent knowingly registered the disputed domain violating Complainantís rights as a legitimate owner of the trade and service mark "CROATIA AIRLINES".
• The Respondent has registered and is using the disputed domain name in bad faith as it must have known or at least should have known that the disputed domain name was intended to be used by Complainant, which is the airline company known by this name. This is supported by the fact that Respondent is involved in the sale of airline tickets itself and must have known about Complainantís business activities and scope of services. By using this domain name the Respondent tries to attract Internet users to Respondentís website or other online location, by creating a likelihood of confusion with Complainantís trade and service mark, with intent for commercial gain. The deliberate deception of consumers tarnishes Complainantís trade and service mark.
Based on the above the Complainant contends that the three elements of the Paragraph 4(a) of the Policy have been met and requests the transfer of the disputed domain name <croatiaairlines.com>.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
The Panel notes that the Respondent has not filed a response. However, the Panel finds that this does not mean that the remedies requested should automatically be awarded. The Panel will have to establish whether the Complainantís prima facie case meets the requirements of paragraph 4 of the Policy (Creative Hairdressers, Inc. v. Dynamic Progressive Technologies, Inc., NAF Case No. FA00114772. Also: VeriSign Inc. v. VeneSign C.A., WIPO Case No. D2000-0303).
Paragraph 4(a) of the ICANN Policy requires the Complainant to prove each of the following elements in order to obtain relief.
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
These elements will be examined in turn below.
A. Identical or Confusingly Similar
The only difference between the disputed domain name <croatiaairlines.com> and Complainantís trade and service mark "CROATIA AIRLINES" lies in the addition of ".com". The Panel points out that it is generally accepted that the addition of ".com" does not take away the identicality or confusing similarity. See amongst others: VAT Holdings v. Vat.com, WIPO Case No. D2000-0607; Western Bonded Products dba Flex Foam v. Webmaster, Case No. FA0095286.
The Panel therefore concludes that the disputed domain name is confusingly similar to Complainantís "CROATIA AIRLINES" trade and service mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that can be brought forward by the Respondent in order to demonstrate its rights or legitimate interests. Such circumstances can be:
• (demonstrable preparations to) use the domain name in connection with a bona fide offering of goods or services prior to the dispute;
• an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or
• legitimate non-commercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.
The Panel notes that Complainant bears the "general burden of proof" under paragraph 4(a)(ii) of the Policy, which burden shifts to the Respondent once Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests. See: Neusiedler Aktiengesellschaft v. Kulkarni, WIPO Case No. D2000-1769; see also Dow Jones & Company and Dow Jones LP v. The Hephzibah Intro-Net Project Limited, WIPO Case No. D2000-0704.
Since it is difficult to prove a negative (i.e. that Respondent lacks any rights or legitimate interests in the mark) Ė especially where the Respondent, rather than the Complainant, would be best placed to have specific knowledge of such rights or interests Ė and since Paragraph 4(c) describes how a Respondent can demonstrate rights and legitimate interests, a Complainantís burden of proof on this element is light (See e.g.: De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005 <deagostini.tv>). Hence, Complainant must make at least a prima facie showing that Respondent has no rights or legitimate interests in the mark. After Complainant has met its initial burden of proof, if Respondent fails to submit a response Complainant will be deemed to have satisfied Paragraph 4 (a) ii of the Policy.
In this case the Panel finds that Complainant has indeed made a prima facie showing that Respondent does not have rights or legitimate interests in the domain name within the meaning of Paragraph 4(a) of the Policy.
This finding is based on the following, non-disputed, circumstances brought forward by Complainant.
• Complainant has no relationship whatsoever with Respondent and has never authorized Respondent to use the domain name <croatiaairlines.com> or any other domain name.
• It can be assumed that Complainantís trade and service mark are known, as Complainant is the Croatian national air carrier and has been in the business for a considerable number of years.
• There is no indication in the file that Respondent is known under the disputed domain name.
• Use of a domain name that is identical or confusingly similar to a trademark that applies to goods sold by a Respondent is not a bona fide use if the domain name serves as a "bait" to attract customers to Respondentís website, rather than merely as a descriptor of the Respondentís products (see e.g. Adobe Systems Incorporated v. Domains OZ, WIPO Case No D2000-0057, <adobeacrobat.com> and <acrobatreader.com>).
• The disputed domain name is primarily descriptive of Complainantís services as it incorporates Complainantís trade and service mark. The Panel finds that the fact that the domain name <croatiaairlines.com> directs to a site through which among others airline tickets can be purchased, does not mean that the domain name is descriptive of Respondentís products. This is especially so as the file mentions that Respondentís website offers other products and services as well (see e.g. Koppers Chocolate Specialty Co. Inc. v. Seymour Leonard, WIPO Case No D2001-0822, <kopperschocolates.com>). Hence, Respondentís use of the disputed domain name appears to be merely intended to divert (potential) customers to Respondentís website and cannot be considered a bona fide offering of goods and services.
Given these circumstances the Panel finds that Paragraph 4(a)(ii) of the Policy has prima facie been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. It states among others that sufficient to support a finding of bad faith is the circumstance that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the website or location or of a product or service on the website or location. See also G.D. Searle & Co. v. Celebrex Drugstore, NAF Case No. FA00123933.
The Panel is of the opinion that Respondent must have been aware of Complainantís trademark rights at the time of registration of the disputed domain name, the more since Respondent appears to have developed activities in the same field as Complainant.
Accordingly, the Panel considers it prima facie established, in the absence of proof otherwise, that Respondent has in fact knowingly incorporated Complainantís trade and service mark to attract Internet users by creating a likelihood of confusion with Complainantís trademark as to the source, sponsorship, affiliation or endorsement of Respondentís website with the intent of commercial gain. Moreover, the fact that Respondent also sells airline tickets and is thus likely to benefit of diverting (potential) customers of Complainant to its own website supports the Panel in this opinion.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <croatiaairlines.com> be transferred to the Complainant.
Hub J. Harmeling
Dated: August 21, 2003