WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Singapore Airlines Limited v. domain admin/DNVestment
Case No. D2004-0418
1. The Parties
The Complainant is Singapore Airlines Limited of Singapore, represented by Sheppard, Mullin, Richter & Hampton LLP, Washington D.C., United States of America (“Singapore Airlines” or “Complainant”).
The Respondent is domain admin/DNVestment of Fremont, California, United States of America (“DNV” or “Respondent”).
2. The Domain Name and Registrar
The disputed domain name <krisflyernewsonline.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2004. On June 9, 2004, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On June 10, 2004, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, and providing the details for the administrative, billing, and technical contacts. Since the Registrar had not received a copy of the Complaint, the Complainant filed an amendment to the Complaint on June 10, 2004. 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 11, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2004.
It is to be noted that the Complaint has been notified to the Respondent in electronic form by e-mail to two e-mail addresses, and by postal mail according to paragraph 2(a) of the Rules. None of the e-mails reached the Respondent. Further, the postal mail was returned with the mention “wrong address”. Despite a minor typographical error (DNY instead of DNV), which does not alter the notification requirement, the Panel considers that the WIPO Center has complied with the requirements of Paragraph 2(a) of the Rules, i.e. “to employ reasonably available means calculated to achieve actual notice to Respondent”. Incidentally, it must be noted that subsequent e-mail notifications have been sent to the Respondent, in particular the Notification of Respondent Default, which indicates that : “The Administrative Panel will decide in its sole discretion whether to consider your Response (if submitted later) in deciding the case”. Anyhow, the Respondent did not make any response nor communicate any messages at any time.
The Center appointed Christian Pirker as the sole panelist in this matter on July 9, 2004. 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.
After reading the Complaint, the Panel noted that the documents in relation to the previous ownership of the disputed domain name were not attached to the Complaint nor evidence about the content of the current website and that there was no Mutual Jurisdiction in the proceeding as required by paragraph 3(xiii) of the Rules. Thus, the Panel decided to issue an Administrative Panel Procedural Order requiring the Complainant to produce this evidence and amendment. The order, issued on July 19, 2004, fixed a 7-day deadline for the Complainant to comply with the order. The Panel further extended the deadline to forward its decision until August 2, 2004. On July 23, 2004, the Complainant submitted the requested evidence and amendment.
4. Factual Background
a. The Trademark
The Complaint is based on the Complainant’s alleged ownership of rights in the mark KRISFLYER. The Complainant contends that this mark is either identical or confusingly similar to the domain name. The Complainant, the well-known international air carrier Singapore Airlines, uses the KRYSFLYER mark for frequent flyer/loyalty marketing program and related goods and services. The Complainant alleges that it began using the KRISFLYER mark in 1999.
The Complainant owns registrations in numerous jurisdictions for the mark KRISFLYER. The Complainant has provided the Panel with registration certificates for a number of these marks, including U.S. Trademark Registration No. 2,347,164 (class 39).
b. The Disputed domain name
The Complainant owned the disputed domain name until December 2003. The domain name was used for its newsletters in relation to the frequent flyer/loyalty marketing program named Krisflyer. The Complainant did not renew the domain name. On March 9, 2004, the Respondent registered the domain name. Although the disputed domain name “krisflyernewsonline.com” does not currently revert to an active website, Complainant alleges that it was used for a website containing pornographic material in the period from March 12, 2004, to the filing of the Complaint.
5. Parties’ Contentions
a. The Complaint
The Complainant alleges that it owns numerous registrations of the KRISFLYER mark.
The Complainant also alleges that it registered and used the disputed domain name <krisflyernewsonline.com> from January 2002 to December 2003, for a website dedicated to the airline’s online Krisflyer Newsletter. As per December 2003, this service has migrated to the main Singapore Airlines website, and the disputed domain name has not been renewed.
The Complainant further alleges that the Respondent registered the disputed domain name on or about March 9, 2004, and started using it for a pornographic website.
Finally, the Complainant alleges that it has received numerous complaints from Internet users regarding the fact that a website containing the KRISFLYER mark <krisflyernewsonline.com> had a pornographic content. The Complainant specifies that it has no connection whatsoever with the Respondent.
Accordingly, the Complainant contends that the Respondent has registered a domain name that is confusingly similar to the trademarks registered and used by it, that the Respondent has no rights or legitimate interests in the domain name at issue, and that the Respondent has registered this domain name in bad faith.
b. The Response
As noted above, the Respondent is in default pursuant to Paragraph 5(e) and 14 of the Rules, and Paragraph 7(c) of the Supplemental Rules, as no Response was submitted in due time.
It is further noted that the Respondent did not give any response nor communicated any message at any time during the present proceedings.
Under Paragraphs 5(e) and 14(a) of the Rules, the effect of a default by the Respondent is that the Panel shall proceed to a decision on the Complaint. Under Paragraph 14(b), the Panel is empowered to draw such inferences from Respondent’s default as it considers appropriate under the circumstances.
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”.
Paragraph 4(a) of the Policy states that the Complainant must prove that each of the three following elements are present:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant have rights;
(ii) that the Respondent has no rights nor legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The KRISFLYER trademark is registered in numerous countries, among others with the US Patent and Trade Mark Office, class 39, for “transportation services, namely airline passengers services in the nature of an award program for frequent air travelers.”
The “Krisflyer” name in its entirety is included in the disputed domain name. Moreover, the adjunction of the term “newsonline” to the name “Krisflyer” in the domain name does not diminish the confusing similarity between the domain name and the KRISFLYER Trademark, since the distinctive part of the disputed domain name is the term Krisflyer and the term “newsonline” is a descriptive term. Domain names that combine a descriptive term with another’s trademark have been held to be confusingly similar to the trademark. See, e.g., AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; Scholastic Inc. v. 366 Publications, WIPO Case No. D2000-1627.
It further appears to the Panel that adding the term “newsonline” to the mark increases the likelihood of confusion.
In view of the above, the Panel holds that the domain name is confusingly similar to the Complainant’s KRISFLYER trademark.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy a Respondent can establish its rights or legitimate interests in its Domain Name if it shows the presence of any of the following circumstances:
(i) before any notice to you [Respondent] 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; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trade mark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It is for the Complainant to demonstrate that this condition is met prima facie. Provided that the Complainant is successful in establishing such prima facie condition, it is for the Respondent to answer thereon. Accordingly, the main burden of proof is on the Respondent.
The Complainant alleges that the Respondent has no connection whatsoever with it and that the Respondent has no right or legitimate interest in the domain name.
Taking into consideration the fact that this condition consists of furnishing evidence of the non-existence of a material fact, the Panel considers that the Complainant has fulfilled its obligations under this paragraph.
As stated above, the Respondent failed to respond to the Complaint. The Panel will therefore draw such inferences as it considers appropriate under the circumstances (paragraphs 5(e) and 14(a) of the Rules).
Since the Respondent has not challenged the Complainant’s contention, the Panel finds it credible.
Moreover, there is no evidence in the file that the Respondent has any right or legitimate interest in the domain name.
Accordingly, the Panel considers that the Respondent does not have any right or legitimate interest in the domain name.
C. Registered and Used in Bad Faith
The third element to be established by the Complainant is that the Domain Name has been registered and is being used in bad faith.
Paragraph 4(b) states the following four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the Domain Name.
(i) circumstances indicating that you [Respondent] have registered or you [Respondent] 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 [Respondent] 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 [Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, you [Respondent] 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 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 your location.”
The Panel notes that some panelists in default cases have accepted allegations as true without supporting evidence particularly under Paragraphs 4(a)(ii) and 4(a)(iii) of the Policy, regarding the factors that make out illegitimacy of a respondent’s use or the presence or absence of bad faith, e.g., Luis Cobos v. West, North (Nick Handle: JNMTOKTCQD), WIPO Case No. D2004-0182; Microsoft Corporation v. Andrey Tumakov, WIPO Case No. D2002-1039; Plymouth State College v. Domains, Best Domains, WIPO Case No. D2002-0939, either as a tacit admission by the Respondent or as within a Panel’s authority under Rule 14(b)
For this reason only, the Complainant’s allegations that the disputed domain name has been registered and used in bad faith can be accepted as true. That being said, the Panel further holds the following:
The Complainant’s trademark is distinctive and the domain name includes the trademark. Moreover, the Complainant was using this domain name until December 2003. In the light of these circumstances, the Panel is convinced that the choice of the domain name by the Respondent could hardly be a coincidence and therefore that the domain name has been registered in bad faith.
The domain name must not only be registered in bad faith, but it must also be used in bad faith (e.g. World wrestling Federation Entertainment, Inc. v. Michael Bosman WIPO Case No. D1999-0001).
The Complainant alleges that the Respondent uses the domain name for a pornographic website. Even if the file does not contain a screen capture and that the domain name is currently inactive, the Panel considers that the evidence submitted by Complainant following the Panel’s Procedural Order attests the former pornographic use of the domain name.
In numerous cases, it has been held that, in the absence of evidence to the contrary, “the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the domain name was registered and is being used in bad faith”. Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022; Caledonia Motor Group Limited v. Amizon, WIPO Case No. D2001-0860.
Thus, the Panel is convinced that the domain name merely serves the purpose only to intentionally mislead and divert customers seeking information related to the Krisflyer program on the Respondent’s site. As a result, the Panel finds that bad faith registration as required by paragraph 4(a)(iii) within the meaning of paragraph 4(b)(iv) is established (see also Benetton Group SpA v. Domain for Sale, WIPO Case No. D2001-1498 - <benettonsportsystem.com>; Microsoft Corporation v. Phayze Inc., WIPO Case No. D2003-0750 - <hackingxbox.com>).
This being said, even if there had been no use, the inactivity of the Respondent’s domain name at issue would not necessarily exclude this element. A passive holding of a domain name may satisfy the requirement of paragraph 4(a)(iii) that the domain name is being used in bad faith, when considered in conjunction with other circumstances (Advanced Comfort Inc. v. Frank Grillo, WIPO Case No. D2002-0762 - <abeds.com>; Prada S.A. v. Mark O‘Flynn, WIPO Case No. D2001-0368 - <pradaboutique.com>; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 - <telstra.org>).
In summary, the Panel finds that the circumstances in this case lead to the a conclusion of bad faith use for the following reasons:
- The choice of the domain name by the Respondent could hardly be a coincidence;
- The disputed domain name led customers or potential customer of the Krisflyer program to believe that they will find, on the Respondent’s Internet website, updated information on Complainant’s Krisflyer program.
- The Respondent’s former pornographic use of the domain name had no relation to the Complainant’s activity except for misleading and diverting potential customers of the Complainant to the Respondent’s former website.
- The Respondent’s former pornographic use of the domain name tarnishes the Complainant’s trademarks and harms its reputation.
- The Respondent has not provided any evidence of any actual or contemplated good faith use of the domain.
- It seems that the Respondent provided false contact details; it appears that the postal-mail address seems to be incorrect since the documents sent to the Respondent were returned with the mention “wrong address”;
- Finally, the Respondent did not actively participate in the proceedings.
Consequently, the Panel holds that both elements of paragraph 4(a)(iii) of the Policy have been met. The Panel thus concludes that the Complainant has established that the Respondent registered and uses the disputed domain name in bad faith.
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, <krisflyernewsonline.com> be transferred to the Complainant
Dated: August 2, 2004