WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sydney Airport Corporation Limited v. John Crilly
Case No. D2005-0989
1. The Parties
The Complainant is Sydney Airport Corporation Limited, Mascot, New South Wales, Australia, represented by Mallesons Stephen Jaques, Australia.
The Respondent is John Crilly, P.O. Box 1967, Melbourne, Victoria, Australia, unrepresented.
2. The Domain Name and Registrar
The disputed domain name <sydneyairports.com>is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2005. On September 15, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On September 15, 2005, Go Daddy Software 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 and technical contact. In response to a notification by the Center that the Complaint was administratively deficient in that it was not directed against the right Respondent as shown by the verification response, the Complainant filed an amendment to the Complaint on October 5, 2005, correctly specifying the Respondent .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 October 5, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 25, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2005.
The Center appointed The Honourable Neil Anthony Brown QC as the Sole Panelist in this matter on November 16, 2005. 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
The Complainant is the owner and operator of Kingsford Smith Airport, known nationally and internationally as Sydney Airport and has been so since 1998 when the airport was privatised.
The Complainant is the owner of the Australian registered trademark number 782285 in the words ‘Sydney Airport’ together with a stylized image. It has also registered at least 8 business names incorporating the words ‘Sydney Airport’ and a further two including the words ‘Sydney’ and ‘Airport’. It has also registered the domain names <sydneyairport.com>, <sydneyairport.info>, <sydneyairport.net>, <sydneyairport.org> <sydneyairport.com.au> and several other related domain names.
The Respondent or his predecessor registered the domain name<sydneyairports.com> on April 12, 2005.
5. Parties’ Contentions
The Complainant alleges that the contentious domain name <sydneyairports.com> should no longer be registered with the Respondent but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 the Policy, the domain name is identical or confusingly similar to the Complainant’s registered and common law trademarks, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant maintains that the domain name <sydneyairports.com> is confusingly similar to the trademark SYDNEY AIRPORT. It points to the obvious similarity between the two expressions and the likelihood of confusion between them. It also maintains that the name SYDNEY AIRPORT is famous as it has become and is now, one of the most prominent airports in the world. Accordingly, it argues, this must have been the reason the Respondent or his predecessors chose the name for their domain and that it was a deliberate attempt to trade off the Complainant’s trademark and its fame.
The Complainant then contends, to establish the second element, that it is simply a matter of fact that the Respondent has no rights or interests in the domain name, because he does not conduct a business under that name, is not commonly known by it and does not use it in connection with a bona fide offering of goods and services or in any way legitimately.
Finally, the Complainant alleges that the domain name was registered and is being used in bad faith. It contends that this is so because the Respondent chose the name, knowing of the reputation of Sydney Airport, but then tried to hide behind the ‘privacy service’ of Domains by Proxy Inc, which was apparently the original registrant of the domain name. It is also contended that the domain name has been used to divert traffic to other sites, from which the inference may be drawn that he is doing this to ensnare potential customers for those sites for commercial gain to himself.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
It is appropriate therefore to note that the fact that the Respondent has not made a Response to the Complaint does not avoid the necessity of examining the issues and of doing so in the light of the evidence. In fact, Paragraph 4 of the Policy expressly provides that in administrative proceedings ‘ …the complainant bears the onus of proof’ and it follows that, as the proceeding is a civil one, the standard of proof must be the balance of probabilities. The onus of proof clearly remains on the Complainant even where, as in the present case, the Respondent has not made a Response or put in a submission. That principle has been enunciated on many occasions by UDRP panels.
The Complainant must therefore establish all three of the elements specified in Paragraph 4(a) of the Policy on the balance of probabilities before an order can be made to transfer the domain name.
However, in the course of deciding whether that onus has been discharged, it is possible to draw inferences both from the evidence that has been submitted and, in appropriate cases, from silence. Indeed, Paragraph 14 of the Rules specifically provides that if a Party does not comply with its obligations, the Panel is still required to proceed to a decision, but it is also required to draw such inferences ‘as it considers appropriate’ from the non-compliance.
That being so, the Panel will now proceed to enquire if the Complainant has discharged its onus to prove each of the three elements specified in paragraph 4(a) of the Policy.
Those three elements, all of which must be proved, are:
A. That the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
B. That the Respondent has no rights or legitimate interests in respect of the domain name; and
C. That the domain name has been registered and is being used in bad faith.
The Panel will deal with each of these requirements in turn.
A. Identical or Confusingly Similar
The Panel finds that the domain name <sydneyairports.com> is confusingly similar to the Complainant’s registered trademark number 782285 in the name ‘Sydney Airport’.
That is so because, first, the substance of the domain name and the substance of the trademark are the same. It is true that the trademark has had the letter ‘s’ added to it to convert the singular ‘Sydney Airport’ into the plural ‘sydneyairports’, but the substance of the words remains the same and it has long been held that minor additions of this sort cannot detract from what is an otherwise confusingly similarity.
Secondly, the test of confusing similarity is how the objective bystander sees and interprets the two expressions. Applying that test, the fact that the domain name incorporates a plural does not necessarily invoke the notion of several airports in Sydney as distinct from the main Sydney airport, Kingsford Smith, so as to distinguish it from the trademark. The lingua strada of Sydney often uses a plural, as in the popular description of Sydney Markets. Thus, in Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems, WIPO Case No. D2001-0932, where the cases on this issue are discussed, the panel concluded that the common law trademark owned by the Complainant was in the expression Sydney Markets.
The Panel also finds that the domain name is confusingly similar to the Complainant’s unregistered common law trademark in ‘Sydney Airport’, as the Complainant is the owner and operator of Kingsford Smith Airport in Sydney which is widely known, nationally and internationally, as Sydney Airport.
In this regard, the Overview of WIPO Panel Views on Selected UDRP Questions1 makes the point that geographical terms ‘… can be protected under the UDRP, if the complainant has shown that it has rights in the term and that the term is being used as a trademark…’, citing decisions to that effect including Aberdeen Airport Limited v. Mr. H. Hashimi WIPO Case No. D2004-0071 (<aberdeenairport.com>), relied on by the Complainant.
The Complainant has made out a convincing case, all of which is documented and based on evidence of the history of the airport, the extent of its business operations, its ownership of a series of business name and domain names in the name Sydney Airport, its use of that name in its trade promotions and other activities and also its substantial reputation in the name, that it has clearly acquired a common law trademark in the name ‘Sydney Airport’ and that the term is being used as such.
This case is therefore directly analogous to the Sydney Markets Case (supra) where the Panel observed:
‘This dispute is more akin to prior cases involving domain names that comprise a geographical name followed by a generic word, such as <oshawacenter.com>, <manchesterairport.com> or <wembleystadium.net>. In these cases, even though the contested domain name represented the name of something that existed in the real world (a shopping centre, an airport or a building), what was important was whether or not the Complainant had properly demonstrated that it had trademark rights.’
Likewise in the present case, the Complainant has acquired and built on the reputation of a famous enterprise that was established before the privatization of the airport and has continued to use the name in its promotions and business dealings .The only conclusion open on the evidence is that it has attracted and now owns the common law trademark in the name ‘Sydney Airport’.
For the reasons given above the domain name is confusingly similar to the common law trademark as well as to the registered trademark.
In both cases it should also be noted that the addition in the domain name of the top level domain suffix ‘.com’ does not negate confusing similarity.
The Complainant has therefore made out the first element that it must establish.
B. Rights or Legitimate Interests
The Panel’s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when the registrant is in default and does not make a Response or any other form of submission. The Respondent in the present case was given notice that he had until October 25, 2005 to send in his response, that he would be in default if he did not do so and that, by virtue of Paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.
As the Respondent is in default, the Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, draws the inference that the Respondent has no rights or legitimate interests in the domain name. It is appropriate to draw that inference because, first, if the Respondent had any such rights or interests, it was a simple matter to say what they were. Moreover, the Respondent has clearly appropriated the Complainant’s iconic name without permission, giving rise to the prima facie assumption that he did so for an illegitimate purpose. If there were a more innocent or legitimate explanation, the Respondent could have given it, but this he has failed to do.
In the absence of such an explanation the Panel is entitled to draw inferences adverse to the Respondent’s interests on that issue and to assume that ‘any evidence of the Respondent would not have been in his favour’: Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273.
Furthermore, the Respondent had the opportunity to bring himself within paragraph 4 (c) of the Policy which sets out several criteria, any one of which, if proved, ‘is to be taken to demonstrate’ the registrant’s rights or legitimate interests in the domain name. However, the Respondent has not endeavoured to establish even one of the criteria set out in Paragraph 4(c), giving rise to the inevitable inference that he could not do so by credible evidence.
All of these facts support the conclusion that the Respondent has no rights or legitimate interests in the domain name.
Moreover, a study of the website to which the contentious domain name resolves shows that it would be impossible for the Respondent to show that he had any right or legitimate interest in the domain name. First, it cannot be bona fide or legitimate in any sense to use a domain name as the basis for a deception and yet that it clearly the use that the Respondent is making of the domain name. That is so because he is not using it for its avowed purpose, namely to provide information about the airport in Sydney or even about other any airports in Sydney. The website contains nothing about Kingsford Smith Airport, but neither does it contain anything about the other airports in Sydney. The use of the domain name is therefore the foundation of a deception.
Further, the opening page of the website reveals an array of links to travel agents, cheap flights and an extensive gallery of the usual blandishments ranging from dating services and cosmetic surgery to digital cameras and used cars. The only omission from these services is information about Sydney airports themselves.
Moreover, the special links, highlighted and emphasised by their location in a separate box on the site, are said to be to airports, air tickets and lawyers. But not even the ‘airports’ category provides any information on airports themselves.
In summary, the Respondent’s website is deceptive, as it takes the iconic name of the Sydney Airport, with only the letter ‘s’ being added and it then uses this as a bait to lure consumers into the website, so they may be tempted to buy any of the range of goods or services outlined above. As was observed by the panel in the case cited by the Complainant, Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No. D2003-0248; such conduct can ‘never be a legitimate or fair use’.
The Complainant has said that the website carries a direct link to the ‘Sydney Airport Forum’ and of course, that fact may have given rise to the argument, had the matter been defended, that the Respondent had a public interest in raising and discussing various issues concerning the airport.
The Panel is unable to locate the link referred to and it is possible that by now it has been removed from the site. Fortunately, the Complainant has exhibited copies of various pages of the ‘Sydney Airport Forum’ site to its Complaint and the Panel accepts that they are an accurate description of material that was at some time posted on the site. This material includes remarks that are abusive of the Complainant.
Additionally, the Panel conducted a search using “www.archive.org” to see what may have been on the website in the past. That search revealed that at some time since April 12, 2005, when the domain name was registered, some material had been blocked by the owner. This material included links to Lonely Planet, which again was deceptive, for it did not lead to the travel guide of that name but to dating agencies. It also led to ‘Sydney Flights’ which in turn led to economy air tickets and links that were named respectively ‘wwwAIRPORTS’(sic), ‘WWW.Airports.com’, ‘Closest airports’ and ‘closest airport’, none of which contained any information on any airports anywhere. It is clear, therefore, that even from its inception, the site was deceptive and was being used as part of a ruse to attract consumers to commercial sites under the guise of providing information about Sydney Airports and that this was being done for monetary reward.
With respect to the presumed link to the ‘Sydney Airport Forum’, the Panel has no hesitation in saying that a link to such a platform, carrying as it apparently did, such scurrilous and absurd allegations as are revealed in the Complainant’s evidence, cannot be bona fide or legitimate and cannot create for the Respondent any rights or legitimate interests in the contentious domain name. This issue is discussed at length in Howard Jarvis Taxpayers Association v. Paul McCauley WIPO Case No. D2004-0014 and there is no need to elaborate on it here. In any event, the facts of the present case show that the link to the Sydney Airport Forum is what was referred to in the Howard Jarvis Case (supra) as ‘a mere pretext for cybersquatting’, in view of the deceptive and commercial uses to which the Respondent has put the domain name.
For all of these reasons the Panel finds that the Respondent has no rights or legitimate interests in the domain name and that accordingly the Complainant has made out the second element.
C. Registered and Used in Bad Faith
With respect to the third element, paragraph 4(b) of the Policy sets out some detailed criteria, any one of which, if proven, is deemed to be ‘evidence of the registration and use of a domain name in bad faith’. Both features must be proved, i.e. that the domain name was registered in bad faith and that it is being used in bad faith.
It is also clear that the criteria listed in paragraph 4(b) are not exhaustive and that other factors may also be relied on to show bad faith. Having considered all of the evidence, the Panel concludes that the conduct of the Respondent principally comes within the fourth criterion set out in paragraph 4(b) of the Policy, although it may constitute bad faith under the other criteria as well.
Paragraph 4(b)(iv) may be paraphrased as using the domain name to attract internet users to a website by creating confusion with the Complainant’s name or mark as to whether that other website or the products or services on it are sponsored by the Complainant. The offending use must be intentional and it must also be done for commercial gain before it will constitute bad faith. Because of the terminology of paragraph 4(b), evidence of such a use is then taken to be evidence of ‘registration and use of a domain name in bad faith’.
That is a very accurate description of the Respondent’s conduct in this case. At the time of registration, the Respondent or his predecessor appropriated a name that was virtually the Complainant’s iconic trademark, business name and domain name and made only a minor change to the spelling of that name by adding the letter ‘s’. In doing so, they hid behind the protective shield of Domains by Proxy Inc, a practice which the panel in Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc. and Vladimir Putinov WIPO Case No. D2004-0311 observed is not always conducive to the efficient working of the UDRP system.
Trading on the good name of the Sydney Airport, the Respondent has since then relied on users who wished to visit the official Sydney Airport site of the Complainant at “www.sydneyairport.com” or who simply wanted to reach Sydney Airport on the internet, wrongly typing “www.sydneyairports.com” into their computers, either because they were accidentally misspelling the address, or because they believed that the plural form was the correct way to describe the airport.
The Complainant in fact engaged in a series of deceptions perpetrated on consumers. The first deception was to deceive consumers into believing that they were proceeding to and had arrived at the website of Sydney’s famous Kingsford Smith Airport, where a wealth of factual information about the airport is to be found, when in fact they were not proceeding to it and had not arrived there. The second deception was that the information on the “www.sydneyairports.com” website was in fact information about the Sydney Airport and its services and the retail outlets that everyone knows are accommodated in airports, when in fact they are neither the Sydney Airport’s services or retail outlets at the airport.
Having lured the mistaken users into his website, the Respondent has then presented them with an array of goods and services, clearly with the intention of having the consumer buy them or at least follow the links and go to the website where they might be bought.
It is also clear to the Panel that the Respondent has included actual links to travel agents, airline tickets and cheap flights and the purported links to airports which give no information on airports, to give an air of verisimilitude to the site, i.e. to induce the consumer to believe that as offerings of an aeronautical nature are being promoted on the site, it must surely be the site of the Sydney Airport and that the goods and services on offer have the imprimatur of Sydney Airport.
This deception is a clear attempt by the Respondent to divert users to Internet sites other than the Complainant’s.
By this means, the Respondent has clearly engaged in the conduct described in paragraph 4(b)(iv) of the Policy and must be taken to have done so intentionally and for commercial gain.
These and similar facts have been accepted many times by UDRP panels as showing both registration and use in bad faith for commercial gain at the expense of the Complainant, its goodwill and reputation; see for example: America Online v. Xianfeng Fu, WIPO Case No. D2000-1374.
The Respondent and his predecessor have therefore registered the domain name in bad faith and the Respondent is using it in bad faith.
The Complainant has thus made out the third element and hence all three elements that it must establish.
The Panel is also of the view that transfer of the domain name to the Complainant is the appropriate remedy.
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 <sydneyairports.com>be transferred to the Complainant.
The Honourable Neil Anthony Brown QC
Dated: November 22, 2005
1 At “http://www.wipo.int/amc/en/domains/search/overview/index.html”