WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vueling Airlines, S.A. v. Ahn Dongkyun
Case No. D2005-1231
1. The Parties
The Complainant is Vueling Airlines, S.A., Barcelona, Spain, represented by DLA Piper Rudnick Gray Cary UK LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Ahn Dongkyun, Hanam Si, Gyeonggi-Do, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <vuelingair.com> is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2005. On November 30, 2005, the Center transmitted by email to Korea Information Certificate Authority Inc. d/b/a DomainCa.com a request for registrar verification in connection with the domain name at issue. On December 16, 2005, Korea Information Certificate Authority Inc. d/b/a DomainCa.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. 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 December 19, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2006.
The Center appointed Thomas P. Pinansky as the Sole Panelist in this matter on January 19, 2006. 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, Vueling Airlines, S.A, is a Spanish airline company linking Barcelona with major cities in mainland Europe.
The Complainant has registered and uses the domain name <vueling.com>, which incorporates the Community Trademark VUELING. The complainant is the registered proprietor of the Community Trademark VUELING in classes which include airline travel, travel services, air-transportation services, vehicle rental services and temporary accommodation services. The Community Trademark was filed on May 15, 2003, and registered on April 29, 2004. The Respondent’s domain name consists entirely of the term “vueling” with the addition of the descriptive suffix “air” at the end of the domain name.
The Respondent’s domain name resolves to URS “www.stage.goldkey.com” providing links to various flight booking sites which are the Complainant’s airline competitors. Respondent registered <vuelingair.com> on December 22, 2004.
5. Parties’ Contentions
(i) The only difference between the Respondent’s domain name and the Community Trademark is the addition of the word “air” to the Respondent’s domain name, and that this difference does not conceal the fact that the Respondent’s domain name and the Community Trademark are virtually identical in sound, appearance and idea.
(ii) The Respondent registered the domain name <vuelingair.com> in order to obtain Internet traffic from would be customers of the Complainant who may erroneously or mistakenly type in the Respondent’s domain name believing it to be the Complainant’s website.
(iii) The Respondent has no right or legitimate interests in the contested domain name.
(iv) The Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the Community Trademark in a domain name or in any other manner.
(v) The Respondent cannot use the domain name in connection with a bona fide offering of goods or services in view of the Complainant’s corporate name and the Community Trademark. The domain name could not have been chosen for any reason other than its association with the Community Trademark and its airline services.
(vi) The Respondent must have been aware of the Community Trademark from the nature of the linked website that indicated the Respondent knew of the Complainant’s name and field, business, and that the Respondent is purposefully engaging in business which effectively competes with the Complainant’s business by the linkage to websites of the Complainant’s competitors.
(vii) By providing a number of links to businesses which are direct competitors of the Complainant’s business, it is to be inferred that, at the time of registering the domain name, the Respondent was aware that the Complainant was an airline, had registered the domain name <vueling.com> and had registered VUELING as a Community Trademark on April 29, 2004.
(viii) Respondent’s only use of the domain name <vuelingair.com> has been in connection with directing Internet users to websites unrelated to the Complainant and owned by the Complainant’s competitors.
(ix) By including the Community Trademark in the domain name, the Respondent intended to create opportunities to commercially benefit itself, arising out of the inevitable user confusion that would flow from concurrent use by the Complainant of its Community Trademark and by the Respondent of the domain name <vuelingair.com>.
(x) The Respondent has both registered and used the domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Selection of Language
It is noted that the language of the registration agreement for the domain name is Korean.
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decided otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors.
In the present case, the registration agreement for the domain name was made in the Korean language. However, as the websites to which the domain name resolves are in English, it may be inferred that the Respondent has sufficient ability communicating in the English language.
On the other hand, the Complainant is not able to communicate in Korean and therefore, if the Complainant was to submit all documents in Korean, the proceeding will be unduly delayed and the Complainant would have to incur substantial expenses for translation. Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel decides, under paragraph 11 of the Rules, that (i) English shall be the language of the administrative proceeding in this case, but on the condition that (ii) to the extent that the Respondent would have submitted any documents or assertions in Korean, such documents or assertions would have been considered by the Panel. The Panel notes that this was not the case here, as the Respondent did not reply to the Complainant’s contentions. See Groupe Industriel Marcel Dassault, Dassault Aviation v. Mr. Minwoo Park, WIPO Case No. D2003-0989.
B. Substantive Elements of the Policy
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds 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.
Moreover, under paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.
In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules as he considers appropriate (See paragraph 14(b) of the Rules; See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark or service mark; and
(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.
C. Identical or Confusingly Similar
The domain name incorporates the Complainant’s trademark. Numerous panels have held that where a domain name substantially incorporates the complainant’s trademark, that is sufficient to make the domain name “confusingly similar” within the meaning of the Policy. In this case, the only difference is the mere adding of a generic word (in this instance “air”). The Panel notes that it has been held in many cases that the addition of non-distinctive and descriptive words to a trademark creates confusion, particularly if an established mark is used to sell similar or identical goods or services. See Galderma S.A. v. Eric Kaiser, Chairut Kompeerapun, WIPO Case No. D2003-0495; Pfizer, Inc. v. Order Viagra Online, WIPO Case No. D2002-0366; Space Imaging LLC v. Brownell, AF-0298 (eResolution September 22, 2000); and Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., WIPO Case No. D2001-0075.
In this case, the domain name merely adds a descriptive word “air”, and it provides links to the Complainant’s competitors.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s marks pursuant to the Policy paragraph 4(a)(i).
D. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name. In connection with the burden of proof, several past UDRP decisions have held that “once a complainant establishes prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the respondent to rebut the showing” (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com; WIPO Case No. D2001-0784; See also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its marks; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the domain name; the Panel further notes that the Respondent is not, and has never been, commonly known by the domain name. The Panel’s view is that these facts must be taken as proven provided that they have not been denied by the Respondent.
The Respondent has not submitted a response. Therefore, he has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the domain name under paragraph 4(c) of the Policy. Accordingly the Panel holds that the Respondent has no legitimate interests or rights in the domain name pursuant to paragraph 4(b) of the Policy.
E. Registered and Used in Bad Faith
Both under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see Section 2), a well-established principle is that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s trademarks are known worldwide, it is unlikely that the Respondent, at the time of registration of the domain name or thereafter, was not aware that he was infringing the Complainant’s trademarks.
Bad faith can be presumed based on the fame of the Complainant’s marks, such that the Respondent was aware or should have been aware of Complainant’s well-known marks and claims of rights thereto. Furthermore, any trademark check of the records of the patent and trademark offices of the European Community would have made the Complainant’s registrations known to the Respondent.
The Respondent has, in using the domain name, diverted Internet users to competing websites. The mere fact of diverting users in this misleading manner can be further evidence of bad faith (see Big Dog Holding, Inc. v. Day, NAF Claim No. FA 93554, at par. 8), March 9, 2000)).
The conduct described above falls squarely within paragraph 4(b)(vi) of the Policy and accordingly the Panel concludes that the Respondent registered the Domain Name in bad faith.
In light of the above, the Panel concludes that the Complainant has proven bad faith in registration and use on the part of the Respondent.
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, <vuelingair.com> be transferred to the Complainant.
Thomas P. Pinansky
Dated: February 20, 2006