WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Emirates Corporation v. 2220 Internet Coordinator
Case No. D2005-1311
1. The Parties
The Complainant is Emirates Corporation, of Dubai, United Arab Emirates, represented by Baker & McKenzie, Hong Kong, SAR of China.
The Respondent is 2220 Internet Coordinator, of Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name <emiratescareers.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2005. On December 20, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On December 21, 2005, eNom 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 January 4, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2006.
The Center appointed Debrett Lyons as the Sole Panelist in this matter on February 2, 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 is the middle-eastern based airline known as Emirates Airlines which was set up in 1985 by the government of Dubai. Since then, the Complainant has become known as the official international carrier of the United Arab Emirates now flying to over 75 destinations around the globe.
The Complainant has registered the plain word mark EMIRATES in the United States under trademark registration 2495959 dated October 9, 2001. Additionally, the Complainant has numerous other registrations around the world for trademarks that include the word EMIRATES.
The Complainant recruits through various means including through advertisements on its website located at “www.emiratesgroupcareers.com”.
The disputed domain name was registered on September 7, 2003. An active portal style website exists at “www.emiratescareers.com”.
The Complainant petitions the Panel for an order for transfer of the domain name to it.
There is no evidence provided of pre-Complaint correspondence between the parties.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is confusingly similar to the trademark EMIRATES in which it has rights. It argues that whilst the word “Emirate” means a country ruled by an Emir, the word “Emirates” is exclusively associated with the Complainant due to its substantial trading and promotional activities under that name.
Through its registration and use of the word EMIRATES as a trademark, and through operation of its “www.emirates.com” website, the Complainant argues that it has rights in the single word trademark EMIRATES. In addition, through the use of the name on its “www.emiratesgroupcareers.com” website, it is said that the Complainant has also accrued rights in the expression “Emirates Group Careers”.
The Complainant submits that consumers seeing the domain name <emiratescareers.com> would be confused or misled into believing that it would refer to a website operated by the Complainant.
The Complainant goes on to argue that the Respondent has no rights or legitimate interest in the disputed domain name since the corresponding website does not perform any function other than to provide links to further websites which advertise goods and services. Those links change from time to time but the Respondent’s website has regularly featured links to:
- Emirates Airline Jobs. Following this link takes the internet user to a page displaying “sponsored links” for the Dubai Employment Centre, the Flight International Jobs website and a “work at home” website, none of which are websites operated by Complainant;
- Jobs in Dubai;
- Emirates Airline. This takes the Internet user to a page that includes “sponsored links” for the Dubai Employment Centre and airline ticket sales at “123-airline-tickets.com”;
- Airline Jobs. This takes the user to a page that includes “sponsored links” for schools and recruitment sites not associated with Complainant;
- Adult content websites.
The Complainant argues that the Respondent’s use of the disputed domain name to link to its advertising clients, which could be the Complainant’s competitors, is not indicative of a legitimate or bona fide use and that the Respondent’s choice to register the disputed name is motivated by a desire to divert users from the Complainant’s site for the Respondent’s commercial gain. As such, the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Finally, the Complainant contends that the domain name was registered in bad faith and is being used in bad faith. The Complainant submits that it is inconceivable that the Respondent, who has arranged or allowed links to airline related websites on its site, was unaware of the Complainant’s rights in the EMIRATES mark at the time it registered the domain name.
The Complainant submits that the Respondent’s provision of links to websites in the United Arab Emirates does not entitle it to use the word “emirates”. “Emirates” has taken on a secondary meaning as being associated with Complainant. The word would be taken by consumers to be a reference to Complainant and not to the United Arab Emirates which are normally abbreviated to “UAE”.
The Respondent’s use of the disputed domain name in such a way to divert users from Complainant’s site to its own website for its own commercial gain, at the possible expense of the Complainant, is clear evidence that the disputed domain is also being used in bad faith.
Use of the disputed domain name is disruptive to the Complainant’s business. The Complainant has registered the domain name <emiratesglobalcareers.com> for its careers website. Were it not for the disputed domain name, the Complainant would be able to register <emiratescareers.com> as its own domain name.
The Respondent’s website provides links to sites that are not associated with the Complainant. Consumers would be diverted to online ticketing sites and competitor airlines, diverting customers away from the Complainant’s services.
In the past, the Complainant has noted that the Respondent has included links to adult sites which customers of the Middle-Eastern airline may consider to be highly offensive.
Moreover, the Complainant goes on to argue that even if the Respondent had not used the disputed domain name to divert internet users to an active website, its actions would still constitute registration and use in bad faith since the domain name contains a mark that is so obviously indicative of the Complainant’s products and services that any use of it would inevitably lead to confusion of some sort.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact the Respondent failed to submit a reply. According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 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.
Having considered the Complainant’s case and the available evidence, the Panel finds the following:
Identical or Confusingly Similar
The Panel has no hesitation in finding that the disputed domain name is confusingly similar to a registered trademark in which the Complainant has rights. The Panel accepts the Complainant’s evidence that the word EMIRATES has acquired a secondary significance and connotes the Complainant more so than it does the region known as the United Arab Emirates. The gTLD, “.com”, can be ignored for the purpose of this comparison as trivial and so there only remains the descriptive word “careers” which does nothing to dispel the mental association with the Complainant and, given the nature of the Complainant’s business, serves simply to reinforce that connection.
Accordingly, the Panel finds that the Complainant has met the first requirement of the Policy.
Rights or Legitimate Interests
On the available evidence, the Panel is of the opinion that the only respectable argument which the Respondent might have relied upon, had it submitted a response, is that the word EMIRATES is a legitimate and commonly understood shorthand for matters connected with the United Arab Emirates and that the Respondent offers some kind of recruitment/career advice service in that region. However, absent any evidence of that matter from the Respondent, and in the face of a convincing counter-argument by the Complainant, the Panel finds this not to be so in the present case.
Coupled with the earlier finding that the word EMIRATES has come through use and reputation to indicate the Complainant’s business, there are few ways in which the Respondent could legitimately use the disputed domain name or prove its own right to the name. As stated in prior UDRP decisions, any such use would require the utmost bona fide character. Here, the Respondent has shown no such character by having previously linked its website to others featuring pornographic material and by simply linking to sites which are at risk of adversely impacting on the commercial interests of the Complainant.
The Panel therefore finds that the Complainant has satisfied the second limb of the Policy.
Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the following circumstances which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy.
(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 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 your website or location or of a product or service on your website or location.
In this case, there is evidence that the Respondent’s behaviour is circumscribed by paragraph (iv) above. The Panel decides that the use and registration of the disputed domain name are in bad faith and accordingly that the Complainant has met the third and final requirement of the Policy.
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, <emiratescareers.com>, be transferred to the Complainant.
Debrett G Lyons
Date: February 9, 2006