WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AIDA Cruises German Branch of SocietÓ di Crociere Mercurio S.r.l. v. Aidatravel.com
Case No. D2008-0106
1. The Parties
Complainant is AIDA Cruises German Branch of SocietÓ di Crociere Mercurio S.r.l., Rostock, Germany, represented by Selting und Baldermann, of Germany.
Respondent is Aidatravel.com, of Malaysia.
2. The Domain Name and Registrar
The disputed domain name <aidatravel.com> (the “Domain Name”) is registered with Tucows, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2008. On January 25, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 25, 2008, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Registrar also confirmed it has placed a registrar lock on the Doman Name during the pending administrative proceeding. 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 Respondent of the Complaint, and the proceedings commenced on February 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 22, 2008.
The Center appointed James H. Grossman as the sole panelist in this matter on March 4, 2008. 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.
The Panel determined after analysis of the matter before it that it was faced in many instances with conclusionary statements by Complainant without further explanation or evidence and with no response from Respondent to several critical issues. The Panel determined that it would be preferable, if possible, if its decision were based on definitive responses to these certain questions. Accordingly, the Panel on March 31, 2008 issued Administrative Panel Procedural Order No.1 (“Order of March 31, 2008) seeking responses from Respondent to certain questions relating to i) the locality and nature of Respondent’s Malaysian based travel business and ii) after a search of the Domain Name on the Wayback Machine, located at “www.archive.org”, some explanation from Respondent regarding apparent references on the earlier website to legal steps taken in Germany (copyright protection), as well as to options for the user to select German as a language in order to learn about Respondent’s travel offers. The Respondent was given until April 8, 2008 to respond.
In particular, the Order of March 31, 2008 stated as follows:
“Without prejudice to its finding in the present case, the Panel has noted the following:
1. The Respondent appears to be operating a travel business on its website “www.aidatravel.com”, purportedly located in Malaysia. However no supporting evidence of the existence of such business, the focus of such business, the client base of the business or of the location of such business, has been provided by the Respondent to the Panel. In fact the Respondent failed to respond to the Complaint after notification by the WIPO Arbitration and Mediation Center.
2. The history of use of the disputed domain name, as publicly accessible through the web archive service the Wayback Machine, located at “www.archive.org” appears to suggest a link between the Respondent and Germany, being the country in which the Complainant is located and has established its trademark and allegedly built its reputation. The Panel also saw that there was an option for the user of the website to see the website in the German language.
3. The Panel in considering the merits of the case believes it needs Respondent to provide evidence as to these issues.
In the interests of fairness, and to assist the Panel in rendering its decision, the Panel hereby invites the Respondent to provide any comments or supporting material it may wish to submit specifically in relation to the issues above.
Any submission from the Respondent to this Panel Order should be submitted to the Center by email at “email@example.com” no later than April 8, 2008.”
The Respondent failed to respond to the above Order of March 31, 2008.
4. Factual Background
Complainant states that it is a cruise line, based in Rostock, Germany and one of Germany’s market leaders with an annual turnover of 408 million euros in 2006. Complainant operates cruises in Europe, the United States, the Caribbean, and Asia and is the owner of the German Trademark 397 01 328 AIDA as registered for “travel arrangements, transport; accommodation of guest”. This trademark registration was applied for on January 15, 1997. Also, Complainant holds the rights to the registered European Community Trademark 468 19 87 AIDA protected among others for “travel arrangements, including cruises and trips”.
Complainant has taken reasonable steps to protect the name AIDA through its trademark registrations. The Panel also has visited Internet sites devoted to the Aida Cruise lines which are quite detailed and explain all of the various aspects of Complainant’s travel services, cruise ships, and their capabilities and cruise offerings.
The Panel is able to take notice of the fact that Respondent registered the Domain Name with Registrar on November 27, 2001.
5. Parties’ Contentions
According to Complainant, the Domain Name is identical to the AIDA trademarks of Complainant. Complainant argues that the word “travel” as part of the Domain Name is unimportant for the issue of being identical or similar in that it is solely descriptive of travel services provided by Complainant. Further, Respondent is using the Domain Name for commercial purposes and has no rights or legitimate interests in so doing. Complainant contends the use of a domain name being identical with a trademark for identical goods constitutes a use in bad faith. The services offered, according to Complainant, under the Domain Name are identical to the services Complainant has protection for, being travel arrangements, or at least similar, because Respondent does travel arrangements. Complainant notes that Respondent offers travel services for European destinations and Complainant has right to the trademark throughout Europe.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) 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.
Further, the Panel also notes that notwithstanding whether or not Respondent did file an initial Response, Respondent’s default does not automatically result in a decision in favor of Complainant. Complainant must still prove each of the three elements required by Paragraph 4(a) of the Policy. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064.
A. Identical or Confusingly Similar
While not identical, the Domain Name incorporates the Complainant’s AIDA mark in its entirety, in combination both with the descriptive word “travel”, and the gTLD “.com”, both of which may be disregarded for the purpose of this comparison. It is well-established that the whole-sale incorporation of a trademark in a domain name in combination with a descriptive or generic term is insufficient to avoid a finding of confusing similarity. The Panel thus finds that the Domain Name is confusingly similar to the trademarks of Complainant and that this element of Policy 4(a) (i) is satisfied.
B. Rights or Legitimate Interests
The Panel holds that Complainant has met its obligations under this element of Policy 4(a) (ii) for the reasons set forth in Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 which states as follows:
“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) – especially where the Respondent, rather than the Complainant, would be best placed to have specific knowledge of such rights or interests – and since Paragraph 4(c) describes how a Respondent can demonstrate rights and legitimate interests, a Complainant’s burden of proof on this element is light (see e.g.: De Augustine 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.”
The Panel is satisfied that the Complainant has at least made a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name, in that the Complainant has evidently not authorized the Respondent to make use of its AIDA mark in the disputed domain name.
However, the Panel was nevertheless concerned that Complainant’s seeking to take away the Domain Name from Respondent borders on overreaching in light of the present use of the Domain Name by Respondent as viewed by the Panel, and in particular Annex 7 produced by Complainant and viewed by the Panel which indicates that the website under the Domain Name appears to be offering the services of a travel agent in one region of the world, in this case, Malaysia. While the Panel is aware that Complainant also offers travel services under the under the AIDA mark, the use by Respondent on a restricted basis solely in Malaysia might be considered legitimate if, for example, the Respondent had no knowledge of or intention to trade on the established reputation of the Complainant’s AIDA mark. Yet Respondent’s potential innocence as to Complainant’s rights becomes highly suspect when the Panel finds the references to German language availability and certain German legal actions regarding the Domain Name on the Wayback Machine. Thus the Panel determined to request information which might confirm or alleviate its concerns and issued its Order of March 31, 2008, as set forth above. Respondent’s failure to respond to that Order of March 31, 2008 following its failure to respond to the original Complaint reinforces the Complainant’s prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.
Referring again to the Order of March 31, 2008 and Respondent’s failure to respond, in the circumstances, the Panel concludes that, based upon the present record, the Respondent has no rights or legitimate interests in the Domain Name and that Complainant is deemed to have satisfied Paragraph 4(a)(ii)of the Policy.
C. Registered and Used in Bad Faith
The merits of this case under the third element are finely balanced. On the one hand, Complainant sets forth in a short series of seemingly definitive statements, with few details or citation to other decisions, that the Domain Name, being identical with its trademark for “identical goods”, constitutes a use in bad faith. The Panel noted above that Respondent registered the Domain Name in November 2001, while Complainant filed for its trademark in 1997. Complainant has (at least vis a vis this Respondent) been sleeping on its rights under its AIDA trademark for more than six years. Now, in its Complaint, Complainant makes little effort to provide any evidence, for example, of an attempt by Respondent to pass itself off as an agent of Complainant, to list other cruise lines on its site, or to send clients intentionally to a competitor of Complainant, all of which would be the type of actions which would strengthen a case for bad faith. Rather, the text of the website under the Domain Name as presently viewed by the Panel (without reference to what may have been on the website as shown by the Wayback Machine) seems to be consistent with a legitimate offering of travel agency services to local clientele. For example, the website includes references to various aspects of travel including client friendly services, beyond simple ticketing, such as electricity requirements in other countries, currency converters, public holidays database, etc. Further, and of significance to the Panel in an allegation of bad faith usage, Complainant did not present the Panel with specific evidence that Respondent’s use of the Domain Name has had a negative impact on the business of Complainant.
On the other hand, the Complainant’s AIDA mark was clearly in use as a distinctive identifier of the Complainant’s on-line travel services prior to the registration of the Domain Name, and the word “aida” is not an obvious choice for use in a domain name in connection with an apparent offering of on-line travel services focused on Malaysia clients. There are also the various unexplained references to Germany, being the Complainant’s principle place of operations, appearing on earlier versions of the website at the Domain Name, which suggests to the Panel that the Respondent’s selection and use of the rather particular word “aida” is unlikely to have been coincidental. In the absence of any explanation from the Respondent, the Panel believes that a more likely explanation for the Respondent’s selection of the word “aida” is that it was well aware of the Complainant’s previous and apparently quite successful use of the AIDA mark to offer their own travel services. With regard to certain inconsistencies and missing information, all of which is within the knowledge of the Respondent, the Panel sought an explanation from the Respondent with regard to such issues in the form of its Order of March 31, 2008. The Panel sought such information which might explain Respondent’s registration of the Domain Name some four years after Complainant’s trademark registration. The Panel in essence gave Respondent another bite at the apple, only again to have Respondent ignore completely the opportunity provided to it. The Panel believes that it is not unreasonable to expect Respondent to makes its case in some form if not in Response to the original Complaint then at least pursuant to the Order of March 31, 2008 rather than to remain silent in view of Complainant’s allegations. In view of the limited detail and the weakness of supporting material provided by Complainant as described above, it seems that it would not have taken much effort to refute these points if Respondent had a legitimate basis for such actions. Instead, because of such silence by Respondent, the Panel is prepared to accept reasonable allegations by Complainant as well as points raised by the Panel’s independent investigation where questions arose, were asked of Respondent in the Order of March 31, 2008, and remain unanswered. Respondent by its failure to respond has given the Panel no choice in this matter.
Thus, on balance, the Panel finds that the prospect for Internet user confusion between the Complainant’s AIDA mark and travel business, and the Domain Name, <aidatravel.com>, must have been readily apparent to the Respondent at the time the Domain Name was registered. The Respondent is apparently using the Domain Name to offer travel services, which may or may not compete directly with those of the Complainant, but from which revenue is presumably derived or intended to be derived.
Accordingly, the Panel is satisfied that, on balance, the disputed Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) 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, <aidatravel.com> be transferred to the Complainant.
James H. Grossman
Dated: April 18, 2008