WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

AIDA Cruises German Branch of SocietÓ di Crociere Mercurio S.r.l. v. balata.com, Ltd

Case No. D2008-0110

 

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 balata.com, Ltd, of Hong Kong, SAR of China.

 

2. The Domain Name and Registrar

The disputed domain name <aidaonline.org> (the “Domain Name”) is registered with Gal Communications (CommuniGal) Ltd. d/b/a Galcomm (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2008. On January 28, 2008, the Center transmitted by email to Registrar a request for registrar verification in connection with the Domain Name. On January 28, 2008 Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing contact details. Registrar also confirmed that the Domain Name will remain on registrar lock 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 that the proceedings commenced on January 30, 2008 at which time Respondent was given 20 days to file a response to the Complaint. On February 10, 2008, Respondent responded informally by email to the Center setting forth briefly its position in this matter (“February 10, 2008, response”). On February 11, 2008, the Center confirmed receipt of the February 10, 2008, response from Respondent and requested confirmation as to whether the February 10, 2008, response should be regarded as Respondent’s complete response. If so, the Center advised it would proceed to appoint the Panel promptly. However, the Center’s confirmation of receipt of February 11, 2008, also states that if there was no further communication by the due date of the Response (February 19, 2008), “we shall regard the above referenced communication as your Response and proceed to appoint the Panel.” On February 20 the Center sent Respondent a Notification of Respondent Default for failure to meet the February 19,2008, deadline for submission of a formal Response. The Panel agrees with the Center that Respondent’s February 10, 2008, response fails to meet the very precise detailed formalities as to what constitutes a Response pursuant to Paragraph 5 of the Rules as well as Paragraph 7 (c) of the Supplemental Rules. Nevertheless, after receiving the Notification of Respondent Default on February 20, 2008, Respondent quickly replies on that same day as follows: “We have responded to the complaint, and even received an Acknowledgement of receipt from WIPO.”

The Panel has related all of the above details herein since it is of the view that while the Center in Paragraph 5 of its January 30, 2008, Notification of Complaint advises Respondent that the Response must meet certain requirements, the Panel believes that the Center should in these particular circumstances, have advised Respondent at some point after issuing its conformation of receipt of February 11, 2008, but before proceeding to issue its notification of formal default on February 20, 2008, that the February 10, 2008, response failed for many reasons to constitute a valid formal Response.1 As a result of this oversight on the part of the Center, the Panel has determined that, in the interest of fairness to Respondent, it will consider in its deliberations the points raised by Respondent in its February 10, 2008, response, even though such response does not meet the requirement of a formal Response as described above.

The Panel also notes that notwithstanding whether or not Respondent did file a Response, the Respondent’s default does not automatically result in a decision in favor of Complainant. The 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.

The Center appointed James H. Grossman as the sole panelist in this matter on February 29, 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.

 

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 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, well before the Domain Name was registered in June 2007. Further, Complainant holds the rights to the registered European Community Trademark 468 19 87 AIDA protected within 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 the Complainant’s travel services, cruise ships, and their capabilities and cruise offerings. Complainant explains that the use of the term “online” which in English and German means “connection to the internet” is solely descriptive and should bring users to the travel service of Complainant on the internet.

 

5. Parties’ Contentions

A. Complainant

According to the Complainant, the Respondent’s use of the Domain Name, as it has been used, directly competes with Complainant and is confusingly similar to Complainant’s trademark AIDA as used in the cruise and travel business. Further, Respondent is using the Domain Name for commercial purposes and has no rights or legitimate interests in so doing. Complainant points out that the services referred to on Respondent’s site are not directly available from the site itself, but only through use of sponsored links (advertisements describing an advertiser’s products and services on another) which has been held not to be a legitimate interest in a domain name. Drake Bliss v. Cyberline Enterprises, WIPO Case No. D2001-0718. However, Respondent, according to Complainant, uses hyperlinks under the Domain Name to link the consumer looking for Complainant’s services to competitors of Complainant. Finally, Complainant states that the Respondent does not offer any other services or goods on the website at the disputed domain name.

Complainant asserts that another WIPO panel has held that a domain name which is similar to a trademark and used to indirectly market products of competitors on the Domain Name in question constitutes an improper use. Micro Electronics, Inc. v. J Lee, WIPO Case No. D2005-0170. Complainant states its trademark gives it protection for, inter alia, travel arrangements.

B. Respondent

As set forth in detail above, there is a question in this case as to whether the Respondent has properly responded to the Complaint. The Center has determined that the Respondent failed to respond formally pursuant to the requirements described in the Rules, Paragraph 5 and the Supplemental Rules and the Panel does not disagree. However, because of certain possible uncertainty as to whether the Respondent was aware of its failure to properly respond, the Panel intends to consider the February 10, 2008, response from Respondent to the Center as a response for substantive purposes.

Respondent in its February 10, 2008, response to the Center states it purchased the Domain Name in good faith for business use not having the Complainant in mind but rather to be used to provide opera music information. Further, Respondent states there is no relation to the Complainant’s business which it acknowledges is a cruise line and, therefore, Respondent sees no reason not to continue to use the Domain Name for its business purposes.

 

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.

A. Identical or Confusingly Similar

The disputed Domain Name incorporates the Complainant’s AIDA trademark in its entirety, in combination with the generic descriptor “online”. It has been well-established by previous panels that the test for identity or confusing similarity under the first element of the Policy is a direct comparison between the disputed Domain Name and the trademark at issue. It has also been widely recognized that the addition of a generic term to a mark in a domain name will not generally suffice to avoid a finding of confusing similarity with that mark. The gTLD (in this case “.com”) is a technical requirement for domain name registration and operation, and may be disregarded for the purpose of this comparison. On this basis, the Panel finds the disputed Domain Name to be confusingly similar to the Complainant’s AIDA mark. The Complainant has met its obligations of proof of the first element in this case.

B. Rights or Legitimate Interest

Annex 7 to the Complaint demonstrates that in fact the Respondent, contrary to its statement in its February 10, 2008, response, has filled the text of the website with cruise and travel related business, despite Complainant’s trademarks relating to the use of the Aida name together with travel and cruise business. Complainant is quite clear that no license exists or permission was granted to Respondent to use the trademarks from the Complainant. This together with the commercial offering of travel services is sufficient for Complainant to have fulfilled the second element of this case.

C. Registered and Used in Bad Faith

The Panel has reviewed the current content of the website at the Domain Name prior to making its decision in this matter and, if this was the only evidence before it, the Panel might have hesitated on reaching a view in Complainant’s favor on the third element. While the website at the Domain Name has the appearance of a fairly typical “link farm” with a number of “sponsored links” and a search engine facility, the particular text as viewed by the Panel on March 12, 2008, makes no apparent reference to any travel or cruise activities. Despite inserting words in the search section provided on this website at the Domain Name such as “cruise” or “Aida Cruise Lines”, one is advised that there are “no results” from such a search. The Panel notes in this regard that the Complainant’s trademarks relate to the word “aida” used in the context of travel, etc. However, Complainant has done its homework and Annex 7 to the Complaint contains copies of the site before it was likely changed, probably due to the initiation of this Complaint. There is little question that the “before” text filled with cruise and travel information appears targeted at taking advantage of likely Internet user confusion with the trademark in which the Complainant has rights. It is also a reasonable inference to draw given the presence of “sponsored links” on the website that revenue is generated as a result. Furthermore, the Domain Name site reaches right into the business of Complainant and a reasonable user may well think he or she is on the site of an Aida Cruise Line. The above discussion would suggest that the domain name was registered, and has been used, to benefit from likely confusion with the Complaint’s AIDA trademark.

Two further aspects of Respondent’s behavior stand out in the bad faith area. First it appears that Respondent, at some point probably after initiation of the Complaint, deleted its offensive materials in which it used the Domain Name to market competing cruise and travel products. To make matters worse, Respondent in its February 10, 2008, response refers to its providing of opera music information and no relation to cruise line business. Without Annex 7, this Panel may have had a more difficult time with Complainant’s arguments, but those pictures taken off the website which are attached in Annex 7 to the Complaint demonstrate a clear bad faith effort on the part of Respondent. It is ironic that the language contained in Respondent’s February 10, 2008, response is a significant factor in proving Respondent’s bad faith. Finally, of course, there is no response from Respondent as to the difference between Annex 7 and the current text of the Domain Name, or otherwise.

The Panel has little hesitation in the circumstances in concluding that the third element of the Policy has been met.

 

7. Decision

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, <aidaonline.org> be transferred to the Complainant.


James H. Grossman
Sole Panelist

Dated: March 14, 2008


1 The Panel notes in this regard that the Center is under no direct obligation under the Policy and Rules to conduct an administrative compliance review of a filed response. This may be contrasted for example with the clear obligation on the Center under paragraph 4 of the Rules to ensure that a filed complaint is in administrative compliance with the Policy and Rules before proceeding to notify the complaint thereby formally commencing the proceedings. Any obligation on the Center to review the Response in this case arises as a result of very particular circumstances. In particular, the fact the Center itself, having on the one hand issued an acknowledgment of receipt to the Respondent indicating that it would regard the received communication as the Respondent’s Response if no further communications were received, and then on the other hand proceeding to issue a formal Respondent default notification when no such further communication was received. In so doing, the Center in effect appears to have elected to perform an administrative compliance check of the Response, and should therefore have advised the Respondent of any identified formal deficiencies before issuing its notice of formal default. The Panel also does not exclude the possibility that the latter formal default notification may in fact have been issued by the Center as a result of inadvertent oversight, rather than as a result of a considered review of the Response. In any event, in the absence of clarification, the effect from the Respondent’s point of view was the same.