WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

AIDA Cruises German Branch of SocietÓ di Crociere Mercurio S.r.l. v. Whois Privacy Services/ “German branch of Societa di Crociere Mercurio S.r.L.”

Case No. D2008-0180

 

1. The Parties

The Complainant is AIDA Cruises German Branch of SocietÓ di Crociere Mercurio S.r.l., Rostock, Germany, represented by Selting und Baldermann, Germany.

The Respondent is Whois Privacy Services/ “German branch of Societa di Crociere Mercurio S.r.L.”, Germany.

 

2. The Domain Name and Registrar

The disputed domain name <aidafans.com> is registered with Nicco Ltd.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2008. On February 5, 2008, the Center transmitted by email to Nicco Ltd. a request for registrar verification in connection with the domain name at issue. Following numerous remainders by the Center on February 29, 2008, Nicco Ltd. transmitted by email to the Center its response stating that Nicco Ltd. had not received the Complaint and that the registrant is different from the one indicated by the Center. Nicco Ltd. also stated that the owner the disputed domain name wished to transfer the domain name. The Center informed the Complainant accordingly and the Complainant requested a suspension of proceedings for 30 days. The Center sent an e-mail requesting a signed version of the Complainant’s request to suspend the proceeding. Subsequently the Complainant informed the Center it would prefer to proceed in the case.

On March 13, 2008, Nicco Ltd. transmitted by email to the Center its verification response confirming that the disputed domain name is registered with Nicco Ltd. Ltd. and that the Registrant is German Branch of SocietÓ di Crociere Mercurio S.r.l., Germany, provided the contact details and confirmed the language of the registration agreement to be Russian. On April 8, 2008, the Center issued a notice of Complaint deficiency in regards to the named registrar and the language of the registration agreement. On April 18, 2008, the Complainant provided the translation of the Complaint into Russian. On April 21, 2008, the Complainant further confirmed to the Center that it did not have actual control over the domain name even though the Complainant was the named Registrant. On April 21, 2008, 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 in Russian, and the proceedings commenced on April 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 11, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2008.

The Center appointed Irina V. Savelieva as the sole panelist in this matter on May 23, 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

The Complainant operates cruises in Europe, the United States of America, the Caribbean and Asia and is the owner of German trademark AIDA from 1997 as well as EU trademark AIDA.

The Complainant is well-known cruise operator and one of the market leaders in Germany with an annual turnover of EURO 408 million in 2006. The Complainant owns domain name <aida.de> and corresponding website.

The disputed domain name was registered on January 19, 2007.

 

5. Outstanding procedural matters

Conduct of the Registrar

There are a number of aspects of the Registrar’s conduct in this matter which the Panel finds reflecting negatively on the Registrar. First, it took one month for the Registrar to respond to the Center’s verification email in this case. Second, the first response from the Registrar was not in line with ICANN requirements. Only on March 13, 2008, Nicco Ltd. transmitted its verification response, in which it informed that the Complainant was the Registrant. The Panel doubts that information submitted by the Registrar about the Complainant being the registrant of the disputed domain name was correct, as the Complainant subsequently confirmed it had not obtained control of the disputed domain name. Thirdly, on February 29, 2008, Nicco Ltd. informed the Center that the owner of disputed domain name wished to transfer the disputed domain name to the Complainant, which could not possible be true as Nicco Ltd. later confirmed that the Complainant in fact was the Registrant. For the Policy to be able to operate successfully it requires registrars to ensure that their public WhoIs databases are reliable and accurate and that registrars fully and promptly cooperate with Providers in dealing with requests and communications associated with complaints (see Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886).

The Registrar’s actions in this case are ones that the ICANN may wish to investigate further. The Panel believes that it is, therefore, important that such matters are brought to the attention of ICANN. ICANN can take such steps and impose such sanctions as it considers appropriate not only to ensure that the UDRP is observed in a particular case but also to safeguard the operation of the UDRP as a whole.

Language of Proceedings

The language of the registration agreement for the disputed domain name is Russian. Pursuant to Paragraph 11 of the Rules, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. From the evidence presented in the case file, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceedings should be in English.

Considering the particular circumstances of the present case the Panel is of the opinion that the language for the decision may be rendered in English. In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Registrar Nicco Ltd. confirmed that the Registrant is the Complainant, i.e. a German company. In particular, the Panel notes that the website disclosed content in English. The Panel notes that the Center has notified the Respondent of the proceedings in Russian. However, considering the particulars of this case the decision shall be rendered in English.

 

6. Parties’ Contentions

A. Complainant

The Complainant’s grounds for the Complaint are the following:

- The Complainant owns exclusive rights to the trademark AIDA registered in Europe (two trademark registrations).

- The Complainant contends that the disputed domain name <aidafans.com> is confusingly similar to its trademark.

- The Complainant never authorized the Respondent to use the disputed domain name or to register it.

- There is no evidence of the Respondent’s use or intention to use disputed domain names in connection with a bona fide offering of goods and services.

- Word ‘Aidafans’ is not a generic or dictionary term and is not descriptive of goods or services, the word ‘fans’ meaning supporters both in German and English,

- The disputed domain name is used to attract the Internet users to monetized portal website providing advertising links to other website.

- The Respondent is creating a likelihood of confusion by using Complainant’s trademark to drive traffic to its site to generate advertising revenue, which is typically paid on a per-click basis.

- The Complainants contends that the Respondent does not use the disputed domain name in good faith.

Based on the above the Complainant requests transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

7. Discussion and Findings

The Respondent was given notice of this proceeding in accordance with the Rules. The Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint.

However, as noted, the Respondent failed to file any reply to the Complaint and has not sought to answer to the Complainant’s assertions, evidence or contentions. The Panel finds that the Respondent has been given a fair opportunity to present its case, and the Panel will proceed to a decision based on the Complaint.

The Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove the elements required by the Policy. In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must prove that each of the three following elements are satisfied:

(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.

Pursuant to paragraph 15(a) of the Rules, the Panel shall 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. Moreover, in accordance with paragraph 14(b) of the Rules, the Panel may draw such inferences, as it considers appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply.

A. Identical or Confusingly Similar

The Complainant has registered the trademark AIDA in many countries of the world, including:

- Germany (trademark registration No 39701328 registered March 17, 1998),

- European Union (trademark registration No 004681987 registered on March 20, 2006) (Annexes 4-6 to the Complaint).

The Panel finds that the Complainant has proved its rights to the trademark AIDA. The Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademark.

The Panel refers to a number of past UDRP decisions, which confirm that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a trademark. Further, the Panel notes that the specific top level domain does not affect the determination as to if a domain name is identical or confusingly similar to a trademark (Magnum Piering, Inc v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; and, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).

The Panel accepts that the “.com” suffix can be ignored and that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademark.

Furthermore adding the word ‘fans’ adds the meaning of people who are supporters or clients of cruises services provided by the Complainant.

The Panel finds that Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.

According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:

(i) respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.

The Respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i-iii) of the Policy. By not responding to the Complainant’s contentions the Respondent in this proceeding has not claimed any rights or legitimate interests.

There is no evidence that before any notice of this dispute, the Respondent was using the disputed domain name for a legitimate offer of goods and services. The Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services.

The disputed domain name was previously pointed to a website disclosing pay-per-click advertisements. Subsequent investigation of the Panel shows that the website with the disputed domain name is currently inactive. The Panel believes that this fact presents additional proof that the Respondent was not and is not involved in bona fide offering of goods and services.

Considering the circumstances, the Panel is of the opinion, that there is no plausible circumstance which would justify the use of the domain name <aidafans.com> by the Respondent.

Secondly, in relation to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has been commonly known by the disputed domain name. Moreover, the Panel considers that the Respondent may have disguised its real identity by using reference to the Complainant’s company name AIDA Cruises German Branch of Societa di Crociere Mercurio S.r.L. in the Registrar’s Whois database.

The Panel refers to the UDRP decision Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886. In that case the panel came to the conclusion that the Respondent “from the start sought to disguise his identity by the use of obviously false contact details” including use of the name of the actual trademark owner.

The disputed domain name was registered on January 19, 2007. The first trademark registration of the Complainant’s trademark AIDA dates back to 1997.

The Panel believes that the Respondent knew about the Complainant’s name and registered trademark AIDA at the time the disputed domain name was registered.

In view of these facts, it is the Panel’s view that the Respondent most likely registered the disputed domain name with the awareness of the Complainant’s services and its reputation.

Furthermore, the Panel draws an adverse inference from the Respondent’s failure to respond to the Complaint.

The Panel finds the Complainant has carried out its burden of proof to show that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that the Respondent has registered and used a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.

The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the disputed domain name, according to the evidence submitted by the Complainant, was registered and has been used primarily to host a monetized website that links to a search engine which allows the Respondent to make money every time a web surfer clicks a sponsored link on the hosted website. In addition, as the Complainant states the website provides hyperlinks for consumers and direct them to website of competitors of the Complainant (Annex 8 to the Complaint).

An independent subsequent search by the Panel indicated that the disputed domain name <aidafans.com> is currently inactive. The Panel finds that the Respondent has intentionally attempted to attract Internet users to its website in line with paragraph 4(b)(iv) of the Policy. The Panel believes that the Respondent initially used the disputed domain name for commercial gain although without selling products or services itself. How such per-per-click services may operate is discussed by the panel in the UDRP decision Owens Corning v. NA, WIPO Case No. D2007-1143.

The Panel further notes as indicated above that the Complainant’s allegations that the Respondent directs the Internet users to the website of its competitors are justified.

The Panel finds that the Complainant presented evidence that the Respondent was acting in bad faith in accordance with paragraph 4(b)(iv) of the Policy.

The Panel holds that the Respondent has registered the disputed domain name in bad faith. The Respondent does not conduct any legitimate business activity using the disputed domain name. The Respondent most likely knew of the Complainant’s services and trademark AIDA. These findings, together with the finding that the Respondent has no rights or interests in the disputed domain name, lead the Panel to conclude that the disputed domain name has been registered and used by the Respondent in bad faith.

The fact that the Respondent failed to respond to the Complaint, in the Panel’s view, further suggests bad faith.

Accordingly, the Panel finds the Complainant has shown that the Respondent has registered and used the disputed domain name in bad faith.

 

8. 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 <aidafans.com> be transferred to the Complainant.


Irina V. Savelieva
Sole Panelist

Dated: June 9, 2008