The Complainant is Sierra Wireless, Inc. of British Colombia, Canada, represented by Perley-Robertson, Hill & McDougall LLP, Canada.
The Respondent is Fabio Bianchini of Rome, Italy.
The disputed domain name <aircardsinfo.com> is registered with NetEarth One Inc. d/b/a NetEarth.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2009. On July 9, 2009, the Center transmitted by email to NetEarth One Inc. d/b/a NetEarth a request for registrar verification in connection with the disputed domain name. On July 9, 2009, NetEarth One Inc. d/b/a NetEarth transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 July 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2009. On July 16, 2009, the Center received an email communication from the Respondent which did not meet the requirements of a formal response (see paragraph 6 below), and the Center referred the Respondent to the response filing guidelines. The Center, having not received a substantive Response from the Respondent by the due date, advised the parties on August 5, 2009 that it would proceed to appoint the Panel.
The Center accordingly appointed John Swinson as the sole panelist in this matter on August 7, 2009. 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 Complainant is a wireless communications equipment designer and manufacturer which was founded in 1993. The Complainant has its primary headquarters in Canada, and has operations all around the world, including the United States of America, United Kingdom of Great Britain and Northern Ireland and Hong Kong SAR of China.
One of the Complainant's most popular products is the AIRCARD, which is a device for a laptop, mobile phone or PDA which allows the user to connect to wireless Internet. The Complainant owns various trade mark registrations for AIRCARD around the world.
The Respondent is an individual who appears to reside in Rome, Italy.
The website operating from the disputed domain name contains the title “Air Cards Info” and a subtitle of “The Blog of Wireless Air Cards”. Under the tab “About this blog”, there is the following explanation:
“In this blog you can find news and articles about the world of air cards connections and wireless connections, included Wimax news also.
It's opened to all who wants to contribute with news and comments.
The website also contains articles and videos relating to “Air Cards” as well as some sponsored advertisements sourced from Google which divert to third party technology-related websites. The website states that the Complainant and Kyocera are two of the most famous “Air Card” manufacturers.
The Complainant makes the following contentions:
The Complainant has extensively used and advertised the AIRCARD trade mark worldwide in connection with advertising and promoting the Complainant's products. During 2008, the Complainant spent over a million dollars in advertising and promoting the trade mark. The AIRCARD trade mark is used by the Complainant at trade shows, on the Complainant's website, on product manuals and on its actual products.
The Complainant's products are distributed in many countries around the world, including the Peoples Republic of China, India, Singapore, Thailand, Japan, Turkey, Belgium, South Africa, Croatia, Spain, Canada and the United States. The Complainant's revenue in 2008 from AIRCARD products was over USD250 million.
The Complainant conducts business on the Internet primarily through its website at “www.sierrawireless.com”, and its products are also sold through indirect channels such as wireless operators and resellers.
The Complainant's AIRCARD trade mark is well-known, instantaneously recognized and exclusively associated throughout the world with high quality wireless communications equipment offered by the Complainant due to the extensive use, advertising and promotion of that trade mark. The AIRCARD trade mark is immediately associated with the Complainant as the sole and exclusive source of goods sold under it.
The Complainant owns the United States trade mark number 2120427 for the AIRCARD word mark as well as other similar marks around the world (including Australia, Canada, China, the European Union and New Zealand). The Complainant adopted and commenced using the trade marks AIRCARD on or around January 1, 1987.
The disputed domain name incorporates the entirety of the Complainant's AIRCARD trade mark. The trade mark is made plural (by adding an “s”) and includes the word “info” which is short for “information”.
The disputed domain name was registered on February 4, 2009. On April 28, 2009, the Complainant discovered that the Respondent had registered the disputed domain name, and was operating a website from that domain name.
Due to the worldwide reputation of the trade mark, and the fact that the Respondent's website demonstrates a prior knowledge of the Complainant's products, the disputed domain name is clearly identical or confusingly similar to the AIRCARD trade mark in which the Complainant has rights. The reference to “Aircard” is clearly a reference to the Complainant's trade mark, while the addition of the descriptive or non-distinctive word “info” does not sufficiently distinguish the domain names from the Complainant's mark.
As at June 19, 2009, the website from the disputed domain name contained the title “The Blog of Wireless Air Cards” and contained news and articles about air card connections and wireless connections. The website also provided links to other articles as well as advertising links, including links to competitor products such as Kyocera. The website refers to “Aircard” in a generic sense rather than noting the Complainant as the trade mark owner.
The Respondent has not been commonly known by the disputed domain name. The Respondent's use of the Complainant's trade mark in the disputed domain name was not authorized, approved or sanctioned by the Complainant.
The disputed domain name does not appear to be used in connection with a bona fide offering of goods or services or any legitimate noncommercial or fair use. The website is commercial and makes money through pay-per-click advertising services. The Respondent has adopted a confusingly similar domain name with prior knowledge of the prior trade mark of the Complainant and as such is trading for commercial gain on the name of the Complainant and the worldwide notoriety and reputation of the Complainant's business and trade mark.
Where a respondent knowingly adopts a mark similar to that of another, panels will typically presume an intention to deceive the public and create confusion. The fact that the Respondent has added an “s” and the word “info” does not serve to reduce the likelihood of confusion.
On May 14, 2009, the Complainant wrote the Respondent a cease and desist letter, however no reply was received.
The disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(b)(iii) and (iv) of the Policy.
The Respondent has registered the disputed domain name for the purpose of disrupting the business of a competitor. The content of the website associated with the disputed domain name links to other competitor businesses and uses the Complainant's trade mark in a generic sense. The Respondent has become a competitor of the Complainant and it can reasonably be inferred that the primary purpose of the Respondent registering and using the disputed domain name is to disrupt the legitimate business interest of the Complainant.
The Respondent has also attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark.
The Respondent did not submit a formal response. However on July 16, 2009, the Respondent submitted an email to the Center which is set out in full here:
“My site talks about ‘air cards' the name used to specify that device used for connecting internet with pc or mobile. If you visit for example http://cheapaircards.com/ you can notice as they sell ‘air cards', common name for this kind of device. Sierra say that name ‘aircard' is registered and mine
with "air cards" it's a violation of copyright. Please let me know what can I do...”
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy also states that the burden of proof lies with the complainant to establish that all these three elements are satisfied, in relation to the disputed domain name.
The Complainant has produced sufficient evidence to prove that it has registered trade mark rights in the AIRCARD word trade mark. For example, the Complainant has registered trade mark rights in this term in Australia (trade mark registration no 931922, registered from 2003); the United States (trade mark registration No. 2120427, registered from 1997); and Canada (trade mark registration No. TMA569514, registered from 2002); and in many other countries around the world.
The Complainant's evidence also demonstrates that AIRCARD is a well-known and valuable brand for the Complainant. A significant number of sales are made under this mark each year. A large number of people throughout the world would seem to be aware of the Complainant's trade mark, due to the popularity and widespread use of AirCard devices.
The Panel therefore finds that the Complainant has sufficient registered trade mark rights in AIRCARD.
The disputed domain name adds an “s” to the Complainant's trade mark, as well as the term “info”. Making the Complainant's trade mark a plural is an insignificant change, which does not prevent a finding of confusing similarity.
“Info” is a generic or descriptive term, which refers to “information”. There have been several previous cases which concern “info” domain names, for example, Deutsche Telekom AG v. DotaCom Corporation, WIPO Case No. D2006-1221. In those cases, the addition of “info” was found not to materially alter the character and substance of the disputed domain name such as to distinguish it from the complainant's trade mark or to render it any less identical or confusingly similar. The same is true in this case. The disputed domain name is confusingly similar to the Complainant's AIRCARD trade mark.
The Panel finds for the Complainant under the first element of the Policy.
To succeed on this element, a complainant must make out at least a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is established, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy lists three ways in which a respondent may demonstrate rights or legitimate interests.
In this case, the Panel can draw certain inferences from the Respondent's failure to submit a substantive response. The limited correspondence provided by the Respondent seems to allude to the argument that the Complainant's trade mark has become generic or descriptive, of the product it represents (similar to Blu Tac, or Band-Aids). However, apart from making a mere assertion in this regard, the Respondent has provided no further evidence to demonstrate that the Complainant's trade mark is generic or descriptive.
The Panel is satisfied, based on the case record before it, that the Respondent is not commonly known by the disputed domain name <aircardsinfo.com>, and has no trade mark or other rights in the term “AirCard” or any similar term. The Panel is similarly satisfied that the Respondent has not been authorized or licensed by the Complainant to use its AIRCARD trade mark.
A significant portion of content on the website operating from the disputed domain name contains news articles and other noncommercial items relevant to “AirCard” type devices (whether these articles are referring to “AirCards” as the Complainant's products or in a generic sense is unclear). However the website at the disputed domain name is not entirely noncommercial - the website also contains a list of sponsored links which are provided by Google. The majority of these links resolved to companies or websites which provide Internet access, wireless communications or Internet devices. The use of sponsored advertisements which provide links to third party competitors as here (or potential competitors) is not a bona fide offering of goods or services under the Policy (see The Coryn Group, Inc., Apple Vacations West, Inc. v. V.S. International, WIPO Case No. D2003-0664).
While gaining revenue from sponsored advertisements is not the only function of the website at the disputed domain name, the Respondent appears to be receiving a commercial gain from the website on a pay-per-click basis. Therefore, any legitimate use of providing genuine news articles and blogging is not in this case sufficient to establish non-commercial or fair use of the disputed domain name.
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and as the Respondent did not submit a substantive response, it has been unable to rebut the prima facie case established by the Complainant.
The Panel finds for the Complainant under the second element of the Policy.
The Panel is able to infer that the Respondent registered and used the disputed domain name in bad faith from the following circumstances:
- the disputed domain name contains a well-known and long standing brand. The Respondent's apparent arguments that the Complainant's trade mark has acquired a generic meaning is evidence of the fact that the Respondent was aware of the Complainant's trade mark. As the disputed domain name was only registered this year (2009) it is reasonable to assume the Respondent was aware of the Complainant and its trade mark prior to registration;
- the content appearing on the website operating from the disputed domain name relates to the Complainant's “AirCard” product (or at least similar products);
- the use of the common word “info” may cause Internet users to believe that the disputed domain name is owned by or affiliated with the Complainant, and provides information on the Complainant's “AirCard” product. This may generate additional traffic for the Respondent, which it may not receive in other circumstances;
- if an Internet user does visit the Respondent's website, they will be exposed to third party links, which can potentially redirect them to websites belonging to the Complainant's competitors. The Respondent meanwhile would seem to receive a commercial profit from users clicking on these third party links;
- the Complainant sent the Respondent a cease and desist letter prior to commencing these proceedings, however the Respondent did not respond and took no corrective action in relation to the disputed domain name or website.
A combination of the above factors leads the Panel to the conclusion that the Respondent has attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark, in breach of Paragraph 4(b)(iv) of the Policy.
The Panel accordingly finds for the Complainant under the third element 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, <aircardsinfo.com> be transferred to the Complainant.
Dated: August 21, 2009