The Complainant is Transportes AEROMAR S.A. SE C.V. of Mexico DF, Mexico, represented by Soroker - Agmon, Advocates & Patent Attorneys, Israel.
The Respondent is Aeromar, Inc. of California, United States of America (“U.S”).
The disputed domain name <aeromar.com> is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2010. On January 22, 2010, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On January 22, 2010, Network Solutions, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 3, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 8, 2010. The Center verified that the amended 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 February 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2010. The Response was filed with the Center on January 24, 2010.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on March 5, 2010. 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 Mexican airline company, which began operations in January, 1987. The Complainant currently owns a fleet of executive airplanes, consisting of four ATR 42-320 airplanes and ten ATR 42-500 airplanes. The Complainant offers passenger, charters, cargo, mail and parcel flights, primarily within Mexico. The Complainant's full business name is Transportes Aeromar S.A. DE C.V., but it carries on business as AEROMAR. The AEROMAR name has been displayed on its airplanes and flight tickets since its inception in 1987. The Complainant owns several trademark registrations for the word “aeromar”, including Mexican Registration No. 363166 (Filing Date November 25, 1987); Mexican Registration No. 359647 (Filing dated November 1, 1988); and U.S. Registration No. 2,440,926 (Filing Date April 3, 2000). The Complainant also operates several websites, including “www.aeromar.com.mx” and “www.aeromar.aero”.
The Respondent registered the domain name <aeromar.com> on October 27, 1995. The domain name <aeromar.com> reverts to a website that provides a listing page for the sale of airplanes, information and sales of products for the interior of airplanes, links to websites that contain information on weather, FAA Regulations, aviation model forecasts, weather channels, and aviation clubs and other aviation information. The website does not itself provide any content relating to commercial flight services. The website's main webpage displays the following message:
“AEROMAR.COM. INTERNET CONSULTANTS. This domain is not related for Aeromar Airline Company in any way. Messages, postings, emails etc. intended for officers, employees, customers or vendors of the airline company will not be forwarded. If you are trying to contact this company, try www.aeromarairlines.com.”
The Respondent's website does not provide a link to “www.aeromarairlines.com”. However, any user who accesses that website will be led to a “click-through” site offering links to competitors of the Complainant which offer identical services. The suggested website is not connected to the Complainant or the Respondent.
The Complainant contends that the domain name <aeromar.com> is confusingly similar to the Complainant's trademark AEROMAR.
The Complainant owns trademark registrations for AEROMAR, namely Mexican Registration No. 363166 (November 25, 1987); Mexican Registration No. 359647 (November 1, 1988); U.S. Registration No. 2,440,926 (April 3, 2000); Mexican Registration No. 668,095 (June 30, 2000); Mexican Registration No. 25842 (November 14, 2002); Mexican Registration No. 887352 (April 26, 2005) and Mexican Registration No. 887764 (April 26, 2005).
The Complainant contends that the domain name <aeromar.com> is identical to the Complainant's trademark AEROMAR. The Complainant submits that the “.com” designation should not be taken into consideration when examining the identity or similarity of trademarks and domain names. Accordingly, the Complainant contends that the domain name <aeromar.com> is confusingly similar to the Complainant's trademark.
The Complainant contends that the Respondent cannot demonstrate or establish any rights or legitimate interests in the disputed domain name. The Respondent has not been licensed or otherwise permitted to use the trademark as a domain name or otherwise. The Complainant also contends that the Respondent is not making a legitimate or fair use of the domain name, or making any bona fide offering of goods and/or services. The Complainant submits that the Respondent is using the disputed domain name <aeromar.com> in connection with a parking site, which diverts Internet users looking for the Complainant's site to another site which is a “click-through” site offering links to competitors of the Complainant. This is characterized as a “honeycomb” trap.
The Complainant contends that the domain name <aeromar.com> was registered and is being used in bad faith based on the following factors: (i) Respondent was aware of the Complainant's rights in the AEROMAR trademark at the time the Respondent registered a confusingly similar domain name; and (ii) the Respondent registered and is using a confusingly similar domain name in connection with the operation of a website which provides a link to Internet users looking for the Complainant's website, to a second site which offers links to competitors of the Complainant.
The Respondent has filed a response in these proceedings. The Respondent contends that its business is called Aeromar, Inc., and that it is the legitimate owner of the domain name <aeromar.com>. The Respondent submits that the domain name was registered legitimately more than 14 years ago, renewed regularly and employed in a number of appropriate and lawful transactions through the World Wide Web.
According to paragraph 4(a) of the Policy, in order to succeed, the Complainants must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant has established its trademark rights in AEROMAR as evidenced by the trademark registrations submitted with the Complaint, namely Mexican Registration Nos . 363166; 359647; 668095; 25842; 887352; 887764; and U.S. Registration No. 2,440,926.
The Panel is also prepared to find that the domain name <aeromar.com> is confusingly similar to the Complainant's trademark AEROMAR. The domain name replicates the Complainant's trademark in its entirety and the addition of the “.com” designation does not serve to distinguish the domain name from the Complainant's trademark in any meaningful way.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
The evidence submitted by the Complainant does not support a finding that the Complainant had a significant reputation outside Mexico in the AEROMAR trademark at the time the Respondent registered the domain name, namely by October 27, 1995, or thereafter. The Complainant operates a regional airline service, offering flights primarily within Mexico. The submitted evidence indicates that the Complainant does not appear to offer any services in or to California, where the Respondent carries on business. The Complainant's U.S. Trademark Registration was not filed until April, 2000, which was five years after the Respondent registered the disputed domain name <aeromar.com>. Accordingly, in the absence of proof of reputation outside Mexico, at the time of domain name registration and the lack of international trademark rights, the Panel is not prepared to infer that the Respondent was aware of the Complainant's rights in the AEROMAR trademark at the time of registration of the subject domain name.
The Respondent's website <aeromar.com> provides insight into the history and nature of the Respondent's business and use of the subject domain name. The Respondent has created and operates a website at “www.aeromar.com” that appears to provide a variety of bona fide services and/or goods. The website includes a webpage that lists airplanes that have been available for sale and purchase, a page that provides information about the sale of products for the interior of airplanes, links to websites that provide information regarding weather, FAA Regulations and other aviation-related materials. The website does not offer any commercial flight services, and is not by its nature competitive with the business of the Complainant. Accordingly, the Respondent's website itself provides evidence in support of the Respondent's claim that it has legitimately used the domain name in question.
The Complainant has focused its submissions on the notice that appears on the main page of Respondent's website. However, a careful examination of the contents of the notice does not necessarily support the Complainant's analysis that the Respondent has created a “honeycomb” trap to wrongfully divert and redirect Internet users. The notice can also be viewed as an attempt to direct users to look elsewhere for a link to the Complainant. The fact that the suggested website is not a website of the Complainant may represent a mistake on the part of the Respondent, but it does not serve to eradicate or even outweigh the other indicia of legitimate interests on the part of the Respondent. Complaints against the operation of the website “www.aeromarairlines.com” ought to be brought against the owner of that domain name, and not laid at the door of the Respondent.
Based on the evidence, the Panel is not prepared to infer that the Respondent was aware of the Complainant and the Complainant's rights in the trademark AEROMAR in October 1995, when it registered the domain name <aeromar.com>. On the balance of probabilities, it appears more likely that the Respondent had a legitimate right and interest when it registered the domain name. Further, the history and content of the Respondent's website is consistent with a bona fide offering of goods and services different from those of the Complainant. The fact that the Respondent's domain name and associated website have existed for more than 14 years, apparently without complaint, also weighs in favour of the legitimacy of the Respondent's conduct.
Accordingly, the Panel finds that the Complainant has not satisfied the second requirement of paragraph 4(a) of the Policy.
In view of the findings on legitimate rights and interests above, it is not necessary for the Panel to consider bad faith.
For all the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Dated: March 19, 2010