1.1 The Complainant is Vrg Linhas Aéreas S.A. of Rio de Janeiro, Brazil, represented by Montaury Pimenta, Machado & Lioce, Brazil.
1.2 The Respondent is Maria Garrido of Nesconset, New York, United States of America.
2.1 The disputed domain name <fly-varig.com> (the “Domain Name”) is registered with GoDaddy.com, Inc (the “Registrar”).
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2010 at which time the registrant of the Domain Name was recorded in the relevant WhoIs record as Domain By Proxy, Inc, the entity that offers a“WhoIs Privacy Service” in conjunction with the Registrar.
3.2 On February 2, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On February 4, 2010 the Registrar transmitted by email to the Center its verification response identifying the Respondent as the underlying registrant in relation to the Domain Name and providing contact information for the Respondent.
3.3 The Center sent an email communication to the Complainant on February 8, 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 11, 2010. The Center verified that the Complaint together with 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”).
3.4 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 15, 2010. In accordance with the Rules, paragraph 5(a), the initial due date for Response was March 7, 2010.
3.5 On February 25, 2010 the Respondent sent an email to the Center in which she claimed that she was out of the country until March 25, 2010 and requested an extension of time to file a Response. On March 1, 2010 the Complainant's representative sent an email to the Center stating that it considered the extension requested by the Respondent to be excessive and suggested that only a 5 day extension be granted. On March 2, 2010 the Respondent responded by providing a copy of a printout of an airline booking to support her contention that she was out of the country. It recorded flights departing from New York on February 22, 2010 and returning on March 22, 2010.
3.6 On March 8, 2010 the Center sent an email to the parties stating that in the exceptional circumstances of this case the Center would grant an extension of time for service of the Response to March 15, 2010.
3.7 The Respondent did not submit any response by March 15, 2010. Accordingly, the Center notified the Respondent's default on March 16, 2010. On March 17, 2010 the Respondent sent two emails claiming that she had received no response to her request and stating that “an acceptable extension” would be after her return date on March 23, 2010.
3.8 The Center appointed Matthew S. Harris as the sole panelist in this matter on March 25, 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.
3.9 As at the date of the decision the Respondent has not sought to file a late Response in these proceedings.
4.1 The Complainant is a Brazilian airline that is the successor in business to Viação Aérea Rio Grandense, more commonly known as “Varig”. The “Varig” airline was established in 1927. The Complainant presently offers nearly 800 daily flights to 49 destinations.
4.2 The Complainant is the owner of various trade marks around the world that comprise or incorporate the word “Varig” including
(i) Brazilian Registered Trade Mark No. 006.129.617 granted on September 10, 1975, in Brazilian National Class 38:30 in respect of the word “Varig”.
(ii) United States Registered Trade Mark No. 2206117 in class 39 for the word “Varig” in a stylized form.
4.3 The Complainant also uses the domain name <varig.com.br> in connection with its business activities.
4.4 The Domain Name was registered on April 1, 2009.
4.5 Little is known about the Respondent. She would appear to be an individual who resides in New York.
4.6 As at the date of the decision the Domain Name is being used in connection with a domain “parking” or “pay-per-click” website produced by the Registrar. The sponsored links displayed (when viewed from the United Kingdom, which is where the Panel is located) include “Croatia Airline Flights”, “Fly KLM to Lagos” and “Singapore Airlines”.
5.1 The Complainant refers to its registered trade marks. It contends that the Domain Name is confusingly similar to those trade mark as the “main portion [of the Domain Name] is a reproduction of” the Complainant's mark and that the addition of the generic term “fly” is not sufficient to escape the finding of confusingly similarity.
5.2 The Complainant refers to various cases decided under the Policy that are said to support the contention that if a complainant can show a prima face case of no rights or legitimate interests then the burden passes to the respondent to show the existence of that right or legitimate interest. In this respect, it contends that the Respondent has no trade mark rights in the term “Varig”, the Respondent has not been licensed by the Complainant to use this term, and the Respondent is not commonly known by the name Varig.
5.3 The Complainant also contends that “the only purpose of [the Domain Name] appears to be the gain of profits, as a result of advertisements of others web sites related to passengers transportation”, but no supporting evidence is offered in relation to that contention.
5.4 On the issue of bad faith the Complainant asserts that “Respondent has deliberately registered the domain name in dispute to attract the attention of internet users, by creating a likelihood of confusion with the Complainant's mark, and to obtain commercial gains by displaying in its website several pay-per-click advertisements”. These advertisements are said to be directed to the Complainant's competitors. However, again no supporting evidence is produced to support these assertions. In particular, the Complainant does not annex copies of the web pages that are said to be operating from the Domain Name.
5.5 Further, the Complainant contends that the mark “VARIG” is:
“well known in relation to air passenger transportation and has been used long before the disputed domain name was registered. In view of this, it is clear that Respondent must have been aware of the Complainant's rights in the mark and, further, that Respondent knowingly infringed the Complainant's trademark when it registered the subject domain name”.
5.6 The Respondent did not reply to the Complainant's contentions within the extended period allowed by the Center to do so. Further, the Respondent has not sought to file a Response out of time.
6.1 The Panel is of the view that there are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 In this respect it is necessary for the Panel to comment briefly on the Respondent's requests for an extension in this case. At one stage in correspondence the Respondent seemed to be complaining that the Center has not acceded to her request for an extension. In the Panel's view these complainants directed at the Center have no reasonable foundation.
6.3 The Policy provides for strict timetables in the conduct of proceedings. Paragraph 5(d) of the Rules provides that the Center can only extend the time for service of a Response in exceptional circumstances. In this case by the Respondent's own admission proceedings had commenced 7 days in advance of her departure from the country. Nevertheless, it appears that the Respondent took no steps to prepare her Response in that time. Instead, she waited for 10 days before seeking an extension (in which it appears she misrepresented the date upon which she would return to New York).
6.4 The Center did not ignore the Respondent's request for an extension as she seems to allege. Instead the Center granted an 8 day extension over the 20 days granted by the Rules. Only after the Respondent had been notified of her default did the Respondent raise any further objection.
6.5 Further, no attempt has been made by the Respondent since her return to New York to file a late Response. It is possible that the Panel would have refused to take that late Response into consideration (see, for example the discussion in Christian Dior Couture v. Christina Dior/Chris Vella, WIPO Case No. D2009-0032). Nevertheless, it is difficult for a respondent to complain about an insufficient extension in circumstances where when finally able to put in a Response, it does not do so.
6.6 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.7 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”
6.8 The Panel accepts that the Complainant is the owner of a number of trade marks that comprise the word “Varig”, whether as ordinary or stylized text. The Panel also accepts that the Domain Name can only be sensibly understood as the term “Varig” in conjunction with the term “fly” and that the word “fly” can be understood as an allusion to airline services of the sort offered by the Complainant and the subject matter of a number of the Complainant's marks. The Panel therefore accepts that the Domain Name is confusingly similar to a number of marks in which the Complainant has rights.
6.9 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
6.10 The Complainant contends that this is a case where it has made out a prima facie case as to a lack of rights and therefore the burden of proof in this respect passes to the Respondent. The Panel accepts that there are many cases in which panels have adopted this approach. However, the Panel prefers not to do so in this case.
6.11 Considerations of the burden of proof can be a useful approach where it is unclear what a respondent is doing (for example, where the disputed domain name is merely held and does not appear to be being used for any purpose). But more often than not the activities of the respondent are clear and a view can be formed from those activities whether or not on the balance of probabilities a right or legitimate interest exists. Of course, in reaching that conclusion the evidence may be one sided if the respondent does not put in a response. It is possible that had the respondent done so, a different conclusion might have been reached. However, this is not so much a question of a shifting of the burden of proof but instead simply an assessment on what is the most likely state of affairs on the evidence that is actually before the panel.
6.12 In this case the Complainant contends that the Respondent is using the Domain Name to generate revenue from “pay-per-click” advertising from sponsored links associated with its competitors. The Complainant rather unhelpfully simply asserts this and puts in no evidence to support that contention. Providing a print out of what actually is happening on a webpage operating from a disputed domain name is not difficult and should normally form part of any complaint.
6.13 Nevertheless, the Panel ultimately accepts the Complainant's contentions in this respect. Assertions in a submission can in appropriate circumstances be treated as evidence in proceedings under the Policy (even if the fact that they are unsupported means that they may have limited evidential weight – see for example the discussion of this issue in Intrum Justitia Licensing AG v. PieterFloris, WIPO Case No. D2009-0914). Further, there is the fact that a “pay-per-click” site is operating from the Domain Name at the date of this decision.
6.14 It is possible for use of a domain name for a parking site with advertising revenue generating sponsored links to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. For example, if a registrant intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a third party's rights and reputation in that term, then it may have a legitimate interest in the domain name (see Section 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). On the other hand, if the owner of the domain name in question is using it with such a service in order to unfairly capitalise upon or otherwise take advantage of a similarity with another's mark then such use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).
6.15 Essentially, therefore, in this case the assessment of rights or legitimate interests boils down to the question: is the Respondent using the Domain Name with the Complainant's marks in mind and with a view to taking unfair advantage of the reputation of those marks?
6.16 This is a question that is addressed in greater detail when assessing the question of bad faith. For the reasons given under that heading below, the Panel has reached the unequivocal conclusion that the Domain Name has been both registered and used with a view to taking unfair advantage of the reputation of the Complainant's trade marks. In the circumstances, the Panel is able to reach a positive finding that the Respondent has no right or legitimate interest in the Domain Name. Accordingly, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
6.17 As the Panel has already stated, it seems clear that the Domain Name has and is being used in connection with a “pay per click” or “domain name parking” service. It is now well-known how these sorts of services operate. A domain name owner “parks” the domain name with a domain name parking service provider. The service provider then generates a page that incorporates sponsored links or links to sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name (see, for example, Owens Corning v. NA, WIPO Case No. D2007-1143).
6.18 The generation of revenue from domain name parking activities is not necessarily activity in bad faith. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant is using the domain name in this manner because of its similarity to a mark or name of another person in the hope and expectation that that similarity would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page (see, for example, Express Scripts, Inc. v. Windgather Investments Ltd, supra). The confusion that is usually relevant here is the confusion that draws the Internet user to the respondent's website in the first place (for example, confusion that leads an Internet user to type the domain name into his Internet browser). It does not matter that when the Internet user arrives at the “pay per click” site that it then becomes clear that the website is unconnected with the trade mark holder.
6.19 It is clear beyond any reasonable doubt that the Domain Name has in this case been used in this manner to take unfair advantage of confusion with the Complainant's mark. The Panel is persuaded that the reputation of the VARIG mark is substantial and extends beyond Brazil. Further, as far as the Panel is aware the term “Varig” is a manufactured term, not having any descriptive meaning in any language. Last, but not least there is the addition of the word “fly” to that mark in the Domain Name. This strongly indicates that the Respondent is and was well aware of the mark's association with the airline industry. Therefore, not only has the Domain Name been used in bad faith, but it is reasonable to conclude that it was also registered in bad faith
6.20 Accordingly, the Complainant has made out the requirements 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, <fly-varig.com> be transferred to the Complainant.
Matthew S. Harris
Dated: March 30, 2010