Complainant is Emirates Group Headquarters of Dubai, United Arab Emirates, represented by Baker & McKenzie of Hong Kong SAR of China.
Respondents are Domain Discreet and Ahmed Bin Subaih of Funchal, Madeira, Portugal and Dubai, United Arab Emirates, respectively.
The disputed domain name <emiratesholidays.com> is registered with Register.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2010. On May 20, 2010, the Center transmitted by email to Register.com a request for registrar verification in connection with the disputed domain name. On May 21, 2010, Register.com 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 Complainant on May 28, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 1, 2010. The Center verified that the Complaint 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 Respondents of the Complaint, and the proceedings commenced on June 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2010. Respondents did not submit any response. Accordingly, the Center notified Respondents' default on June 23, 2010.
The Center appointed Nasser A. Khasawneh as sole panelist in this matter on June 30, 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.
Complainant is a large global airline and travel services company. Complainant's corporate group owns an extensive portfolio of international trademark registrations for both the marks EMIRATES and EMIRATES HOLIDAYS. Many of Complainant's EMIRATES HOLIDAYS trademark registrations were made in the 1990s either for the words EMIRATES HOLIDAYS alone or in conjunction with a logo. In most instances, however, the words “EMIRATES HOLIDAYS” are the predominant feature of the logo registrations. Among Complainant's many earlier registrations for the EMIRATES HOLIDAYS mark are the following: French trademark registration No. 95601772 registered December 19, 1995 in classes 39 and 42; United Kingdom registration No. 2023708 registered May 17, 1996 in classes 39 and 42, along with United Kingdom registration No. 2399015 registered August 10, 2005 in classes 39 and 43.
The disputed domain name was registered January 2, 2000 and routes to a search page listing links to Complainant's website and to other travel services and airline industry websites. Although the precise composition of the webpage to which the disputed domain name resolves has changed over the years, it has regularly referred to airlines and the travel industry and contained third-party referral links.1
Complainant provides much detail about the large size and prominence of its airline and travel services and its extensive efforts to promote its business. In summary, Complainant's legal contentions are that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; that Respondents have no rights or legitimate interests in respect of the disputed domain name; and the disputed domain name was been registered and has been used in bad faith.
In its allegations that the disputed domain name is confusingly similar to Complainant's EMIRATES trademarks, Complainant notes that the term “Emirates” in the context of the Complainant's trade mark has not been treated by UDRP panels as a geographic, term but one with a significant reputation-- which has also been accepted for trademark registration by the European Community and the United Kingdom. See Emirates v. Stichting Roos Beheer, Czech Arbitration Court Case No. 05405; Emirates Corporation v. 2220 Internet Coordinator, WIPO Case No. D2005-1311.
Complainant seeks transfer of the disputed domain name.
Respondents did not reply to Complainant's contentions.
The Rules require the Panel to decide a 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. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondents have no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if Respondents do not submit a response. See, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
The Panel agrees that the disputed domain name <emiratesholidays.com> is identical to the EMIRATES HOLIDAYS marks in which Complainant has rights.
Panels disregard the gTLD suffix in determining whether a disputed domain name is identical or similar to a complainant's marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-13l5.
The Panel concludes, therefore, that Complainant has established the first element of paragraph 4(a) of the Policy. Since the Panel finds that the disputed domain name is identical to trademarks of Complainant, it is unnecessary to address Complainant's second argument that the disputed domain name is confusingly similar to Complainant's EMIRATES trademarks.2
The Panel also concludes that Respondents have no rights or legitimate interests in the disputed domain name.3
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(1) the use of the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name; or
(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if Complainant makes out a prima facie case and Respondent enters no response. See id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
Complainant avers that Respondents are not commonly known by the disputed domain name and that Complainant has not authorized Respondents to use Complainant's marks. In the absence of a response by Respondents, the Panel accepts as true the factual allegations that Complainant has not authorized the use of its trademarks and that Respondents are not commonly known by the disputed domain name.
Complainant also contends that Respondents do not have rights or legitimate interests because Respondents deliberately chose the disputed domain name to confuse consumers and attract them to visit the “emirates-holidays.com” website, which displays links to third-party travel-related services.
In making this argument, Complainant appears to suggest that the use of a disputed domain name to route users to a website displaying links to third-party sites, rather than offering products or services directly on the website itself, cannot be legitimate. Since the website to which the disputed domain name resolves displays links to third-party sites offering products and services in direct competition with Complainant, the Panel is able to conclude that there are no rights or legitimate interests, without embracing this overly broad suggestion.4
Complainant also in essence alleges that Respondents are not making a legitimate noncommercial or fair use, since Respondents earn pay-per-click revenues from the advertising links that appear on the webpage to which the disputed domain name resolves.
With this latter allegation the Panel agrees. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See also Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya ILtd, WIPO Case No. D2006-1079.
The Panel finds that Complainant has established a prima facie case. Refraining from submitting a response, Respondents have brought to the Panel's attention no circumstances from which the Panel could infer that Respondents have rights or legitimate interests in making use of the disputed domain name.
The Panel rules therefore that Complainant has established the second element of paragraph 4(a) of the Policy.
The Panel further finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether the trademarks in question are well-known, whether there is no response to the complaint, and other circumstances. See e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Given the widespread use Complainant's EMIRATES HOLIDAYS marks, especially in the United Arab Emirates, where the individual Respondent maintains his address, the Panel infers that the registrant had actual knowledge of Complainant's trademarks before registering the disputed domain name. This inference is strengthened by the fact that according to the Registrar Respondent Ahmed Bin Subaih also maintains an address in the United Kingdom, where, as noted above, the EMIRATES HOLIDAYS trademark has been registered since 1996. Complainant had also registered the extremely similar domain name <emirates-holidays.com> in 1997, well before the registration of the disputed domain name.
The Panel infers that the disputed domain name was registered with the intention to attract Internet users to the “www.emiratesholidays.com” website for commercial gain, by creating a likelihood of confusion with Complainant's marks. Under the circumstances, therefore, the Panel concludes there is no question that the disputed domain name was registered in bad faith. E.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co, WIPO Case No. D2000-0163; Akbank Turk A.S. v. Arif Bilgin, The Diamond Bar, WIPO Case No. DME2009-0009.
Examination of the webpage to which the disputed domain name routes users reveals that the disputed domain name is used not only to promote Complainant's products, but also to promote the products of Complainant's competitors. The Panel concludes that this activity demonstrates bad faith use by Respondents. mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., supra; Pfizer Inc. v. jg a/k/a Josh Green, supra (citing Google, Inc v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; and Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088). The Panel further finds that Respondent's failure to reply to the Complaint is cumulative evidence of bad faith use.
Having found that the circumstances establish bad faith registration and use, the Panel concludes that the requirements of Policy paragraph 4(a)(iii) are fulfilled.
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 <emiratesholidays.com> be transferred to Complainant.
Nasser A. Khasawneh
Dated: July 14, 2010
1 The Panel has undertaken limited factual research by viewing the website to which the disputed domain name resolves, and by viewing archives at “www.archive.org/index.php”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5.
2 The Panel notes that the Complaint provides an extensive list of trademark registrations for the EMIRATES HOLIDAYS and EMIRATES marks, which are allegedly current registrations. However verification with the relevant national trademark offices (and OHIM) reveals that several of these registrations have lapsed or are no longer in effect. It would have been helpful for Complainant to acknowledge the lapsed status of listed marks and to provide a clear and accurate explanation of the current registration status of its EMIRATES HOLIDAY trademarks.
3 Respondent Domain Discreet is a service provided by the registrar of the disputed domain name. Accordingly, the Panel's references in this decision to Respondents' conduct, intention and knowledge are meant to refer to the conduct, intention and knowledge of the individual respondent, Ahmed Bin Subaih.
4 E.g., Gold Medal Travel Group plc v. Damir Kruzicevic, WIPO Case No. D2007-1902 (“Because the website to which the domain name resolved contained advertising that competed with the services offered by Complainant, the Panel finds the use was not legitimate.”). In fact, several panels have found that legitimate interests may arise from the use of disputed domain names to attract Internet users to sites using click-through or sponsored links to third-party sites. See, e.g., Bradley D Mittman MD dba FRONTRUNNERS® v. Brendhan Hight, MDNH Inc, WIPO Case No. D2008-1946; National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044.