WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Airasia Berhad v. Domain Management / Contact Privacy Inc.
Case No. D2011-0935
1. The Parties
The Complainant is Airasia Berhad of Malaysia, represented by IP Mirror Pte Ltd, Singapore.
The Respondent is Domain Management / Contact Privacy Inc. of United States of America and Canada, respectively.
2. The Domain Name and Registrar
The disputed domain name <airasiaasean.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2011. On May 30, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On May 30, 2011, Tucows Inc. 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 June 3, 2011 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 amendment to the Complaint on June 10, 2011.
The Center verified that the Complaint together with the amendment to 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 June 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2011.
The Center appointed Christos A. Theodoulou as the sole panelist in this matter on July 13, 2011. 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 in these proceedings is Airasia Berhad, a company organized under the laws of Malaysia. The Complainant is a well known company, which provides budget airline services with travel routes in 20 countries including Asean region. The Complainant was registered in 1993 and is operating as an airline since 2001. According to the non-contested allegations provided by the Complainant, the latter is the owner of the mark AIRASIA.
The Complainant owns the following trademarks:
Malaysia trademark registration number 03007064 for AIRASIA.COM registered on June 12, 2003, under class 39 for air transport, air freight, freight forwarding, passenger transport, transport of travelers, transport reservation, travel reservation, travel arrangement, transport of cargo, piloting, warehousing and storage of goods.
CTM trademark registration number 004577417 for AIRASIA registered on 8 September 2006 under class 39 for the same services as the Malaysian trademark.
The Complainant has used the AIRASIA mark as above. The Panel is unaware of any further information relative to this case with regard to the Respondent, except that given by the Complainant and mentioned above.
The disputed domain name <airasiaasean.com> was registered by the Respondent. According to the non-contested allegations of the Complainant, the intention of the Respondent is to benefit and intends to continue benefitting from the goodwill associated with the Complainant’s mark.
The disputed domain name was created on September 4, 2010.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Before engaging in the threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue related to the default of the Respondent. The implications of a default in this case are telling: since the Complainant has the burden of proof, according to paragraph 4(a) of the Policy (“In the administrative proceeding, the Complainant must prove that each of these three elements are present”), the Panel may not just grant the Complainant’s request automatically, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy. See FNAC v. Gauthier Raymond, WIPO Case No. D2004-0881; Sonofon A/S v. Vladimir Aleksic, WIPO Case No. D2007-0668; Gaudi Trade SpA v. Transure Enterprise Ltd, WIPO Case No. D2009-1028.
The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has presented sufficient evidence that it owns the rights in the trademarks AIRASIA.COM and AIRASIA. The Complainant’s registrations for the marks in Malaysia and in the Office for Harmonization in the Internal Market (OHIM) have proven this. The use of the mark in many countries reinforces this ownership. According to the non-contested allegations of the Complainant it is one of its most important assets and “it has come synonymous with budget airline services internationally and in particular among travelers within the ASEAN region”.
The mere fact that the Respondent has added to the AIRASIA mark the suffix “asean” does not affect the essence of the matter: the disputed domain name wholly incorporates the trademark AIRASIA, registered and owned by the Complainant, and in the circumstances of this case is by itself sufficient to establish criterion of similarity for purposes of the Policy, as many panels have found in the past, see e.g. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Koninklijke Philips Electronics N.V. v. K. Harjani Electronics Ltd., WIPO Case No. D2002-1021; DFDS A/S v. NOLDC Inc, WIPO Case No. D2006-1070; American Automobile Association, Inc. v. Bladimir Boyiko and Andrew Michailov, WIPO Case No. D2006-0252.
In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain name <airasiaasean.com> is confusingly similar to the Complainant’s trademark AIRASIA.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of three circumstances which, if found by a panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant’s right to and the legitimate interest in a domain name. These examples are discussed in turn below, with regard to the specific facts of this case.
(i) Demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute: in the Panel’s view, the Respondent is not using the disputed domain name to make any bona fide offering of goods or services. The evidence provided by the Complainant shows that the website associated with the disputed domain name has been used as a pay-per-click website. The Respondent has no rights including trademark rights in AIRASIA, according to the non-contested allegations of the Complainant.
(ii) An indication that the registrant has been commonly known by the disputed domain name, even if it has acquired no trademark rights. In this case, there is no such indication from the present record.
(iii) Legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. Again, in this case there is no such indication from the record.
Furthermore, it is to be noted that the Respondent did not present evidence of any license by the Complainant, with whom there seems to exist no relationship whatsoever.
As a conclusion on this point, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant’s argumentation is based on the four circumstances mentioned in paragraph 4(b) of the Policy, in order to demonstrate the Respondent’s bad faith registration and use of the disputed domain name.
In reviewing the present case, it appears that the Respondent has used the disputed domain name as a pay-per-click website to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s marks as to the source, affiliation, etc., of the website. Further, the Respondent continues to offer the disputed domain name for sale, even after it received the cease and desist notice of the Complainant. This shows that the Respondent has registered and used the domain name in bad faith under paragraph 4(b)(iv) of the Policy.
The Panel also notes the default of the Respondent, which in the present circumstances “reinforces the inference of bad faith registration and bad faith use”. The Hongkong and Shanghai Banking Corporation Limited v. Bill Lynn, WIPO Case No. D2001-0915.
The bad faith of the Respondent may also be inferred through a simple, logical process, as well, in the sense that it would, indeed, be highly unlikely that the Respondent would register randomly and unintentionally a domain name that includes the AIRASIA trademark, in combination with the word “asean” for a pay-per-click website.
As a consequence to the above, the Panel finds that the Respondent registered and used the disputed domain name in bad faith.
The Complainant has successfully proven that the disputed domain name is identical or confusingly similar to trademarks and service marks in which it has rights, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered and used the disputed domain name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <airasiaasean.com> be transferred to the Complainant.
Christos A. Theodoulou
Dated: July 18, 2011