WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Amadeus IT Group, S.A. v. Whoisguard, Inc. / Brendan De Celis
Case No. D2016-0415
1. The Parties
The Complainant is Amadeus IT Group, S.A. of Madrid, Spain, represented by Ubilibet, Spain.
The Respondent is Whoisguard, Inc. of Panama, Panama / Brendan De Celis of Northmead, Australia, self-represented.
2. The Domain Names and Registrar
The disputed domain names <amadeusnavitaire.com> and <navitaireamadeus.com> are registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2016. On March 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 2, 2016, the Registrar 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 March 3, 2016 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 March 3, 2016.
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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 24, 2016. The Response was filed with the Center on March 5, 2015.
The Center appointed William R. Towns as the sole panelist in this matter on March 15, 2016. 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 is a Spanish-based provider of technology solutions for the global travel industry. The Complainant uses the trademark AMADEUS to identify its products and services, and owns registrations for the AMADEUS mark in numerous jurisdictions, included the European Union, the United States of America, Canada, Mexico, Spain, and Australia. The Complainant has more than 10,000 employees in locations around the world. The Complainant also has registered more than 300 domain names incorporating its AMADEUS mark. The Complainant’s Australian trademark registrations for the AMADEUS mark date back as far as 1988.
In 2015 the Complainant agreed to acquire Navitaire, a subsidiary of Accenture that provides technology and business solutions to the airline industry. The acquisition was reported beginning in July 2015 by Bloomberg, the BBC, and later by Reuters.
The Respondent registered the disputed domain names <amadeusnavitaire.com> and <navitaireamadeus.com> on January 16, 2016. The disputed domain names currently do not resolve to an active website, but have been used by the Respondent with parking pages populated with advertising links for travel related services, including links identifying the Complainant’s services.
5. Parties’ Contentions
A. Complainant
The Complainant maintains that the disputed domain names are confusingly similar to its AMADEUS mark, as each domain name incorporates the Complainant’s mark in its entirety. The Complainant submits that the inclusion of “Navitaire” in the disputed domain names does not serve to distinguish the disputed domain names from the Complainant’s mark, given the Complainant’s acquisition of Navitaire from Accenture and the publicity accompanying that event.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant notes that the Respondent has not been authorized to use the Complainant’s mark, and is not commonly known by the disputed domain names. Further, according to the Complainant, the Respondent registered the disputed domain names at a time when the Complainant’s AMADEUS mark was well-established worldwide and the acquisition of Navitaire had already occurred. The Complainant asserts that “Navitaire” also is a well-known mark.
The Complainant points out that the Respondent has used the disputed domain names to generate pay-per-click (“PPC”) advertising revenues, and that the Respondent discontinued this use only after the Complainant issued a cease and desist letter. The Complainant submits that the Respondent’s appropriation of the AMADEUS and “Navitaire” marks for this purpose does not constitute use or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services, nor any legitimate noncommercial or fair use of the disputed domain names.
The Complainant submits that the Respondent registered and is using the disputed domain names in bad faith. According to the Complainant, it is inconceivable that the Respondent when registering the disputed domain names was unaware of the Complainant’s rights in the AMADEUS mark. The Complainant contends that the “Navitaire” mark also is well-known in Australia, where the Respondent purportedly resides. The Complainant further cites as evidence of bad faith the Respondent’s use of the disputed domain names with PPC websites, the Respondent’s use of a proxy service to conceal his identify, and the Respondent’s refusal to transfer the disputed domain names after receiving the Complainant’s cease and desist letter unless compensated. Finally, the Complaint argues that the Respondent’s current passive holding of the disputed domain names does not militate against a finding of bad faith.
B. Respondent
The Respondent asserts that the disputed domain names were registered in anticipation of the birth of his second child, which he relates he and his wife are expecting in August 2016. The Respondent submits that registering a domain name for one’s child is not an uncommon practice, particularly as domain names become “more and more scarce”.
According to the Respondent, the disputed domain names were chosen to honor his late grandfather, Antonio De Celis. The Respondent states that Antonio De Celis was a British citizen of Maltese descent who served in the Royal (British) Navy in World War II. According to the Respondent, the surname “De Celis” is Latin, and mean “of the heavens”. The Respondent further explains that “Amadeus” means “God’s love” in Latin, “navita” is a Latin word meaning “the sailor”, and “ire” is a Latin word meaning “goes to.”
The Respondent thus submits that the disputed domain names literally translate to “The Sailor Goes to God’s Love From Heaven”, which honors his grandfather as “the sailor with a great love for God who has now gone to heaven”. According to the Respondent, both he and his grandfather were very fond of Wolfgang Amadeus Mozart, and the Respondent submits he is fluent in Latin, as was his grandfather. The Respondent maintains it is no coincidence that he has a strong connection to the name Amadeus and the Latin language. The Respondent further explains that the two disputed domain names were chosen because they are masculine and feminine in form, and he and his wife have chosen to keep the gender of their child a surprise.
The Respondent contends that the disputed domain names are not confusingly similar to the Complainant’s AMADEUS mark, asserting that the Complainant does not have exclusive rights to the name. The Respondent, relying on a search report he generated, submits that out of 258 active trademarks for “Amadeus”, the Complainant owns less than 1/3 of these marks.1 While the Respondent acknowledges that the Complainant agreed to acquire Navitaire, he maintains he was “absolutely” unaware of this when registering the disputed domain names. He also asserts that there are other parties in Australia using “Navit” and “Aire” brands.
The Respondent asserts rights and legitimate interests in the disputed domain names. The Respondent maintains he registered the disputed domain names for legitimate, noncommercial use, and not to profit from the trademarks of others. The Respondent contends that he was completely unaware of the Complainant or the Complainant’s brand prior to receiving the Complainant’s “strongly worded” cease and desist letter. He denies any conscious choice to register domain names combining the trademarks in question. According to the Respondent, Australia is not a country where the Complainant has a high profile, and the Complainant has produced no data to support any strong presence in Australia. The Respondent further insists that “Navitaire” is not well-known in Australia.
The Respondent contends that none of the sources provided by the Complainant regarding its planned acquisition of Navitaire are primary news sources in Australia. The Respondent acknowledges that, based on a search he conducted after receiving notice of this dispute, he became aware of an article in the finance section of a “relatively popular Australian news source” on July 2, 2015. The Respondent rhetorically asks why someone considering profiting from that knowledge would wait until January 16, 2016, almost one-half year later, to execute on such a plan.
The Respondent denies having registered and used the disputed domain names in bad faith. He maintains has never placed an advertisement on his website offering to sell the disputed domain names. The Respondent insists he offered to sell the disputed domain names only in response to the Complainant’s demand that he pay for the “costs of the claim”. While he acknowledges that he chose to utilize parking pages provided by the Registrar, he asserts he was not aware of the advertising on the websites, and once he realized this (after being contacted by the Complainant) asked the Registrar to remove the advertising. The Respondent denies his use of a privacy protection service constitutes bad faith, noting that he promptly revealed his true identify and email address upon being contacted by the Complainant. He denies any intent to use (or passively hold) the disputed domain names in order to profit from the Complainant’s mark.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See also Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules, and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain names are confusingly similar to the Complainant’s AMADEUS mark, in which the Complainant has demonstrated rights through registration and use. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.
Applying this standard, the disputed domain names are confusingly similar to the Complainant’s mark for purposes of the Policy. The disputed domain names incorporate the Complainant’s AMADEUS mark in its entirety, and the addition of “Navitaire” does not distinguish the disputed domains name from the Complainant’s marks, particularly given the Complainant’s planned acquisition of Navitaire and the attendant publicity dating back to July 2015.
Although the generic Top-Level Domain (“gTLD”) may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant’s mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. It is undisputed that the Respondent has not been commonly known by the disputed domain names. The Respondent, without the Complainant’s authorization or consent, has registered two domain names that are confusingly similar to the Complainant’s AMADEUS mark. The disputed domain names have been used by the Respondent with pay-per-click parking pages populated with advertising links for travel related services. After the Complainant learned of this and demanded the transfer of the disputed domain names, the Respondent offered to transfer the disputed domain names for a charge of USD 8,000.00.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not come forward with credible evidence of rights or legitimate interests in respect of the disputed domain names. Based on the record in this proceeding the Panel considers it more likely than not that the Respondent was aware of the Complainant and the Complainant’s AMADEUS mark when registering the disputed domain names. The Panel further concludes that the Respondent most likely registered the disputed domain name in order to trade on the goodwill and reputation of the Complainant’s mark through the creation of Internet user confusion. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774.
Based on the totality of facts and circumstances in the record, the Panel considers that the Respondent’s proffered explanation for acquiring the disputed domain names is most likely a pretext. Such a finding is reinforced by the Respondent’s use of the disputed domain names to generate pay-per-click revenues from advertising links, which the Respondent discontinued only after receiving the Complainant’s cease and desist letter. Further, in response to the Complainant’s letter the Respondent agreed to transfer the disputed domain names only if paid a “fee” of USD 8,000.00. Personalized domain names acquired by parents for their children typically reflect their children’s names. They are not typically domain names that reflect the trademarks of others, and which are first used with pay-per-click advertising and then offered for sale to the trademark owner.
In view of the foregoing, the record does not reflect that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers within the meaning of paragraph 4(c)(iii) of the Policy. Nor does the record reflect the Respondent’s use or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. As noted above, the Respondent has not been authorized to use the Complainant’s marks, and has not been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent’s primary motive in relation to the registration and use of the disputed domain names was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights, whether by creating a likelihood of confusion with the Complainant’s mark to attract Internet users to the Respondent’s pay-per-click websites, or by attempting to sell the disputed domain names to the Complainant for an amount greatly in excess of the out-of-pocket costs directly related to the domain names. The Respondent’s passive holding of the disputed domain names does not preclude a finding of bad faith registration and use in the circumstances of this case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <amadeusnavitaire.com> and <navitaireamadeus.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: March 29, 2016
1 This search report indicates that the Complainant is the holder of multiple Australian trademark registrations for AMADEUS, several of which were initially registered in 1988.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter “WIPO Overview 2.0”), paragraph 1.2.