WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Airasia Berhad v. Jeffrey, Paul Raj, Cuzzy Media Sdn Bhd

Case No. DTV2011-0005

1. The Parties

The Complainant is Airasia Berhad of Malaysia, represented by IP Mirror Pte Ltd, Singapore.

The Respondent is Jeffrey, Paul Raj, Cuzzy Media Sdn Bhd of Malaysia, represented by Rajendran & Deen Advocate & Solicitors, Malaysia.

2. The Domain Name and Registrar

The disputed domain name <airasia.tv> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2011. On June 1, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On June 1, 2011, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2011. The Response was filed with the Center on June 26, 2011.

The Center appointed Hariram Jayaram as the sole panelist in this matter on July 4, 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, Airasia Berhad, is a company headquartered in Malaysia, providing budget airline services.

The Complainant has registered the following trade marks:

- AIRASIA.COM (stylized) registered in Malaysia (registration No. 03007064) for services falling in class 39 on June 12, 2003;

- AIRASIA (stylized) registered as a Community Trade Mark (registration No. 004577417) for services falling in class 39 on September 8, 2006.

The disputed domain name was registered on August 15, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant’s Complaint is as follows:

The Complainant is a company headquartered in Malaysia, providing budget airline services with travel routes spanning over 20 countries. Incorporated in Kuala Lumpur, Malaysia since 1993, the Complainant has been operating as an airline since 2001. The AIRASIA brand name is one of the Complainant’s most important assets as it has spent substantially on supporting its brand worldwide, resulting in the brand becoming synonymous with budget airline services internationally and in particular among travelers within Asia. The disputed domain name is confusingly similar to the Complainant’s trade marks AIRASIA.COM and AIRASIA to which it has rights. The dominant letters in the disputed domain name are “airasia” and it is the exact match to the Complainant’s AIRASIA trade mark. The disputed domain name <airasia.tv> features the Complainant’s AIRASIA trade mark in its entirety. The only difference between the disputed domain name and the Complainant’s AIRASIA trade mark is the addition of “.tv” to the disputed domain name, which does not take away the identity of the Complainant’s AIRASIA trade mark, nor make it less confusing. The Complainant thus argues that the disputed domain name is identical to the Complainant’s AIRASIA trade mark/product name.

The Respondent could not be commonly known by the disputed domain name in view of the fact that the Respondent does not own any identical trade marks of the same name. Since the Respondent in this case is clearly not commonly known by the disputed domain name, the Respondent has no rights or legitimate interests in the disputed domain name, in any respect. The Respondent has no rights or legitimate interests in respect of the disputed domain name as the Respondent is not in any way associated with the Complainant and has never sought nor received any authorisation to use the AIRASIA trade mark.

A search on May 9, 2011, revealed that the disputed domain name did not resolve to any website. A cease and desist notice was sent to the Respondent on May 11, 2011. The Respondent has taken no steps to acknowledge the notice or respond to it. Another search on May 30, 2011 revealed that the disputed domain name now newly resolves to a website with links to various other sources. The Respondent has resolved the disputed domain name to this website only after receiving the Complainant’s cease and desist notice. The disputed domain name is legitimately and rightfully connected with the Complainant and use by the Respondent, who has no connection with, nor authorisation from the Complainant is indicative of bad faith. The fact that the Respondent has registered the disputed domain name, has used, and continues to hold and use the disputed domain name even after having received, and ignored the Complainant’s cease and desist notice is evidence that the Respondent is knowingly and opportunistically benefiting, and intends to continue benefiting, from the goodwill associated with the Complainant’s trade mark.

B. Respondent

The Respondent’s Response is as follows:

The disputed domain name is not identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. The Respondent owns and operates “www.airasia.tv” which is a portal that aggregates content from and for the broadcast industry in Asia. The Respondent contends that the portal is about the broadcast industry and nothing to do with the transport industry. The portal at “www.airasia.tv” is a guide to the airwaves of Asia. The Respondent further contends that the fact that AirAsia, the Complainant’s airline, flies through these airspaces, does not make it own the airspaces. The difference between the broadcast industry in Asia and the transportation, tourism and aviation are many worlds apart and are very different in nature. The Respondent further argues that it has rights and legitimate interests in respect of the disputed domain name. The Respondent conceptualizes, creates, produces and posts original content in multiple media formats, for a variety of multi national clients in a kaleidoscope of industries. The Respondent also specializes in assuring that the content of its clients gets the widest audience. The Respondent carries out its services via third party branded medias and via the Respondent’s own extensive network of mediums. The Respondent is a preferred total outsource communications partner for many established entities. The Respondent earned that through diligent creations of brand strategy, management, tracking, analysis and expert implementations. Hence, the Respondent operates many “dot.tv” portals, sites and other landing pages as this is part and parcel of the Respondent’s media industry. The intention to use “www.airasia.tv” is a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark(s) or service mark(s) at issue.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order for the disputed domain name to be transferred to it:

- The disputed domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has registered the AIRASIA trade mark as a Community Trade Mark and AIRASIA.COM trade mark in Malaysia for services falling in class 39. The Complainant provides budget airline services using its AIRASIA and AIRASIA.COM trade marks in 20 over countries. The Complainant has longstanding use of its trade mark AIRASIA and it has registered its trade mark which incorporates the words AIRASIA in Malaysia where the Respondent resides.

The disputed domain name differs from the Complainant’s AIRASIA trade mark only by the addition of the top level domain “.tv”. It is an established principle that in determining whether the disputed domain name is identical or confusingly similar to a trade mark, the top level of a domain name such as “.com”, “.org” or “.net” may be disregarded.

This Panel agrees with the observations made in MPL Communications, Limited and MPL Communications, Inc v. LOVEARTH.net, NAF Case No. FA97086, as follows:

“The only differences between two of contested domain names, ‘paul-mccartney.com’, ‘paul-mccartney.net’, and the Complainant’s McCartney marks are that addition of a hyphen to each of the former and also inclusion of ‘.com’ and ‘.net’, respectively, as a top-level domain… All of these differences are so de minimus and immaterial as to be inadequate to preclude any confusion from occurring. For all practical purposes, the domain name in question is identical to the Complainant’s M[c]Cartney marks.”

The Panel is satisfied that the disputed domain name is identical to the Complainant’s AIRASIA trade mark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made several allegations against the Respondent to demonstrate that the latter does not have rights or legitimate interests in the disputed domain name. The Complainant avers that the Complainant has no relationship with the Respondent; the Complainant has not authorized the Respondent to use the disputed domain name; the Respondent is not commonly known by the disputed domain name and the Respondent does not own any identical trade marks of the same name.

The Respondent on the other hand contends that it has rights or legitimate interests in the disputed domain name. The Respondent owns and operates “www.airasia.tv”, a portal which displays content from and for the broadcast industry in Asia. The Respondent also argues that the use of “www.airasia.tv” is a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trade marks.

Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances which may be submitted by the Respondent in order to demonstrate its rights or legitimate interests. The circumstances are as follows:

“(i) [B]efore any notice to you of the dispute, you had 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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 Complainant has submitted evidence to show that prior to the Complainant’s cease and desist letter which was sent to the Respondent on May 11, 2011, the disputed domain name did not resolve to a website. Only after receipt of the cease and desist notice, the Respondent took steps to link the disputed domain name to a website which provides content as alleged by the Respondent in its Response. The Panel notes that the Respondent has not denied the said assertions of the Complainant. Considering the fact that the disputed domain name was registered in 2005, the Respondent ought to have made within a reasonable time “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”. It has taken the Respondent about 6 years to create a website and this cannot be a reasonable time. The Panel finds that the Respondent has failed to show that before any notice to the Respondent of the dispute, it has used, or made 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.

The Respondent has not indicated in its Response or given any evidence to show that the Respondent is known under the disputed domain name.

The disputed domain name resolves to a website which provides content from and for the broadcast industry in Asia. The said website also includes “adchoices” on the side bar of the website which provides advertisements relating to the Complainant’s services. Thus the Respondent’s use of the disputed domain name cannot be deemed as legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Panel finds that such use and purpose of the disputed domain name without the authorization of the bona fide trade mark owner shows that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name or a bona fide offering of goods and services. In the Panel’s view, the Respondent has failed to rebut the Complainant’s allegations and has failed to demonstrate its rights or legitimate interests in the disputed domain name.

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent has devised the disputed domain name by including the Complainant’s trade mark in its entirety and without an addition of any other element apart from the top level domain name “.tv”. The disputed domain name resolves to a website which albeit offers content not related to the Complainant’s services but provides advertisements relating the Complainant’s services on the side bar of the website. The Complainant’s AIRASIA trade mark is clearly projected on the website at the disputed domain name and used in a trade mark sense without the authorization of the Complainant. The Panel reiterates the fact that the Respondent did not use the disputed domain name for a legitimate purpose prior to the notice of this dispute as submitted by the Complainant. The Respondent was obviously well aware of the existence and use of the trade mark, AIRASIA. Given the Complainant’s trade mark registrations for AIRASIA, its wide reputation in the word, and the fact that both the Complainant and the Respondent reside in the same country, it is unlikely that the Respondent was unaware, at the time of registration, of the existence of the Complainant’s AIRASIA trade mark.

The Respondent’s registration and use of the disputed domain name thus attracts Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Such registration and use of the disputed domain name constitutes registration and use in bad faith within the meaning of the Policy.

In Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312, the panel held:

“Respondent could not be prevented from using Porsche in a non-trademark sense on its web site but this is not the way he was planning to use the Domain Name. Respondent’s projected web site would in fact be accessible through the Domain Name, which would misleadingly appear to be a domain name of the Complainant. Consumers would realize that this is not the case only once they had actually accessed the site […] At this point, however, they had already been diverted and misled.”

The Respondent’s passive holding of the disputed domain name prior to the Complainant’s cease and desist letter does not prevent a finding of bad faith registration and use.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <airasia.tv> be transferred to the Complainant.

Hariram Jayaram
Sole Panelist
Dated: July 18, 2011