The Complainant is oneworld Alliance of Vancouver, British Columbia, Canada, represented by Brinks Hofer Gilson & Lione, United States of America.
The Respondent is Thomas Ruane of Dublin, Ireland.
The disputed domain name <oneworldexplorer.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2010. On January 13, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On January 13, 2010, 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 January 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2010. The Response was filed with the Center on February 8, 2010.
The Center appointed Andrew Brown QC as the sole panelist in this matter on February 19, 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.
A Supplemental Filing was filed by the Complainant on February 22, 2010. The Panel agreed to receive and consider the Supplemental Filing on the basis that the Respondent was also given the opportunity to file a Supplemental Filing strictly in reply. The Respondent's filing was submitted on March 8, 2010.
The Complainant is a limited liability company registered in Delaware, United States. It is a global alliance comprising 11 of the world's biggest airlines. The alliance was launched in February 1999 and at that time comprised American Airlines, British Airways, Canadian Airlines, Cathay Pacific and Qantas. Six further airlines subsequently joined. Since formation, it claims to have continuously used the ONEWORLD trademarks comprising the word mark ONEWORLD, ONEWORLD logo, ONEWORLD ALLIANCE and ONEWORLD EXPLORER.
The Complainant has provided evidence of its U.S. trademark registrations for the word mark ONEWORLD (in classes 39 and 42) and for the marks ONEWORLD REVOLVES AROUND YOU, ONEWORLD circle logo and ONEWORLD (word mark) in class 39. The applications were originally filed in 1998 by British Airways Plc but subsequently assigned to the Complainant with effect from March 2001. Several of the registrations, including the word mark ONEWORLD claim first use in the United States on February 1, 1999.
All the U.S. registrations predate October 14, 2004 when the Respondent registered the disputed domain name.
The Complainant states that it “owns numerous registrations for ONEWORLD Marks for various services in a number of other jurisdictions throughout the world” although with one exception, no copies were provided with the Complaint. The Complainant did provide a copy of a French registration for ONEWORLD EXPLORER in classes 39 and 43. However the date from which this registration took effect namely April 27, 2006 was after the disputed domain name was registered.
The Complainant also relies on the extensive advertising and promotion of the ONEWORLD marks since launch in February 1999. The Complainant particularly relies on use of ONEWORLD EXPLORER in connection with its around the world travel programme. In its Supplementary Filing, the Complainant produced evidence showing that one of the services mentioned at its global launch in February 1999 was “the launch of Oneworld Explorer fares”.
As at the date of the Complaint, a website at the disputed domain name contained a map of the world with the prominent headline “One World Explorer”. There are then different series of countries grouped together and alongside each group the words “Find your Long Distance Travel Specialist/Specialists”.
Within each grouping of countries (once the visitor clicks through) there are further, more geographically precise locations and under the majority of these locations are the words:
“OneWorldExplorer.com connects you with top class Travel Specialists in your City or Region.
These professionals have the range of expierience [sic] and expertise that enables them to offer you a distinctive service. Travel Specialists will tailor your international travel plans (both Business or Economy) -- and match these with the best deals. If you are a ‘top class operator' and would like to learn more about a listing …. please contact Tommy Ruane at
info@oneworldexplorer.com”
Some of the internal pages are simply a holding page with text in Latin.
The Respondent is an individual living in Dublin, Ireland.
The Complainant claims that the disputed domain name is identical or confusingly similar to the Complainant's ONEWORLD marks. It appears that the primary complaint is as to a similar mark because it is asserted that the disputed domain name merely takes the Complainant's ONEWORLD mark and adds the term “explorer” as a suffix. But the Complainant goes on to claim that it has registered and used the identical mark ONEWORLD EXPLORER in connection with its around the world travel programme by which the traveller can plan and book a “oneworld explorer” itinerary online.
The Complainant further states that the Respondent has no right or legitimate interest in the disputed domain name because it is neither affiliated with nor authorised by the Complainant to use or register domain names utilizing the ONEWORLD marks. Also the Complainant states that the Respondent uses the disputed domain name to attract Internet users to a website “landing page” that contains non-operational links for third party travel services. The Complainant asserts that this causes a likelihood of confusion for the Respondent's commercial gain and is not in connection with a bona fide offering of goods or services to meet Policy paragraph 4(c)(i). Nor is it a legitimate noncommercial or fair use within Policy paragraph 4(c)(iii).
Finally, the Complainant asserts that the Respondent has registered and is making use of the disputed domain name in bad faith under Policy paragraph 4(b) for the following reasons:
(a) The Respondent had actual or constructive notice of the Complainant's trademark ONEWORLD by virtue of numerous U.S. and foreign registrations so that registration of the disputed domain name in and of itself was a registration in bad faith;
(b) The Respondent registered the disputed domain name for the primary purpose of selling or transferring it to the Complainant (Policy paragraph 4(b)(i)). The Respondent contacted the Complainant concerning the sale and transfer and sought either:
(i) to work as a consultant for the Complainant to further promote the website for the Complainant after transferring the disputed domain name for a nominal sum; or
(ii) to sell the disputed domain name to the Complainant “on a commercial basis”. The Complainant states that an offer to sell for financial gain is a determining factor and whether registrant has registered and used a domain name in bad faith;
(c) By using the disputed domain name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant's ONEWORLD marks as to the source and affiliation of the website and the services offered on it. It is claimed that the Respondent intentionally chose a domain name incorporating the ONEWORLD marks for use in the travel services industry in order to sell the disputed domain name to the Complainant and that the website has already attracted “prospective travellers”. As to this last contention, the Complainant refers to the Respondent's letter sent to the Complainant's associate entity oneworld Management Company Limited in which he offered to sell the disputed domain name. This letter stated in part:
“However, even without web tactics/promotion, the portal has a number one ranking with both Google and Yahoo. I have also received many enquiries from prospective travellers. (see attached ranking prints outs)”
(In its Supplemental Filing the Complainant clarifies that oneworld Management Company Limited is owned by the Complainant's shareholder airlines and provides management and consulting services for the airlines in the oneworld Alliance.)
The Respondent makes a series of assertions. It has been necessary to summarise.
(a) The Respondent's letters were to oneworld Management Company Limited which is a separate legal entity not party to the proceedings;
(b) The Respondent states that he received no answer to either of these “good faith letters” nor any “that the oneworld Management Company was in any way interested, disinterested or unhappy with my strategic proposal ... nor any notice that it was concerned about the oneworldexplorer.com domain/portal, nor any notice that it had passed on my letters to any legal party to act in their interests”;
(c) The Respondent says that in a second letter to oneworld Management Company Limited he amended his second option or offer namely “to assign the domain on a commercial basis” so as to offer the ruling of an independent valuing firm which he would accept. The Respondent claims that this was:
“an amiable proposal in good faith. The third party valuation proposal was offered to remove the threat of impending legal action. … Thus I assert that the Complainant rush [sic] to submit this case to WIPO was premature considering a potentially swifter, cheaper and less contentious option was available to acquire the domain in good faith if that was it's [sic] actual desire”
(d) The Respondent says that his two letters:
“… highlighted the synergy that [his] service-connect business model could bring to Oneworld Management Company Ltd as a stand-alone portal serving a sector/niche not effectively served by them. It was an added-value proposal.
Reference to google/yahoo search ranking for ‘oneworldexplorer.com' is accurate and logical for the full term as one would expect. It's the modus operandi of robots/crawlers.
Likewise my reference to enquiries, whom I have referred to reputable Travel agents that I, as yet, have no connection with is fair reference to business case of connecting to Premium Travel Agents.
Regarding Respondent letters/proposal, the advantage of connecting with a big player is obvious. Faster and more widespread roll – out with resourced funding for staff and technology.
I offered to transfer the domain name/portal for a nominal sum on that basis I could drive the project roll-out which in any case was the primary intent.”
(e) The Respondent asserts that none of the Complainant's pages showing screenshots of use of its ONEWORLD mark contain any indication that the mark is registered by use of ®, ™ or SM. Later he says that the words “one world” are entirely generic and that each term in itself is not characteristically distinctive. Despite these criticisms, the Respondent in fact acknowledges that the Complainant has achieved widespread success with its ONEWORLD mark:
“Complainant, one world Alliance LLC, has undoubtedly achieved widespread success with the “oneworld” root phrase presentation, although this differs in style/typography from the exact presentation of the claimed marks in the written submission”.
His view is that the general public has a clear association with the root phrase and the root phrase only.
(f) The Respondent asserts it is incumbent on the users of word based generic root trademarks to register any or all generic root trademarks and claimed extensions of their respective root trademarks in all geographical areas of operation rather than rely on unregistered rights.
The Respondent makes a number of allegations as to the various trademarks relied on by the Complainant. These are addressed in the Panel's findings. The Respondent does note however that the Complainant has not justified or clarified its claim to “numerous other registrations” of ONEWORLD in other jurisdictions.
(g) The Respondent says that his:
“primary purpose … in registering the domain name was to conduct business personally as a service provider connecting web users world-wide to Professional Travel Agents in their home country that could deliver a quality service plus a superior travelling experience.
Quite a different proposition from point to point, last minute deals, and global ticket ‘bucket-shop operator' that operated around this time.
Overall the focus that the specialists Travel Agents would provide would be …
long distance/global travel packages … flights, trains, grand trains, explore off the beaten track, adventure groups, accommodation, multi-country coach tours, cultural tours, comfort river and ocean cruises, alternative/arctic cruise, deluxe wedding/honeymoon packages, exclusive ski or diving packages, business/conference trips with optional add-ons.
A family member previously operated such a quality Travel Agent service in Dublin promoting premium Kuoni products.
Respondent previously recommended Trailfinders UK to German associates.
Previously advised German friend (in travel sector) to seek Trailfinders franchise for Germany/Austria/Switzerland.
Thus Respondent saw an emergent need for such a ‘connector service'.”
The Respondent claims that the current web dress on the disputed domain name is second generation:
“While my roll-out has been deferred due to various issues … there have been some background tweaks on the way including new software update for the menu-panel system. (It was subsequently de-installed because of functional limits on embedded panels compared to original panel system)”.
(h) As to confusion, the Respondent points to the fact that the Complainant's screenshots relate to current web content (not at the relevant date). Further, he asserts that the Complainant is not an airline and does not issue tickets – rather member airlines perform this function. He asserts that the Complainant “has not produced any material to verify that there is an actual ticket product delivered to a traveller marked ‘oneworld explorer' or ‘oneworld' ‘other'. Thus the use by the Complainant of the figurative word phrase oneworld Explorer is in a sense a subsidiary virtual mark not registered in the USA or any of the 140 plus countries in the ambit of the Alliance”.
As set out earlier, the Complainant is the registered proprietor of the trademark ONEWORLD in the United States. It holds registrations in that country for marks comprising ONEWORLD (word mark), ONEWORLD (logo) and a slogan incorporating ONEWORLD. These were all registered (and assigned to the Complainant) before the Respondent's actions in registering the disputed domain name. The records show first use in commerce in the United States of the ONEWORLD word mark from February 1999. The services covered by the registrations include “travel booking agency services”.
The Complainant has also relied on rights in the mark ONEWORLD through extensive advertising and use by member airlines that are co-ordinated through the Complainant (and its associated operating company). In this regard, the Panel has noted the Respondent's submission that the various screenshots produced by the Complainant as evidence “reflect current web content”. This is a valid point. Even though more relevant under the second and third elements1, a complainant must always be careful to put forward evidence prior to or as at the relevant date i.e. in this case October 14, 2004.
The Panel finds that the Complainant has easily established reputation rights in ONEWORLD. This is based on:
h The evidence showing that the five foundation members of oneworld Alliance have, in conjunction with the Complainant, continuously used the marks since their launch in February 1999.
h The fact that in 2009, the Complainant was named the world's leading airline alliance for the seventh year running showing an awareness and reputation in the mark ONEWORLD that predated the Respondent's action by at least two years.
h The Respondent's own acknowledgement that the Complainant “has undoubtedly achieved widespread success with the ‘oneworld' root phrase presentation….”
The Panel therefore finds that the Complainant has established rights in the trademark ONEWORLD. As to the Complainant's rights to ONEWORLD EXPLORER, there is evidence showing an announcement of such use as at February 1999 in the Supplementary Filing. The contention from the Complainant is that it “has used and continues to use the mark ‘oneworld Explorer' in connection with its around-the-world program”. The Panel notes this is supported only by 2009 material. Also the Complaint does not specify from when it has used this mark.
The Panel is not satisfied by the evidence put forward that there has been continuous use of ONEWORLD EXPLORER prior to the relevant date so as to prove reputation rights in that mark. Despite this, it is clear that the Complainant has well established and well proven trademark rights in ONEWORLD.
The Panel finds that the disputed domain name is similar to the ONEWORLD trademark in which the Complainant has established rights.
Finally, the Panel rejects the Respondent's submission that the terms “one world” or “oneworld” are entirely generic. The distinctiveness of these marks has been proved by the trademark registrations in the United States and the use shown.
The second burden on the Complainant is to establish that the Respondent had no rights or legitimate interest in the disputed domain name.
After weighing the evidence, the Panel finds that this element is proved.
The Panel finds in accordance with the Complainant's submission that the Respondent is neither affiliated with nor authorised by the Complainant to use the ONEWORLD mark.
The Panel further finds that the Respondent's claim as to the purpose for registering the disputed domain name is implausible and is not supported by any probative evidence. Although the Respondent claimed to have set up the disputed domain name “to conduct business personally as a service provider connecting web users world-wide to Professional Travel Agents in their home country that could deliver a quality service plus a superior travelling experience”, the following conclusions can be drawn:
h No contemporaneous evidence was provided to prove this or to show correspondence with such “Professional Travel Agents”. If this was indeed a genuine endeavour then it would have been easy for the Respondent to provide such evidence of correspondence with travel agents or efforts to recruit them to his website.
h The claim that a family member previously operated a quality Travel Agent service in Dublin proves nothing. It is undated as to when it occurred and is uncorroborated.
h It is to be noted that from October 2004 until 2009 the Respondent took no steps whatever to develop the website or to explain why he did not do so. The first real step undertaken was to offer the website for sale (on terms) to the Complainant's associate company oneworld Management Company Limited in April 2009.
Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel also finds this element proved. The reasons for this finding are:
The Panel is satisfied that the Respondent registered the disputed domain name primarily for the purpose of selling or transferring it to the Complainant.
At the time the Respondent registered the disputed domain name, the Complainant's ONEWORLD mark had been in use for five years by the Complainant and its member airlines. It is highly probable that the Respondent was well aware of the Complainant's mark at the time of registration. He has certainly not sought to deny this anywhere in his Response.
It is particularly significant that on April 10, 2009, the Respondent chose to write to the Complainant's associate company oneworld Management Company Limited offering the disputed domain name for sale on the basis that he would become a consultant to it or, alternatively, that he sell the disputed domain name to it “on a commercial basis”. In that same letter (and in his response), the Respondent claims “due to the pressure of other business activities” he “deferred roll-out of the portal until [he] could commit 100%”. No evidence was provided to explain why or to corroborate this claim. Yet it would have been very easy for the Respondent to do so.
Of all the potential purchasers of the disputed domain name (and the travel industry is a crowded field) the Respondent chose to write to oneworld Management Company Limited offering the disputed domain name for sale. As noted earlier, that is an associate company of the Complainant and provides management and consulting services for the airlines in the oneworld Alliance. The Response itself indicates that the Respondent had the legitimate users of the ONEWORLD mark in mind. He says:
“My two letters (Complainant's submission) highlighted the synergy that my service-connect business model could bring to Oneworld management Company Ltd as a stand-alone portal serving a sector/niche not effectively served by them. It was an added-value proposal.” (emphasis added)
Although it is possible that the Respondent could have subsequently come to learn of the Complainant (and its associate company) and their use of the ONEWORLD mark after he had registered the disputed domain name, he has never claimed this nor provided any evidence of it nor does it seem plausible to this Panel.
Further, it is clear that the Respondent sought a consideration from the Complainant's associate company oneworld Management Company Limited that was in excess of documented out-of-pocket costs directly related to the disputed domain name. In his first letter he wanted either a consulting contract (i.e. ongoing remuneration or sale “on a commercial basis”). The latter offer was hastily amended by the Respondent on November 1, 2009 after he received a cease and desist letter from the Complainant's attorneys dated October 27, 2009. This was too late.
The Panel does not accept the Respondent's submission that his offer was simply “an amiable proposal in good faith”.
(b) Policy paragraph 4(b)(iv)
The Panel also finds that by using the disputed domain name, the Respondent intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
The Panel agrees with the Complainant's counsel that the work in progress demonstration website put up by the Respondent was in fact designed to attract the public to it by creating the appearance of an association with the Complainant. This in turn would give the disputed domain name the credibility needed to make it appealing to the Complainant and therefore to encourage a sale.
The fact of such likely traveller confusion is confirmed in the Respondent's own letter of April 10, 2009 to oneworld Management Company Limited when pitching for a sale:
“However even without web tactics/promotion the portal has a number one ranking with both Google and Yahoo. I have also received many enquiries from prospective travellers. (see attached ranking prints outs)”
Many of those travellers would have thought that the website was associated with the Complainant and its member airlines.
For all the foregoing reasons, the Panel decides that:
(a) The disputed domain name is confusingly similar to the trademark ONEWORLD in which the Complainant has rights through its U.S. trademark registrations and through use;
(b) The Respondent has no rights or legitimate interests in the disputed domain name;
(c) The disputed domain name was registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel orders that the disputed domain name <oneworldexplorer.com> be transferred to the Complainant.
Andrew Brown QC
Sole Panelist
Dated: March 11, 2010