WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alia - the Royal Jordanian Airlines, Plc. v. Amani Tours
Case No. D2013-0115
1. The Parties
The Complainant is Alia - the Royal Jordanian Airlines, Plc. of Amman, Jordan, represented by Sanad Law Group in Association with Eversheds KSLG, Jordan.
The Respondent is Amani Tours of Drums, Pennsylvania, United States of America, represented by Karim Mubarak, Jordan.
2. The Domain Name and Registrar
The disputed domain name <royaljordanian.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2013. On January 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 17, 2013, the Registrar 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 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2013. The Response was filed with the Center on February 17, 2013.
The Center appointed Kaya Köklü as the sole panelist in this matter on February 22, 2013. 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.
In accordance with the Rules, paragraph 11(a), and since the parties have not agreed otherwise, the Panel finds that the language of the administrative proceedings is the language of the Registration Agreement (i.e. English).
4. Factual Background
The Complainant is a Jordanian airline, which was established as the national carrier of Jordan in 1963. It became a state-owned airline in 1968. In 2001, it was privatized and transformed into a publicly traded company. Since 2007, the Complainant is an elite member of the oneworld alliance of several international airlines. With its headquarters in Amman, Jordan and more than 30 aircrafts, the Complainant offers flight connections to about 60 destinations worldwide.
As of 1990, the Complainant is the registered owner of a large number of ROYAL JORDANIAN trademarks, mainly registered in Jordan.
The Complainant further owns and operates a web portal at “www.rj.com”.
The Respondent is a travel agency, mainly offering travel arrangements to Jordan. In these administrative proceedings, the Respondent is represented by an individual from Amman, Jordan.
According to the information provided by the Registrar, the disputed domain name was created on October 2, 1997. Internet users searching for the disputed domain name are automatically redirect to the official website of the Respondent at “amanitours.com”. At its official website, the Respondent offers travel arrangements to Jordan and provides respective information. Besides information on e.g. suggested travel programs and recommended accommodations, the Respondent also provides information on how to get to Jordan. In this specific section, the Respondent literally refers to the Complainant by stating: “The national airline, Royal Jordanian is well run and has direct flights to most major cities in Europe and all over the Middle East”.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name to itself.
First, the Complainant argues that the disputed domain name is identical to the Complainant’s well-known and long-established ROYAL JORDANIAN trademarks.
Second, the Complainant is of the opinion that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant alleges that it has never granted a license or otherwise permitted the Respondent to use any of its trademarks and has not permitted the Respondent to register or use any domain name incorporating its ROYAL JORDANIAN trademark. The Complainant additionally asserts that the Respondent has never used the disputed domain name, nor made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Finally, the Complainant sees no evidence or indication that the Respondent is commonly known by any name corresponding to the disputed domain name.
Third, the Complainant is convinced that the Respondent has registered and is using the disputed domain name in opportunistic bad faith. It is argued that the trademark ROYAL JORDANIAN was already well-known many years prior to the date of registration of the disputed domain name by the Respondent.
The Respondent claims the denial of the Complaint, mainly based on the following reasons.
The Respondent primarily argues that it purchased the disputed domain name in 1993 and does not infringe any trademark rights as the disputed domain name was created more than 20 years ago without any raised claims by the Complainant in the meantime.
Furthermore, the Respondent believes that the disputed domain name is not identical to the Complainant’s trademarks as they also comprise figurative elements like a crown or black lines. In this regard, the Respondent also notes that the company name of the Complainant also comprises the term “Alia”, which is not part of the disputed domain name.
The Respondent further alleges that it is only making “a legitimate non-commercial or fair use of the domain name without the intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark” of the Complainant.
Finally, the Respondent asserts that it is “not using the disputed domain name in bad faith”. In particular, it is argued that the Respondent “never has nor will create an impression of association of affiliation with the Complainant”.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) The disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights; and
(ii) The Respondent has 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.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228. However, concerning the uncontested information provided by the Complainant, the Panel may as appropriate accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
It is further noted that the Panel has taken note of the WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistent with the WIPO Overview 2.0.
A. Identical or Confusingly Similar
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights. The ROYAL JORDANIAN trademark is in use since 1963. The first trademark registration referenced by the Complainant dates back to the year 1990.
Second, the Panel finds that the disputed domain name is identical to the Complainant’s trademark. The disputed domain name is an identical adoption of the registered trademark ROYAL JORDANIAN and does not incorporate any changes or additions.
The elimination of certain figurative elements of the Complainant’s trademarks does not affect the Panel’s assessment for mainly two reasons. First, the elimination of figurative elements of a trademark is necessary as such elements can technically not be part of domain names. Second, the adoption of word components of a trademark within a domain name is generally sufficient to assess identity or at least confusing similarity if the trademark in dispute does not gain protection only for its figurative elements. In the present case, the Complainant owns trademarks covering protection for both, its word and figurative elements. Hence, the Panel does not see any reason to refuse the Complainant’s trademark right concerning the term “Royal Jordanian” because of the technically required elimination of additional figurative elements within the disputed domain name.
Furthermore, the Panel believes that the mere addition of the generic top-level domain (gTLD) “.com” has no distinguishing effect and may as a general principle not to be considered when assessing identity or confusing similarity between a domain name and a trademark (in line with prior UDRP panels concerning the use of a gTLD within the domain names, cf. V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Google Inc. v. Nijat Hassanov, WIPO Case No. D2011-1054).
Hence, the Panel concludes that the first requirement under paragraph 4(a) of the Policy is fulfilled.
B. Rights or Legitimate Interests
The Panel further finds that the Respondent has not demonstrated any rights or legitimate interests in the disputed domain name.
While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements in paragraph 4(a)(ii) of the Policy, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, as it has provided uncontested prima facie evidence that the Respondent has no trademark, valid license or any similar right to use the Complainant’s ROYAL JORDANIAN trademarks in the disputed domain name.
The Respondent, however, has failed to file any evidence or convincing argument to demonstrate a right or legitimate interest in the disputed domain name according to the Policy, paragraph 4(a)(ii) and 4(c).
To begin with, the Panel does not believe that the Respondent can successfully claim any right to use the disputed domain name based on an alleged forfeiture of trademark rights (i.e. based on the doctrine of laches). Neither the UDRP Policy nor the facts of the case would justify a denial of the Complainant’s claim for transfer of the disputed domain name due to a delay in initiating the present UDRP administrative proceedings. As indicated in section 4.10 of the WIPO Overview 2.0, most UDRP Panels “have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complainant does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements.” In particular, it is said that “Panels have noted that the remedies under the UDRP are injunctive rather than compensatory in nature, and that a principle concern is to avoid ongoing or future confusion as the source of communications, goods, or services”. The Panel believes that the approach of the most UDRP panels is appropriate. In view of the Panel, the assessment would be different, if the Complainant delayed its Complaint in a legally abusive manner. The Panel, however, could not identify any indication in the case file that the Complainant intentionally had caused the false impression by way of any explicit or implicit behavior that it will tolerate the use of the disputed domain name by the Respondent. The Respondent’s allegations at least do not contain any such indication that would justify a different assessment.
Additionally, the Panel is not convinced by the Respondent’s allegation that it is “making a legitimate non-commercial or fair use of the domain name”. As evidenced by the Complainant, Internet users searching for the disputed domain name are automatically redirected to the Respondent’s official website at “amanitours.com”. When the Panel visited the disputed domain name and consequently the Respondent’s official website on March 5, 2013, the Respondent offered travel arrangements to Jordan, apparently for commercial purposes. The Panel concludes that in this regard, the Respondent allegation is wrong and constitutes only a self-served assertion.
Furthermore, the Panel finds that the Respondent has failed to provide any evidence that it is commonly known by the disputed domain name or has any other rights or legitimate interests in the disputed domain name in connection with a bona fide offering of goods or services. Quite the contrary, the Panel believes that the Respondent is not at all known under the disputed domain name. As evidenced in the Complaint, the disputed domain name is merely used to redirect Internet users to the Respondent’s official web portal. This official web portal is operated under the Respondent’s company name, which has no relation or similarity to the term “Royal Jordanian”. The Panel is convinced that the Respondent primarily tries to catch web traffic intended for the Complainant and to divert such traffic to its own travel website in order to attract misled customers who are searching for travel opportunities to Jordan.
Overall, 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 Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel is well aware of the notoriety and reputation of the Complainant’s ROYAL JORDANIAN trademarks. The Panel believes that the Respondent must have known this trademark when registering the disputed domain name. This is in particular likely as the disputed domain name has been registered many years after the Complainant’s ROYAL JORDANIAN trademarks had become recognized worldwide, particularly in Jordan. This assessment is strongly supported by the fact that on its official website, the Respondent even refers to the Complainant as “the national airline, Royal Jordanian”.
The Panel is convinced that the Respondent was well aware that a legitimate use of the disputed domain name would not have been possible without trading-off on the Complainant’s trademark rights. The Panel rather finds that the Respondent has registered the disputed domain name solely for the purpose of creating an association with the ROYAL JORDANIAN trademarks in order to mislead Internet users who are searching for information about the Complainant or its offered flight opportunities to and from Jordan. The Respondent apparently tries to catch web traffic intended for the Complainant and to gain commercial benefit from misled customers who are searching for travel opportunities to Jordan offered by the Complainant.
Overall, the Panel cannot conceive of any good faith use of the disputed domain name by the Respondent.
The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.
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 name <royaljordanian.com> be transferred to the Complainant.
Date: March 5, 2013