WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aena, S.A., ENAIRE v. John Hamblin, All England Netball Association
Case No. D2015-0996
1. The Parties
The Complainants are Aena, S.A. and ENAIRE both of Madrid, Spain, represented by EMME & PI The Trademark Company, Spain.
The Respondent is John Hamblin, All England Netball Association of Hitchin, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), internally represented.
2. The Domain Name and Registrar
The disputed domain name <aena.com> is registered with 1&1 Internet AG (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2015. On June 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 2015, 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 June 17, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2015. The Response was filed with the Center on July 7, 2015.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on July 13, 2015. 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 Complainants are two Spanish companies, belonging to the business group Grupo AENA, and engaged in the field of airport management and air navigation services. Furthermore, the Complainants are the holders of several trademark registrations worldwide, for trademarks containing the word “aena”. These include the International trademark registration No. 625104 for AENA AEROPUERTOS ESPAÑOLES Y NAVEGACION AEREA, filed on October 18, 1994, in classes 35 and 42.
The All England Netball Assocation is the governing body of netball in England, and is a member of the regional and world governing bodies Netball Europe and the International Netball Federation. The purpose of the All England Netball Association is to promote and encourage the game of netball and to further the growth and development of the game of netball in England. It is a non-profit making organization which was formalized and has been known as the All England Netball Association since 1944. Throughout its history, the name was abbreviated to (the acronym) AENA.
The disputed domain name was registered on June 4, 1997.
On November 6, 2014, as evidenced by both the Complainants and the Respondent, the Complainants, via a representative, offered to buy the disputed domain name from the Respondent for USD 1,000. The Respondent did not accept the offer of the Complainants’ representative at the time.
5. Parties’ Contentions
The Complainants both belong to the group AENA, a business consortium involved in management and provision of air navigation services. AENA, S.A. manages 46 airports and 2 heliports in Spain, and is the world’s number one airport operator in terms of passenger traffic. ENAIRE is the fourth largest provider of air navigation services in Europe.
The Complainants have trademark rights in several figure marks containing the word “aena”. Inter alia, the Complainants have trademark registrations in Spain, Germany, France, Italy and Portugal. Moreover, according to Complainants, AENA is a well-known trademark in the field of aueronautics at national and international level, and it is known by the general public in Spain and in other countries in the European Union and beyond.
The great similarity between the Complainants’ trademarks and the disputed domain name is expected to create confusion and/or at least a likelihood of association among consumers. Internet users could be induced to think that what is offered on the web site at the disputed domain name has the same commercial origin that the products and services offered by the Complainants.
The Complainants assert that the Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent has used or made demonstrable preparations to use the disputed domain name, or any name corresponding to the disputed domain name in connection with a bona fide offering of products or services. Moreover, it cannot be proved that the Respondent has been commonly known by the disputed domain name, individually or through a company or other organization. The Respondent does not make a legitimate noncommercial or fair use of the disputed domain name. On the contrary, the Complainants state that the Respondent agreed to sell it for a higher price than it was purchased, with an evident aim of profiting.
The Complainants further assert that the disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name with the only purpose of selling it, or to prevent the Complainants from registering their trademarks as domain names. The Respondent does not offer any products or services at the web site “www.aena.com”, nor makes a legitimate noncommercial or fair use of the disputed domain name. Furthermore, it is unlikely that the Respondent was unaware of the Complainants well-known trademarks when registering the disputed domain name.
The All England Netball Assocation is the governing body of netball in England, and is a member of the regional and world governing bodies Netball Europe and the International Netball Federation. The purpose of the All England Netball Association is to promote and encourage the game of netball and to further the growth and development of the game of netball in England. It is a non-profit making organization with any surplus generated being invested back into the organization’s aims and objectives. Due to the differences of the Complainants and the Respondents activities, it is inconceivable that there is a risk of confusion or that the disputed domain name could generate a risk of association for Internet users.
The organization was formalized and has been known as the All England Netball Association since 1944. Throughout its history the All England Netball Association has abbreviated its name to AENA. Thus, the Respondent has rights and legitimate interests to retain the ownership of the disputed domain name.
According to the Respondent, the organization is in the process of updating its strategy through 2021. Until this strategic thinking and development has been completed it is difficult to assess how it will use the disputed domain name. However, it is anticipated that it will need additional domain names, including the disputed domain name, to communicate with different categories of participants and stakeholders.
The Respondent states that it has not registered the disputed domain name in bad faith. The Complainants’ brand is not known in the United Kingdom. It is entirely plausible that an employee in a sports organization was not aware of an aeronautical specialist at the time of registration of the disputed domain name.
The Respondent further states that, rather than an indication of bad faith, it is a natural response to query the identity of a potential purchaser of a domain name from someone that is not acquainted to intellectual property legislation but is considering the best interests of the All England Netball Association. The All England Netball Association is a non-profit making organization, USD 1,000 is a significant income, and such a gain from the sale of a domain name could have had a significant impact on the organization’s aims and objectives. The fact that the Respondent did not accept the approaches of Escrow Nominalia, who was representing the Complainants, is an indication of its requirement to retain the disputed domain name rather than evidence that the disputed domain name was registered and is being used in bad faith.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) that the disputed domain name has been registered and is being used in bad faith.
The Panel accepts the Complainants’ statement that Aena, S.A and ENAIRE have a common grievance against the Respondent as they both have registered trademark rights and/or interests regarding AENA and finds the consolidation appropriate in this case.
A. Identical or Confusingly Similar
The Complainants are the holders of several trademark registrations for trademarks consisting of the term “aena” and a figure. In those trademarks that were registered earlier than the disputed domain name, the word “aena”, printed in an extra bold type, is placed on one side of the figure, while the remaining words (“Aeropuerta Españoles y Navegación Aérea) are placed on the other side, and printed in an ordinary type. In the Panel’s view, the word “aena” is deemed the dominant feature in these trademarks.
The disputed domain name consists of the word “aena” with the addition of the generic Top-Level Domain (“gTLD”) “.com”. According to well-established consensus among UDRP panels, the gTLD is generally not distinguishing. The Panel finds that the difference between the disputed domain name and the Complainants trademarks is insufficient to avoid a finding of confusing similarity under the first element of the Policy.
In accordance with the findings above the Panel concludes that the disputed domain name is confusingly similar to the Complainants trademarks in the meaning of paragraph 4(a)(i) of the Policy and the first element of the Policy is thus fulfilled.
B. Rights or Legitimate Interests
Referring to the conclusions related to the third element “Registration and Use in Bad Faith”, the Panel finds that it is not necessary to consider the second element (“Rights or Legitimate Interests”).
C. Registered and Used in Bad Faith
Under the circumstances, including the obvious link between the Respondent’s organization and the term/acronym “aena”, the Panel is not convinced that the Respondent had knowledge of or was targeting the Complainants’ trademarks and the use of them at the time of the registration of the disputed domain name. It was registered a bit more than four years after the registration of the oldest of the Complainants trademarks and according to the information provided by the Complainants about seven years after the establishment of the Spanish public entity AENA (nowadays ENAIRE). As both parties have stated, it was the Complainants who about seventeen years after the registration approached the Respondent regarding an assignment of the disputed domain name, and not the other way around. The Panel does not find any other compelling circumstances indicating that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainants, or to disrupt the Complainants business. On the contrary, the Panel notices that even at the time of registration in 1997, “England Netball” was set out as the registrant organization.
Though the web site in question currently does not seem to be used for the purposes of the All England Netball Association, there are no apparent signs in the view of the Panel pointing out that the Respondent registered the disputed domain name in bad faith.
In the light of the available evidence and surrounding facts, the Panel finds that the third element of the Policy is not fulfilled.
For the foregoing reasons, the Complaint is denied.
Date: July 17, 2015