WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aida Cruises – German Branch of Costa Crociere S.p.A. v. Farhad Khamissa

Case No. DME2013-0009

1. The Parties

The Complainant is Aida Cruises – German Branch of Costa Crociere S.p.A. of Rostock, Germany, represented by Selting+Baldermann, Germany.

The Respondent is Farhad Khamissa of Calamvale, Queensland, Australia, represented by Omar Ensaff barrister of No5 Chambers, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <aida.me> 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 July 26, 2013. On July 26, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 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, approved by the doMEn d.o.o (“doMEn”) on April 30, 2008, the Rules for Uniform Domain Name Dispute Resolution Policy for .ME, approved by doMEn on October 1, 2012 (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 August 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 25, 2013. The Response was filed with the Center on August 24, 2013.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on September 2, 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.

4. Factual Background

The Complainant operates a business which provides cruises in Europe, the United States of America, the Caribbean and Asia. The Complainant owns Community Trademark Registration (“CTM”) for the trademark AIDA (Registration No. 4681987) dated October 12, 2005. The Complainant also owns International Registration No. 872409 for the trademark AIDA dated October 11, 2005.

The Complainant operates a website at “www.aida.de” and has been providing cruise services since at least as early as 1996, according to the Company information page on that website.

The disputed domain name <aida.me> was created on December 19, 2012. At the time the Complaint was filed, the disputed domain name reverted to a website that featured three graphic circles in primary colours with the words “aida”, “.” and “me”, positioned at the centre of each circle.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant submits that it owns registered trademark rights in AIDA, as particularized above in Section 4.

The Complainant contends that the disputed domain name <aida.me> is identical to the Complainant’s AIDA trademark except for the addition of the “.me” country-code Top-Level Domain (ccTLD) designation. The Complainant submits that the addition of a ccTLD designation does not distinguish the disputed domain name from the Complainant’s registered trademark. Accordingly, the Complainant contends that the disputed domain name is identical to the Complainant’s registered AIDA trademark.

Rights and Legitimate interests

The Complainant submits that the Respondent does not have any rights or legitimate interests in the disputed domain name <aida.me>. The Complainant contends that the Respondent was never authorized or licensed by the Complainant, and that the Respondent has not used the disputed domain name in a bona fide offering of goods and services.

Registered and Used in Bad Faith

The Complainant submits that the Respondent has registered and is using the disputed domain name <aida.me> in bad faith even though the website is inactive because: (i) the Complainant’s trademark is well-known in the cruise market and the Respondent copies the primary colours of the Complainant’s trademark; (ii) the Respondent did not reply to the Complainant’s warning letter sent on May 29, 2013; (iii) it is impossible to use the disputed domain name without violating the Complainant’s trademark rights; and (iv) the Complainant also has trademark rights to AIDA in Montenegro where the relevant ccTLD is “.me”.

B. Respondent

The Respondent submits that the Complainant has not properly supported its claim for registered trademark rights in the trademark AIDA. The Respondent contends that the Complainant is Aida Cruises – German branch of Costa Crociere S.p.A. However, the Complainant has submitted trademark registrations that are owned by Aida Cruises – German branch of Societa di Crociere Mercurio S.r.l. The Respondent submits that the Complainant and the owner of the AIDA trademarks are different entities with different names.

The Respondent further contends that the Complainant actually operates under the name “Aida Cruises” and uses the trademark AIDA CRUISES and not the trademark AIDA.

The Respondent claims that the name “Aida” is a well-known and common personal name in the Muslim and Arabic language.

The Respondent submits that his daughter, born December 15, 2010, is named “Aida”. The Respondent has three other children named Zakaria, Danyaal and Mikaeel. The Respondent has registered domain names for each of his children for their personal use. The Respondent submits that the domain name <aida.me> reverts to a website that featured three graphic circles in primary colours chosen because they are vivid colours that children recognize.

The Respondent submits that the disputed domain name cannot be confusingly similar because the word “Aida” is a common name, and that he has a right and legitimate interest in the disputed domain name because his daughter is named “Aida”. Furthermore, the disputed domain name was registered and is intended to be used by his daughter for her own personal use; therefore the disputed domain name <aida.me> was not registered or used in bad faith.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(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.

A. Identical or Confusingly Similar

The Panel finds that the Complainant does have registered trademark rights in the mark AIDA by virtue of its international and CTM trademark registrations for AIDA, namely International Registration No. 872409 and CTM Registration No. 4681987. For both registrations, the Complainant Aida Cruises – German Branch of Costa Crociere S.p.A is indicated as the owner of the trademark AIDA.

The Panel further finds that the disputed domain name <aida.me> is confusingly similar to the Complainant’s registered trademark AIDA. The addition of a ccTLD designation “.me” does not serve to distinguish the disputed domain name from the Complainant’s registered trademark AIDA.

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

B. Rights or Legitimate Interests

Based on the evidentiary record submitted in this proceeding, the Panel is prepared to find that the Complainant has a reputation in the trademark AIDA in association with the services covered in its trademark registrations. However, the Panel is also prepared to find that the word “Aida” is a common personal name.

The Panel accepts the Respondent’s submission that he has a daughter named “Aida” and that she was born on December 15, 2010, as evidenced by the copy of the Birth Certificate (Annex 9 to the Response). The Panel also notes that the Respondent has registered domain names for each of children, namely <zakaria.org>; <danyaal.org>; and <mikaeel.net>, which were registered respectively on September 9, 2001; September 30, 2003; February 22, 2006. The sequence and dates of registration for each of these domain names is consistent with the pattern of an individual registering domain names for each of his children.

No evidence has been produced by the Complainant to suggest that there are any hallmarks or indicia of an abusive registration of the disputed domain name by the Respondent. In the circumstances, the Panel finds that the Respondent has a right and legitimate interest in registering the disputed domain name <aida.me>, in recognition of his daughter’s personal name.

Accordingly, the Panel finds that the Complainant has not satisfied the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In view of the findings on rights and legitimate interests above, the Panel does not need to make a finding on the third criteria of bad faith.

7. Decision

For the foregoing reasons, the Complaint is denied.

Christopher J. Pibus
Sole Panelist
Date: September 16, 2013.