WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LES EDITIONS ALBERT RENE v. Asterix Tours International / SITE INTERNET VE YAZILIM HIZMETLERI LTD STI

Case No. D2012-0334

1. The Parties

The Complainant is LES EDITIONS ALBERT RENE of Paris, France, represented by Bardehle Pagenberg Dost Altenburg Geissler, France.

The Respondent is Asterix Tours International of Antalya, Turkey, represented by Acar Intellectual Property Law Ltd., Turkey / SITE INTERNET VE YAZILIM HIZMETLERI LTD STI of Izmit, Turkey.

2. The Domain Name and Registrar

The disputed domain name <asterixtour.com> is registered with Alantron Bilişim Ltd Şti. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2012. On February 20, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 29, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 1, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 6, 2012.

On March 1, 2012, the Center sent an email communication to the parties regarding the language of the proceedings. On March 2, 2012, the Center received the Complainant’s submission requesting that the language of the proceedings be English. On March 6, 2012, the Center received the Respondent’s submission requesting the language of the proceedings be Turkish.

The Center verified that the Complaint together with the amended 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 March 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2012. On March 26, 2012, the Center received an email communication from the Respondent. On March 28, 2012, the Center informed the parties of the panel appointment process.

The Center appointed Gökhan Gökçe as the sole panelist in this matter on April 4, 2012. 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 in this administrative proceeding is LES EDITIONS ALBERT RENE, a company organized under the French laws.

The Complainant is the owner of the ASTERIX trademark registered in several countries. The Complainant also registered and actively uses the following domain names: <asterix.com>, registered on October 19, 1995, and <parcasterix.com>, registered on January 17, 1997.

The Respondent is a travel agency based in Turkey offering domestic and international holiday tours, package tours and car rental services. The Respondent has been active in tourism business for about 15 years as evidenced by its operation licence issued by the Ministry of Tourism in 1997. The Respondent registered the disputed domain name <asterixtour.com> on July 18, 2002 which its uses to offer travel agency services.

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 4(b)(i) of the Policy, the Complainant requests that the disputed domain name be transferred to the Complainant. The Complainant submits the grounds for these proceedings are listed in paragraph 4(a) of the Policy.

Identical or Confusingly Similar

The Complainant submits the disputed domain name is confusingly similar to its ASTERIX trademark which was registered on February 22,1991 in France, on July 5, 1995 with the Turkish Patent Institute, on April 1,1996 as a CTM and in several other countries, as evidenced at Annexes 4 to 8 of the Complaint.

Furthermore, the Complainant registered domain name <asterix.com> on October 19, 1995 and <parcasterix.com> on January 17, 1997, as evidenced at Annexes 10 and 11 of the Complaint, and both domain names are active. The Complainant submits that the services offered by the Respondent are identical or very similar to those offered by the Complainant, for which its trademark is registered, namely in the field of “transport, hotels and catering services.”

The Complainant contends that the disputed domain name is confusingly similar to the its registered trademark as it contains the mark in its entirety, and that the addition of a common top level domain name (TLD) “.com” suffix is not sufficient to minimise or avoid confusion and add distinctiveness to the disputed domain name.

Rights or Legitimate Interests

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not its licensee and is in no way authorized to use the Complainant’s ASTERIX trademark, nor to market products and services bearing the said trademark, or to represent the Complainant, or to act on its behalf. Furthermore, the Respondent is not known by the disputed domain name and the Respondent’s company is fictitious as there is no record of any registration with the Turkish Trade Registry as evidenced at Annex 15 of the Complaint.

The Complainant contends that the Respondent was aware of its trademark as it has established a global reputation which pre-dates its trademark registrations and the Respondent’s registration of the disputed domain name, as evidenced at Annex 14 of the Complaint. Therefore, the Respondent, at the time of registration, must have been aware that any use of the domain name would result in a violation of the Complainant’s trademark rights. The Complainant notes that the website is inactive and in accordance with records kept by the Internet Archive Wayback Machine the disputed domain name has been under construction since at least January 2011, as evidenced at Annex 16 of the Complaint. In light of the foregoing the Complainant states that the disputed domain name is not currently being used for any legitimate purpose and that even if the Respondent was using the disputed domain name it could not claim a legitimate interest as intentionally trading on the fame of another can not constitute a bona fide offering of goods or services.

The Complainant further alleges when the Respondent was first approached by the Complainant regarding the disputed domain name the Respondent agreed to its transfer subject to the payment. Consequently, the Complainant contends that the Respondent’s only interest is unfair commercial gain and that it has no interest in the legitimate use of the disputed domain name or operating a website.

Registered and Used in Bad Faith

The Complainant alleges that the Respondent registered the disputed domain name incorporating the Complainant’s trademark to gain improper benefit from the Complainant’s goodwill and worldwide fame of the ASTERIX character’s name. Furthermore, the Complainant submits that the Respondent undoubtedly knew that the disputed domain name was identical to the Complainant’s trademark at the time of registration and registered it to take unfair advantage of the Complainant’s reputation and earlier rights, which constitutes bad faith registration.

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith by intentionally attempting to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service.

B. Respondent

Although a formal Response was not submitted, on 26 March, 2012, the Respondent sent an email to the Center. The Respondent contended that the word “Asterix” is known to all as a mythical character and the Respondent found such name suitable for its travel agency business, Asterix Tours International. The Respondent states that it has been operational for 15 years as evidenced by the operation license issued by the Turkish Ministry of Culture and Tourism on November 20, 1997 attached to its email. The Respondent claims that its business activities are in no manner similar to the activities of the Complainant’s company and therefore there can be no risk of Internet users being confused. Furthermore, the Complainant’s domain names are not similar and can be easily distinguished from the disputed domain name.

The Respondent refers to the fact that domain name licences and registrations are allocated on a ‘first come, first served’ basis and for this reason its rights in the disputed domain name are protected. The Respondent notes that “Asterix Tour” is its trade name that it has used in business for several years, consequently gaining rights to the name as well as the disputed domain name.

The Respondent submits that the allegations made against it by the Complainant are groundless as the Respondent is not gaining unfair commercial gain and is not damaging the Complainant’s trademark. Furthermore, there can be no risk of confusion between the Respondent and the Complainant as there is no similarity between the Respondent’s and the Complainant’s services, customer portfolio or website.

6. Discussion and Findings

There is a procedural matter in relation to language of the proceedings which should be addressed as a preliminary matter.

A. Language of the Proceedings

The Registrar of the disputed domain name has informed the Center that the language of the relevant registration agreement is Turkish. On March 1, 2012, the Center sent a notification to the Parties stating that, according to information provided from the concerned registrar, the language of the registration agreement is Turkish. On March 2, 2012, the Center received the Complainant’s submission requesting that the language of the proceedings be English and on March 6, 2012, the Center received the Respondent’s submission requesting the language of the proceedings be Turkish.

The Complainant submits that English should be the language of proceedings as the Respondent clearly understands English and conducts its business in English as evidenced by its website. The Complainant argues that the foregoing demonstrates the Respondent’s ability to communicate in English and that it will not be materially prejudiced if the proceedings are conducted in English, whereas requiring the Complainant to translate its filings into Turkish will incur substantial additional costs on the Complainant and undue delay of the proceedings. The Respondent in its email regarding the language of proceedings stated that the registration agreement was in Turkish and that as the Respondent’s company is established in Turkey, the proceedings should be in Turkish according to domestic laws.

Pursuant to paragraph 11 of the Rules unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceedings shall be the language of the registration agreement, i.e., Turkish in the instant case. Nonetheless, in accordance with paragraph 11 of the Rules, the panel has the authority to determine the language of proceedings and that requests from the parties regarding the language of proceedings will be a matter for consideration at discretion of the panel.

The Respondent did not submit a formal Response but sent an email in Turkish which addresses matters raised in the Complaint. In this regard, the Panel is satisfied that the Respondent had fair notice of the dispute and in consideration of the Response has demonstrated the ability to understand allegations made against it. Therefore, the Panel is of the view that no prejudice was caused to the Respondent as he is capable of understanding the Complaint and defending itself. Additionally, as the Complainant notes the Respondent’s website is in English and therefore, in the Panel’s view, the Respondent understands English and will not be prejudiced by a decision being rendered in English.

For all the above reasons and in accordance with paragraph 11 of the Rules, considering fairness to the parties, keeping proceedings cost-efficient and expeditious, the Panel finds that English should be the language of the proceedings to avoid undue delay and costs involved in translating the Complaint, Fxopen Investments Inc. v. Tong Tingyun, WIPO Case No. D2009-1527.

The Panel turns to the merits of the case. In accordance with paragraph 4 of the Policy, the Complainant requests that the disputed domain name be transferred to the Complainant. The Complainant submits the grounds for these proceedings are listed in paragraph 4(a) of the Policy.

Paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must prove, during the administrative proceedings, to merit a finding that the domain name of the Respondent be transferred to the Complainant:

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

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and,

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

B. Identical or Confusingly Similar

The Policy simply requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

The Panel is satisfied that the Complainant is the owner of several registrations of the ASTERIX trademark, including trademark registration with the Turkish Patent Institute as evidenced at Annexes 4 to 8 of the Complaint.

Although the disputed domain name contains the Complainant’s trademark in its entirety it is coupled with the word “tour”. The Panel concludes that the addition of the generic word “tour” does not distinguish the disputed domain name from the Complainant’s trademark as it is well-established under the Policy that a domain name composed of a trademark coupled with a generic term may still be found to be confusingly similar to the trademark, Jafra Cosmetics, S.A. de C.V. v. Spiral Matrix, WIPO Case No. D2006-0716, Veuve Clicquot Ponsardin Maison Fondée en 1772 v. Net-Promotion, Inc., WIPO Case No. D2000-0347.

The Panel follows several decisions by other UDRP panels and finds that the incorporation of a trademark in its entirety into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark, Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works, WIPO Case No. D2005-0941.

In view of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights, and therefore, the Complainant has succeeded on this first element under the Policy.

C. Rights or Legitimate Interests

The Complainant has established rights in the ASTERIX trademark and claims the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent contends that Asterix is known to all as a mythical heroic figure, which it considered to be an appropriate name for a travel agency which it has been operating for 15 years. The Panel notes that although the Turkish Trade Registry did not have record of a business registered under such name, the business trade name and registered name may differ. Nonetheless, from its review of documents supplied and the Respondent’s website, the Panel is convinced that the Respondent operates a legitimate business under the trade name Asterix Tours International. In this respect the Panel is of the view that at the time of registration of the disputed domain name the Respondent had legitimate rights to use a well-known mythological figure as its business name and that the Respondent is using the disputed domain name, which reflects its business name, to offer bona fide goods and services. Therefore, in the Panel’s view, the Respondent has a legitimate interest in the disputed domain name.

The Complainant submits that the services offered by the Respondent are identical or at the least very similar to those offered by the Complainant through its websites “asterix.com” and “parcasterix.com’. The Panel visited both websites and they are active. Specifically, “parcasterix.com” promotes Parc Astérix, a theme amusement park in France where the Complainant also offers its customers hotel and restaurant services close to its amusement park. The Panel also visited the disputed domain name which resolved to a webpage advising that the site was “under construction” but offered a link to the previous website. The link resolves to a website which offers travel agency services for transport, hotels, holiday packages and tours both in Turkey and abroad.

The Complainant has not produced sufficient evidence to demonstrate that consumers visiting the Respondent’s website will be confused into believing that the website is sponsored by or otherwise affiliated with the Complainant. The Respondent’s website is not visually similar to any of the Complainant’s websites and, although it offers tourism services, its services do not directly compete with services offered by the Complainant under its trademark. Furthermore, the Respondent’s website does not make use of the Complainant’s trademark or logo and does not refer to services offered by the Complainant. Therefore, due to lack of any similarity between the websites and services offered, the Panel is not convinced that consumers will likely be confused into believing that the Respondent’s website is somehow related to the Complainant.

Similarly, the Panel is not convinced that the Respondent deliberately chose its trade name and/or registered the disputed domain name to intentionally trade and gain commercial benefit on the fame of the Complainant’s trademark. The services offered by the Respondent do not compete with the Complainant’s services and, therefore, the Panel is of the view that the disputed domain name is being used to offer bona fide goods and services.

The Complainant contends that the site is inactive and, therefore, is not being legitimately used by the Respondent. The Complainant suggests that the disputed domain name has been inactive and under construction since at least January 2011 and submits results from the Internet Archive Wayback Machine. The Internet Archive Wayback Machine does not keep a consistent log of website activity and, therefore, does not reflect an accurate record or history of a website. In this respect the Panel is not convinced that the website has been under construction since January 2011. Nonetheless, the Panel notes that the website screenshot of January 28, 2011 as today provides a link to the old website and, therefore, to an active website. Therefore, the Panel is of the opinion that the disputed domain name resolves to an active website. The Panel further notes that the Internet Archive Wayback Machine has record of the disputed domain name’s use from late 2002 and therefore the Respondent has used the disputed domain since its registration, the first shot of offering travel agency services is early 2003 but as stated above the Waybackmachine Internet Archive does not keep and reflect an accurate record of the domain history, nonetheless, it clearly indicates that the Respondent has used the disputed domain name since its registration to offer bona fide goods and services.

The Complainant contends that the Respondent agreed to transfer the disputed domain name subject to payment and therefore its only interest in the disputed domain name is to get unfair commercial gain by using the Complainant’s trademark. There is no evidence supporting the Complainant’s allegations and, as discussed above, the Respondent appears to be operating a commercially active website which reflects its business name.

There is no evidence, provided by the Complainant, or suggested by the website, that the Respondent registered or acquired the domain name in bad faith. The Respondent has demonstrated use of the domain name and its trade name corresponding to the domain name in connection with a bona fide offering of goods or services as the website is active and is used to offer bona fide services to the public, RCN Corporation, RCN Telecom Services, Inc. v. RCN Networks, LLC, WIPO Case No. D2006-0927.

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed domain name. The Complainant has failed to establish that the Respondent lacks a legitimate right or interest in the disputed domain name. In light of this, the Panel concludes that the Respondent has rights and legitimate interests in the disputed domain name.

The requirements of 4(a)(ii) of the Policy are not satisfied and, consequently, the Panel finds in favour of the Respondent on the second element of the Policy.

D. Registered and Used in Bad Faith

In view of the Panel’s finding above, it is not necessary to consider whether the disputed domain name was registered and used in bad faith. Nonetheless, for the sake of completeness the Panel notes the Complainant has failed to prove that the domain name was registered and used in bad faith. There is no evidence that the Respondent chose to register the disputed domain name to gain improper benefit and to take unfair advantage of the Complainant’s reputation and earlier rights in its trademark in bad faith.

The Respondent has offered justification for its adoption and use of the disputed domain name and appears to be using the disputed domain name to offer bona fide services.

Therefore, the Panel concludes that the Complainant has failed to establish that the Respondent’s use and registration of the disputed domain name is in bad faith under the criteria set forth in paragraph 4(b) of the Policy.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Gökhan Gökçe
Sole Panelist
Dated: April 19, 2012