WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Qantas Airways Limited v. Domain Admin, Whizzm

Case No. D2019-1652

1. The Parties

The Complainant is Qantas Airways Limited, Australia, represented by Norton Rose Fulbright LLP, Australia.

The Respondent is Domain Admin, Whizzm, Australia, internally-represented.

2. The Domain Name and Registrar

The Disputed Domain Name <qantasstore.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on July 15, 2019. On July 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 16, 2019, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 6, 2019. The Response was filed with the Center on August 4, 2019.

The Center appointed Nicholas Weston as the sole panelist in this matter on August 12, 2019. 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 is a publicly listed company based in Australia that operates an airline business founded in 1920 currently employing more than 30,000 people. Subsidiary companies of the Complainant include companies named QantasLink, Qantas Holidays, Qantas Loyalty, which has more than 12 million members, and Qantas Freight. The Complainant holds more than 30 current registrations for the trademark QANTAS, and variations of it, in Australia, which it uses to designate a range of services in classes 6, 9, 11, 12, 14, 16, 18, 20, 21, 25, 28, 29, 30, 32, 33, 35, 36, 38, 39, 41, 42 and 43.¹

The Respondent registered the Disputed Domain Name on February 28, 2010. The Disputed Domain Name resolves to a web page located at “www.pointsormore.com” where the words “Points or More® Earn more, share more, redeem more! Launching in 2016” are displayed.

5. Parties’ Contentions

A. Complainant

The Complainant cites more than 100 trademark registrations, including Australian trademark registration No. 289938, for the mark QANTAS registered on August 25, 1975 for printed matter in class 16 as evidence of ownership.

The Complainant submits that its rights in the QANTAS trademark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark QANTAS because the Disputed Domain Name incorporates in its entirety the QANTAS trademark and that the similarity to its registered trademarks is not removed by the additional word “store” or the addition of the generic Top-Level Domain (“gTLD”) “.com”.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because no bona fide offer of goods or services as it simply resolves to “a parking page”. The Complainant contends that the Respondent having no other connection by way of commercial or other interests which could relate its business with the Complainant’s business, has no rights or legitimate interests in the Disputed Domain Name.

Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules, having regard to the prior use of the Complainant’s trademark. The Complainant submits that the Respondent knew of the Complainant and only registered the Disputed Domain Name “with the intent of diverting Internet users away” from the Complainant. The Complainant submits that for the Respondent to have proceeded with registration knowing of the Complainant’s rights demonstrates the Respondent’s opportunistic bad faith, citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. On the issue of use, the Complainant submits that the Respondent is “passive holding” the (Disputed) Domain Name which strongly suggests that the Respondent registered the (Disputed) Domain Name with the primary purpose of disrupting the Complainant’s business activities.”

B. Respondent

The Respondent’s Response denies that the Disputed Domain Name is confusingly similar to the trademark QANTAS in which the Complainant has rights “as the addition of the word ‘store’ clearly differentiates it from this trademark”.

The Respondent denies that the Complainant has any rights or legitimate interests in the Disputed Domain Name for the reason that the Complainant has never registered or applied to register as a trademark the words QANTASSTORE nor QANTAS STORE in any jurisdiction. The Respondent contends that the Complainant operates “a points or rewards store only” promoted as ‘Shopping’, ‘Qantas Shopping’ and ‘Rewards Store’ to Qantas Frequent Flyer members only, and not the general public. The Respondent submits that “the parking page or landing page under the diverted Domain Name clearly states the intention to launch a bona fide offer of goods and services.” It later describes the “planned service” as “a free forum for a global audience to discuss travel points and rewards programs and their redemption options, to be provided under the Domain Name.”

On bad faith registration and use, the Response states: “the Respondent clearly states its used of the Domain Name for legitimate use of its key word values for Search Engine Optimisation “strong search traffic (SEO) value for us, the key reason to register the domain back in 2010”. There is no legislation preventing the Respondent from using key words for marketing purposes.” The Respondent states that it “is not promoting the Domain Name, but only redirecting the Domain Name to another domain name <pointsormore.com>. It goes on to state “The Respondent use of the Domain Name is purely for its SEO value and generating website traffic for where worldwide web users type in the Domain Name in a search engine. The Respondent relates this to commonly accepted web advertising regulations policies as for example set by Google’s Advertising Policy…” and contends that “Respondent’s use of the Domain Name for key word purposes and redirection to another domain name is commonly accepted practice globally”. Finally, the Respondent contends that it is “not obtaining a commercial benefit” for the reason that it has incurred “development cost, investment in domain names, legal and financial services, software and systems and design costs.”

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:

(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has produced evidence to demonstrate that it has registered trademark rights in the mark QANTAS in a number of jurisdictions including the Respondent’s location, Australia. In any event, the requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see, Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).

Turning to whether the Disputed Domain Name is identical or confusingly similar to the QANTAS trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark QANTAS; (b) followed by the word “store”; (c) followed by the gTLD “.com”.

It is well established that the gTLD is a technical part of a domain name and may be disregarded for the purposes of finding confusing similarity between the Disputed Domain Name and the Complainant’s trademark (see, Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “qantasstore”.

It is also well established that where a domain name wholly incorporates a complainant’s trademark in its entirety, it can be confusingly similar to that trademark (see: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Wal-Mart Stores, Inc. v. WalMart Careers, Inc., WIPO Case No. D2012-0285; Statoil ASA v. Weiwei Qiu / PrivacyProtect.org, WIPO Case No. D2011-1752; Statoil ASA v. Domain Admin / Management SO Hkg, WIPO Case No. D2012-2392). The Disputed Domain Name incorporates the trademark QANTAS, which has been commercially used and promoted by the Complainant since 1920 and registered in Australia since at least 1975.

Previous UDRP panels have long – and, in this Panel’s view, correctly held the view that the addition of the word “store” to a trademark is insufficient to avoid a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trademark. (See, for example: Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 (“the addition of the generic terms “store” and “fashion” are not sufficient to avoid confusion”); Nintendo of America, Inc. v. Tasc, Inc. and Ken Lewis, WIPO Case No. D2000-1563 (“the addition of “-store” does not help to distinguish the domain name from Complainant’s trademark”).

The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that once the Complainant puts forward a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production shifts to the Respondent to rebut that prima facie case (see, World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).

Section 2.11 of the WIPO Overview 3.0 states that “Panels tend to assess claimed respondent rights or legitimate interests in the present, i.e., with a view to the circumstances prevailing at the time of the filing of the complaint.”

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the WhoIs database record for the Disputed Domain Name indicates a registration date of February 28, 2010, inferring the website the Disputed Domain Name resolves to is still under construction after nine years.

Both parties appear to contend that as at July 8, 2019, the Disputed Domain Name was used to divert Internet traffic to another domain name, www.pointsormore.com, which resolves to a landing page displaying the words “Points or More®. Earn more, share more, redeem more! Launching 2016.” The Respondent contends that it has made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services, namely “a free forum for a global audience to discuss travel points and rewards programs and their redemption options, to be provided under the (Disputed) Domain Name.”

This Panel finds that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of commonly used descriptive or dictionary terms, but the preponderance of evidence indicates that the Respondent’s aim in registering the Disputed Domain Name was to profit from and exploit the Complainant’s trademark. (See Harvard Lampoon, Inc. v. Reflex Publishing Inc., WIPO Case No. D2011-0716; National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424).

The Respondent is using the Disputed Domain Name to divert Internet traffic to a parking page in circumstances where the Complainant has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark, and where there is no evidence that the Respondent has been commonly known by the Disputed Domain Name. According to the present record, the Disputed Domain Name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use.

This Panel accepts that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and finds for the Complainant on paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The third element of the Policy requires the Complainant to also demonstrate that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.

The Panel finds that the evidence in the case shows the Respondent has registered and used the Disputed Domain Name in bad faith.

On the issue of registration, it would be inconceivable that the Respondent might have registered the Disputed Domain Name incorporating the trademark QANTAS without knowing of it (see, WIPO Overview 3.0, section 3.2.2; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Louis Dreyfus Trademarks B.V. v. David Rosenberg, Louis Dreyfus Commodities, WIPO Case No. D2014-2253: “The Complainant provides ample evidence that the disputed domain name was registered with the sole purpose of having users believe that they were connecting to a website affiliated to the Complainant”). The Respondent’s own Response admits that it was aware of the Complainant’s trademark, stating that the Disputed Domain Name had “strong search traffic (SEO) value for us, the key reason to register the domain back in 2010.”

The diversion of Internet users is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see, L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).

Further, a gap of 10 years between registration of a complainant’s trademarks and a respondent’s registration of a disputed domain name (containing the trademark) could constitute in certain circumstances additional evidence of bad faith (see, Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name at least 44 years after the Complainant first established trademark rights in the QANTAS mark pursuant to Australian trademark No. 289938, for the mark QANTAS registered on August 25, 1975 to say nothing of its existence since 1920.

On the issue of use, the Respondent’s own evidence is that the Disputed Domain Name “is actively used to divert Internet users to the Respondent’s <pointsormore.com> domain”. This indicates that the Respondent has used the Disputed Domain Name to attract, for commercial gain, Internet users to a website by creating confusion with the Complainant’s trademark as to the affiliation of that website, the very essence of bad faith use in accordance with paragraph 4(b)(iv) of the Policy. The Respondent’s contention that no commercial gain flowed from its use of the Disputed Domain Name is implausible and unpersuasive, as the Respondent intended that it be the only beneficiary of such traffic (see: LEGO Juris A/S v. Project Xenos, Ty Weir, WIPO Case No. D2011-1281 (“commercial gain need not accrue to Respondent – only that Respondent had the intention, for commercial gain”); Grupo Costamex, SA de C.V. v. Stephen Smith and Oneandone Private Registration / 1&1 Internet Inc., WIPO Case No. D2009-0062 (“through trickery, the perpetrator of the initial interest confusion has obtained access to an audience that he or she would not otherwise have reached…the registrant’s interest in freedom of expression prevails, but on condition that the expression must be non-commercial in nature, and that the registrant must have acted in a “fair”, or “legitimate non-commercial” way”).

A further conclusion can be drawn about the Respondent from its use of the Disputed Domain Name resolving to a landing webpage that it controls containing the words “Points or More®”. A search of the trademarks registers in Australia and the United States of America reveal no such registered trademark.² In the absence of a registered trademark, it is an offence to use the ® symbol in connection with an unregistered mark under the relevant trademark legislation in these countries. In this Panel’s view, that too is evidence of bad faith use. This Panel notes that the categories of examples in paragraph 4(b) of the Policy are not closed. In line with previous UDRP decisions, the passive holding of the Disputed Domain Name does not prevent a finding of bad faith either.

In this case, the Disputed Domain Name contains the Complainant’s well-known trademark, and diverts Internet traffic to a landing page controlled by the Respondent that displays unlawful content.

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

7. Decision

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 <qantasstore.com> be transferred to the Complainant.

Nicholas Weston
Sole Panelist
Date: August 15, 2019

¹ This Panel conducted a trademark search at IP Australia for the word “QANTAS” which returned 38 registered examples. Registered Trademark No. 289938 is the first of those listed in the search results.

² It is accepted under the UDRP Rules that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision, including the accessing of trademark registration databases (see: WIPO Overview 3.0, section 4.8).