WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Air New Zealand Ltd. v. Kan

Case No. DNL2012-0064

1. The Parties

Complainant is Air New Zealand Ltd. of Auckland, New Zealand, represented by Melbourne IT Digital Brand Services, Australia.

Respondent is Kan of Glenside, Wellington, New Zealand.

2. The Domain Name and Registrar

The disputed domain name <airnewzealand.nl> (the “Domain Name”) is registered with SIDN through Internet Service Europe B.V.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2012. On October 3, 2012, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On October 4, 2012, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).

In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 9, 2012. In accordance with the Regulations, article 7.1, the due date for Response was October 29, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 30, 2012.

The Center appointed Paul L. Reeskamp as the panelist in this matter on November 8, 2012. The Panelist finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.

4. Factual Background

Complainant is a New Zealand based company, founded in the 1940’s under the name Tasman Empire Airways Ltd., renamed Air New Zealand Ltd. in 1965. Complainant has been offering flights from New Zealand to international destinations since 1978. Complainant has been part of the international “Star Alliance” airline network, whose international advertising material refers to “Air New Zealand”. Complainant is New Zealand’s national carrier, transporting over 13 million passengers per year.

Complainant is the proprietor of a large portfolio of trademarks, including the following trademark registrations for the European Community, which are also valid in the Netherlands:

- AIR NEW ZEALAND word + device mark, with registration no. 000464628, registered on February 14, 1997 in classes 39 and 43 (inter alia providing access to webpages on Internet in the field of airline services);

- AIR NEW ZEALAND word mark, with registration no 008580789, registered on August 25, 2010 in

classes 35 (inter alia Internet retail services) and 39 (inter alia provision of airline services and travel services by television, Internet, electronic mail or other electronic communication with customers).

These trademarks will hereafter be referred to jointly as: “the Trademarks”.

Furthermore, Complainant operates several local and international websites, for which it has registered inter alia the domain names <airnewzealand.com>, <airnewzealand.eu>, <airnewzealand.net> and <airnewzealand.com.au>. Complainant operates its main Internet website from the domain name <airnewzealand.co.nz>, which receives, on average, more than 3,5 million hits per week.

Respondent registered the Domain Name on September 23, 2004.

5. Parties’ Contentions

A. Complainant

Complainant seeks the transfer of the Domain Name from Respondent to Complainant in accordance with the Regulations.

The Domain Name is identical or confusingly similar to the Trademarks

Complainant contends that the Domain Name is identical or confusingly similar to the Trademarks.

Complainant argues that it is established case law that the top level domain “.nl” should be disregarded in the comparison between the Trademarks and the Domain Name.

Respondent has no rights or legitimate interests in the Domain Name

Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. Based on the information available, Complainant has not found that Respondent has any registered trademarks or trade names corresponding to the Domain Name, or that Respondent is known in relation with the Domain Name nor has Complainant been able to establish other circumstances that could provide Respondent with a right or legitimate interest in the Domain Name.

Also, Complainant has not provided Respondent with a license or authorization to use its trademarks for a domain name registration.

Complainant furthermore alleges that Respondent is not using the Domain Name for bona fide trade practices. The use of the Domain Name cannot be described as legitimate noncommercial use of the Domain Name because the website under the Domain Name is a so-called PPC (Pay Per Click) display of sponsored links, some of which leading to (products and services of) competitors of Complainant.

Respondent has registered or is using the Domain Name in bad faith

Complainant argues that Respondent has registered the Domain Name in bad faith. According to Complainant it is evident that Respondent is, or must have been, aware of Complainant and its trademarks while registering the Domain Name. Even more so, because Complainant established that Respondent is from or is at least linked to New Zealand.

With regard to the bad faith use of the Domain Name, Complainant alleges that Respondent uses the Domain Name to deliberately create a likelihood of confusion with Complainant’s trademarks, for the only purpose of generating commercial gain by intentionally taking advantage of Internet traffic and divert Internet users to other commercial websites through hyperlinks.

Furthermore, Complainant contends that Respondent uses the Domain Name in bad faith, because it is offering the Domain Name for sale.

Finally, Complainant argues that the fact that Respondent has not responded to Complainant’s letters and reminders also contributes to the finding of bad faith on part of Respondent.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Article 10.3 of the Regulations provides that in the event that a respondent fails to submit a response, the complaint shall be granted unless the panel considers it to be without basis in law or fact.

Based on article 2.1 of the Regulations, a claim to transfer a domain name must meet three cumulative conditions:

a. The domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the complainant has rights, or other name by means of article 2.1(a) under II of the Regulations; and

b. The respondent has no rights to or legitimate interest in the domain name; and

c. The domain name has been registered or is being used in bad faith.

Considering these conditions, the Panel rules as follows:

A. Identical or Confusingly Similar

There are two requirements that a complainant must establish under the first criterion, being: i) that it has rights in a trade name or trademark, and ii) that the domain name is identical of confusingly similar to such trade name or trademark.

Complainant founded its Complaint on two Community Trademarks and has submitted copies of the trademark registrations from which it follows that it is the holder of these Trademarks. Each of the Trademarks are protected under Dutch law.

It is established case law that the top level domain “.nl” may be disregarded in assessing the similarity between the relevant trademark(s) on the one hand, and the domain name on the other (see, e.g., Pieter de Haan v. Orville Smith Ltd., WIPO Case No. DNL2008-0017).

The registration of the AIR NEW ZEALAND word mark postdates the Domain Name registration. However, article 2.1(a) of the Regulations does not require that the trademark is registered prior to the domain name. This may be relevant for the assessment of bad faith pursuant to article 2.1(c) of the Regulations, which is considered below (see, e.g., Digital Vision, Ltd. V. Advanced Chemill Systems, WIPO Case No. D2001-0827 and Ice House America, LLC v. Ice Igloo, Inc., WIPO Case No. D2005-0649).

The registration of the AIR NEW ZEALAND word and device mark predates the Domain Name registration. The Domain Name must be compared to this trademark in its entirety. In this regard, it must be noted that this mark is a combined word/device trademark, featuring not only the word elements “Air New Zealand”, but also the “Koru” device, depicted above the word elements of this trademark. The device consists of two separate parts, placed above each other and divided by a white lean or opening, which together form an arrow-shaped form, which is pointing left, with inward curling sides. Brief research by the Panel shows that this form stems from traditional Maori-culture, in which this symbol, which is based on the shape of fern frond, before it has unfurled, represents the beginning of “new life”.

Since the figurative or graphic part of a trademark cannot be translated into a domain name, a true comparison is difficult to make. However, according to established case law under the UDRP¹, the proper approach under these circumstances is to look at the overall impression or idea created by the trademark and compare the result with the domain name (see, e.g., Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091 and Asset Loan Co. Pty Ltd. v. Gregory Rogers, WIPO Case No. D2006-0300).

In the present case, the “Koru” device is small, clearly subordinate and less distinctive, whilst the dominant, eye-catching part of the trademark is formed by the word elements “Air New Zealand”. Thus, in the Panel’s opinion, it is clear that the overall impression of the trademark is dominated by these word elements

So, when assessing the similarity between this trademark and the Domain Name, it is the dominant part thereof (the word elements) that should be compared to the Domain Name. This assessment leads to the conclusion that the Domain Name is confusingly similar to Complainant’s AIR NEW ZEALAND word and device mark.

Considering the above, the Panel finds that the Domain Name is confusingly similar to Complainant’s Trademarks within the meaning of article 2.1(a) of the Regulations.

B. Rights or Legitimate Interests

Pursuant to article 2.1(b) of the Regulations, Complainant must demonstrate that Respondent has no rights to or legitimate interest in the Domain Name. This condition is met if Complainant makes a prima facie case that Respondent has no such rights or interests, and Respondent fails to rebut this (see for example Technische Unie B.V. and Otra Information Services v. Technology Services Ltd., WIPO Case No. DNL2008-0002).

As follows from the Complaint, Respondent does not have any relevant trademark or trade name rights regarding the term “airnewzealand”. Respondent is not affiliated with Complainant and has received no consent to use any of the Trademarks. Respondent offered the Domain Name for sale and uses the Domain Name to offer sponsored links.

Respondent did not dispute this, and the Panel could not establish any indications that any of the circumstances as described in article 3.1 of the Regulations apply, nor that Respondent in any possible other way has a right to or legitimate interest in the Domain Name. The Panel is therefore satisfied that Respondent has no rights to or legitimate interest in the Domain Name.

C. Registered or Used in Bad Faith

Given the fact that Complainant’s AIR NEW ZEALAND word and device mark predates the date of the current registration of the Domain Name, as well as the fact that Complainant has submitted sufficient evidence of the fact that Air New Zealand can be considered as a well-known international airline (Air New Zealand Ltd. v. Christiand Co. Ltd., WIPO Case No. D2000-0360) and given the fact that Respondent is based in New Zealand, the Panel is of the opinion that Respondent was, or must have been aware of Complainant and at least one of its Trademarks at the time of registration of the Domain Name.

Furthermore – and this applies to both Trademarks – when taking into account that the website under the Domain Name offers sponsored links to inter alia (products and services of) competitors of Complainant and the fact that it is offered for sale, the Domain Name can also be considered as being used for commercial gain, by attracting Internet users to a website of Respondent or other online location through the likelihood of confusion which may arise with the Trademarks.

Given the above, the Panel holds that the Domain Name has been registered and is being used in bad faith. The third criterion is therefore also met.

7. Decision

For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name <airnewzealand.nl> be transferred to Complainant.

Paul L. Reeskamp
Panelist
Dated: November 14, 2012

¹ The mechanism of the Regulations is comparable to the Uniform Domain Name Dispute Resolution Policy (UDRP), see Technische Unie B.V. and Otra Information Services v. Technology Services Ltd., WIPO Case No. DNL2008-0002.