WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Austrian Airlines v. Minos Bekeridis
Case No. D2001-0945
1. The Parties
The Complainant is Austrian Airlines, Österreichische Luftverkehrs AG, Fontanastr. 1, A 1107 Vienna, Austria, represented by Dr. Hannes Jarolim.
The Respondent is Minos Bekeridis, Minos Inc., 795 Strauss Suite 31, Brossard, Quebec J4X 1N1, Canada, representing himself.
2. The Domain Name and Registrar
The Domain Name at issue is . The Registrar is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA. 20170 USA.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) by e-mail on July 23, 2001, and a hardcopy was received by the Center on July 26, 2001. The Center acknowledged the receipt of the Complaint on July 25, 2001.
On the same day the Center sent to Network Solutions, Inc., a request for verification of registration data. On July 26, 2001, Network Solutions, Inc., confirmed to be the Registrar, that Minos Bekeridis is the Registrant of the domain name , and that the domain name registration is "Active".
WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The Panel is satisfied this is the case.
On July 27, 2001, the Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the administrative proceedings commenced. Since no communication was received from the Respondent within the time limit set, the Center sent a default notification to the Respondent, on August 17, 2001.
On August 24, 2001, the Center notified the Parties that an Administrative Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
No further submissions were received by the Center or the Panel. The date scheduled for issuance of the Panel�s decision is September 7, 2001.
4. Factual Background
A. Complainant
The Complainant, which was founded in 1957, is Austria's largest carrier of persons and cargo. It provides air transportation services within Europe, to the United States, to Canada, to Central Asia, the Near and Middle East, to China, Japan and India and is known under its trade name AUSTRIAN AIRLINES.
The Complainant is the owner of several service mark registrations for marks, consisting of a combination of the words "AUSTRIAN AIRLINES" with a graphic symbol, for air transportation services in class 39 of the International Classification, in Austria, Germany, the Russian Federation, South Africa and the United States. At least the Austrian registration No. 164 554 dated April 6, 1996, is dominated by the words AUSTRIAN AIRLINES.
These facts are evidenced by the attachments to the Complaint and, in the absence of any submission of the Respondent to the contrary, the Panelist is satisfied that the documents submitted by the Complainant are truthfully reflecting the factual circumstances of the case. Furthermore, the Panelist is satisfied that the trademark AUSTRIAN AIRLINES is a well-known mark not only in Austria, but also in many other countries.
The Complainant administers an informative website under the domain name on which the combined mark "AUSTRIAN AIRLINES word with graphical symbol" as registered in Austria under No. 164 554 (words AUSTRIAN AIRLINES, followed by a small graphical symbol) is shown prominently.
On March 15, 2001, the Complainant asked the Respondent per e-mail to hand over the domain name. On March 27, 2001, the Respondent answered by e-mail: "Please be so kind as to contact me by e-mail with an offer, should you actually be interested in acquiring the domain". The Complainant responded on April 12, 2001, referring to the ICANN Policy, and requesting the transfer of the domain name free of charge, or at least its cancellation. On April 19, 2001, the Respondent wrote back as follows:
"I operate several incorporated retail and online travel agencies and acquired this domain name to develop a specific market. I have put over 9 months of research and work into developing an online agency focused on attracting travelers to Austria, Hungary, Slovakia, Czech Republic, I would not like to let all this work go to waste by not having the domain which I purchased for this specific reason. I understand your point of view aswell, however, please understand mine, I am reluctant in renouncing this domain for nothing, after all the effort I have invested."
This exchange of e-mails is evidenced by Annex 4 to the Complaint.
B. Respondent
The Respondent registered on January 18, 2000, the domain name . with Network Solutions, Inc. According to the Network Solutions verification response the Respondent indicated as his registration name: Minos Bekeridis (AUSTRIANAIRLINES2-DOM) and as his administrative, technical and billing contact: BEKERIDIS MINOS (MB26283), MINOS INC., all at the same address as indicated above in paragraph 1. The domain name has apparently not been activated by the Respondent.
5. Parties� Contentions
A. Complainant
Complainant submits that (1) the domain name is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.
B. Respondent
The Respondent has failed to submit any statement. He has therefore not contested the allegations of the Complaint.
6. Discussion and findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:
1) The domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith.
1) Confusing similarity with a mark in which the Complainant has rights
The domain name is not identical with marks of the Complainant, but consists of the words, which are their main identifying element and which are also well-known. The graphic symbol, which is a part of the Complainant's registered marks, cannot be pronounced and the generic top level domain indicator ".net", cannot be taken into consideration when judging confusing similarity. Based on general principles of trademark law that domain name is therefore confusingly similar with the Complainant's trademarks. This is also the case, when considering the particular circumstances of use on the Internet. Persons searching for the Complainant on the Internet will normally expect to find the Complainant under its principal identifier "austrian airlines". However, when attempting to find the Complainant in the ".net" domain, they will be informed that there is no website existing under that term. They may become discouraged and search no further for Complainant's website.
Would the Respondent, as indicated in his email dated April 19, 2001, start an online agency, focused on attracting travelers to Austria and some neighboring countries, under the domain name , and promote this business under that domain name, potential customers would be inclined to believe that this agency belongs to the Complainant or would at least be authorized by it or otherwise related to it. Such risk of confusion would arise not only for potential customers who know the Complainant under its mark and business name AUSTRIAN AIRLINES, but also for other potential users, since the domain name (as well as the Complainant's mark) is composed in a manner in which names of main carriers of many countries are created (examples taken from a much larger list are American Airlines, Indian Airlines, Japan Airlines, Singapore Airlines). Many customers will therefore automatically relate a trade name, mark or domain name, which combines the name of a country with the generic term "airlines" to the carrier of the respective country.
The domain name is therefore confusingly similar with a mark in which the Complainant has rights in many countries.
2) Legitimate rights or interests in respect of the domain name
The Complainant has not consented to the Respondent's use of the domain name. Simple stocking of the domain name by the Respondent does not create any right or legitimate interest in the domain name.
Furthermore, none of the circumstances listed under paragraph 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. The Respondent has, in correspondence with the Complainant, admitted that he does not use (commercially or non-commercially) the domain name. Clearly, he has not been commonly known by the domain name. His purported plans to use the domain name in the future for the activity described in his e-mail dated April 19, 2001, do not justify the registration of that domain name since, as explained above, its use for that activity would lead to confusion of potential clients and of internet users in general.
Therefore, in the absence of any submission of the Respondent, which would show a present or future legitimate interest in the domain name, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name .
3) Registration and use in bad faith
For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith. As an example, the Policy section 4(b) (i) mentions registration of the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of a mark or to a competitor of that Complainant for valuable consideration in excess of out-of-pocket costs directly related to the domain name.
A generally applied test is therefore whether a Respondent has attempted to sell the domain name for a sum in excess of the Respondent�s out of pocket expenses in registering the domain name.
Even if the Respondent did not request a fixed amount of money for the transfer of the domain name to the Complainant, the Panel is satisfied that this test is complied with. In his e-mail dated March 27, 2001, the Respondent asked the Complainant to contact him with an offer, should he be interested in acquiring the domain name. When the Complainant responded that the domain name should be transferred free of charge, the Respondent, in his e-mail dated April 19, 2001, refused to transfer the domain name free of charge, but he did not exclude the possibility of a transfer. He justified his refusal with the investment that he purported to have made in an activity to be exercised under that domain name. Without expressly formulating a request, he thus invited the Complainant to compensate him for that investment, should it wish to have the domain name transferred, no doubt with an amount which clearly would have been in excess of his out of pocket expenses in acquiring the domain name.
Even if one accepted the arguments of the Respondent in his e-mail dated April 19, 2001, as representing true reasons for his registration of the domain name (the Respondent chose not to put forward evidence for these arguments, however the business name, which he indicated when registering the domain name, goes in that direction) this would not justify his action. As said before, the use of the domain name for the described activity would be misleading. Furthermore, the Respondent, who according to his submission in the same e-mail dated April 19, 2001, operates several retail and online travel agencies, was, if that submission is true, no doubt aware that AUSTRIAN AIRLINES is the Complainant's trademark and that he did not have the right nor a legitimate interest in using that trademark as a domain name for the proposed travel agency.
In conclusion, the Respondent either registered the domain name in order to sell it for out of pocket expenses to the Complainant (and he has been using the domain name for that purpose by asking for an offer of the Complainant), or he registered the domain name and is intending to use it to attract, for commercial gain, internet users to his future website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of his website and the service he intends to offer on that website. He may even have pursued both aims in parallel.
In the absence of any argument in favor of good faith registration or good faith plans to use the domain name , the Panel therefore concludes that the allegation of the Complainant that the Respondent has registered and is using the domain name in bad faith is sustained.
7. Decision
The Panel decides that the Complainant has proven each of the three elements of paragraph 4(a) of the Policy.
Pursuant to paragraph 4(I) of the Policy and paragraph 15 of the Rules, the Panel requires that the registration of the domain name be transferred to the Complainant.
Dr. Gerd F. Kunze
Sole Panelist
Dated: September 7, 2001
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