WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Airline Network PLC v. Video Images Productions LLC
Case No. D2007-1861
1. The Parties
The Complainant is Airline Network PLC, of United Kingdom of Great Britain and Northern Ireland, represented by Shipley Solicitors Limited, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Video Images Productions LLC, of United States of America, represented by ESQ Law Firm, United States of America.
2. The Domain Name and Registrar
The Disputed Domain Name is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2007. On December 17, 2007, the Center transmitted by email to Tucows a request for registrar verification in connection with the Disputed Domain Name at issue. On December 17, 2007, Tucows 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”), 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 January 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 23, 2008. The Response was filed with the Center January 24, 2008.
The Center appointed Alistair Payne, Beatrice O. Jarka and David E. Sorkin as panelists in this matter on February 14, 2008. The Panel finds that it was properly constituted. Each member of 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 travel business, incorporating flight and hotel bookings, car hire and tailor-made holidays, as the consumer brand of Gold Medal Travel Group PLC. The company was incorporated in 1991. The Respondent claims to register descriptive domain names as part of its business model, and claims that the Disputed Domain Name is one such registration. The Disputed Domain Name was registered on December 24, 2002. The Complainant submitted a Supplementary Filing to its Complaint, highlighting issues surrounding the alleged pattern of conduct of the Respondent. The Panel made a decision to allow this filing on the grounds of new evidence and arguments based on previously unavailable information. Subsequently, on February 25, 2008, the Panel issued a Panel Order inviting the Respondent to submit any reply it may have to the Complainant’s supplemental filing for simultaneous consideration by the Panel. The invited reply was submitted by the Respondent on February 28, 2008.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Disputed Domain Name is identical or confusingly similar to trademarks in which it holds rights. The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name and only registered the Domain Name in order to capitalise on the goodwill and reputation attached to the Complainant’s business and to prevent the Complainant from reflecting rights in its marks. The Complainant also contends that this is evidence of a bad faith registration and use of the Disputed Domain Name.
B. Respondent
The Respondent contends that the Disputed Domain Name is wholly descriptive and as such that any similarity to the Complainant’s marks is irrelevant for the purposes of the Dispute. The Respondent contends that given the descriptive nature of the Disputed Domain Name, that a site carrying ‘pay-per-click’ advertisements is a legitimate use of the Disputed Domain Name. The Respondent also contends that it had no knowledge of the Complainant’s business prior to registration of the Disputed Domain Name and as such it was not registered, or is being used, in bad faith.
6. Discussion and Findings
If the Complainant is to succeed, it must prove each of the three elements referred to in Paragraph 4(a) of the Policy, namely that:
i. the Disputed Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights; and
ii. the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
iii. the Disputed Domain Names have been registered and are being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in Paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has several trademark registrations for AIRLINE NETWORK, however only one predates the registration of the Disputed Domain Name. The mark the Complainant may rely on is a figurative mark containing the text “AIRLINE NETWORK AIRLINE NETWORK PLC”. This mark was registered on October 25, 1996. Since the registration of this mark the Complainant has invested large amounts of revenue in developing the brand and has developed a widely recognised reputation in the mark since its registration. The Complainant’s business has gained significant international renown under this title in relation to the provision of various travel services. The predominant facet of the Complainant’s mark are the words “airline network” which are centred between a pair of pilots’ wings. As such, the words are the key and dominant part of the mark.
The Panel is satisfied that the Disputed Domain Name is confusingly similar to a mark in which the Complainant has rights. As such, the Complainant has satisfied Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
As noted above the Disputed Domain Name is confusingly similar to a mark in which the Complainant has rights. The Panel is satisfied that the Respondent is not known, or was ever known, by the name “Airline Network”. The Panel accepts that the Respondent was never authorized by the Complainant to carry on any form of activity under the name “Airline Network”. The Panel notes the Complainant’s evidence that the Respondent is operating a ‘pay-per-click’ sponsored links site at the Disputed Domain Name. The Complainant has, therefore, established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Respondent claims that the Disputed Domain Name was registered when chosen from a list of expired domain names and that it was not aware of the Complainant’s rights in the mark. The Respondent has not provided the Panel with any evidence of preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. Nor is the Respondent currently making a non-commercial fair use of the Disputed Domain Name. The Respondent did not respond to the Complainant’s contention regarding the presence of links to one of its affiliate sites from the website to which the Disputed Domain Name resolves.
The Panel, therefore, finds that the Respondent has not rebutted the Complainant’s prima facie case and has not shown rights or legitimate interests in the Disputed Domain Name. The Complainant has, therefore, satisfied Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As noted above, the majority of the Panel is satisfied that the Dispute Domain Name is confusingly similar to a mark in which the Complainant has rights. The Respondent registered the Disputed Domain Name when it expired in 2002. From that time onwards, the Respondent has hosted a sponsored links website, providing links to various competitors of the Complainant as well as to an affiliate site of the Complainant.
The Respondent has had a number of complaints upheld against it in relation to similar activities regarding the trademarks of companies, and the hosting of ‘pay-per-click’ websites, as well as having registered various other domain names containing the trademarks of various companies (e.g. , , , ). In view of the similar nature of the circumstances here, and the lack of a bona fide use of the Disputed Domain Name, a majority of the Panel is willing to infer a pattern of conduct in this case.
In circumstances that the Respondent has registered various other domain names of companies not necessarily well-known in the United States of America, a majority of the Panel is willing to infer that the Respondent was aware of the Complainant’s business and intentionally selected the Disputed Domain Name in order to exploit its correspondence to the Complainant’s mark.
A majority of the Panel is therefore satisfied that the Complainant has met the requirements of Paragraph 4(a)(iii) of the Policy.
D. Dissenting Decision of Alistair Payne
In view of the generic nature of the Disputed Domain Name and on the evidence provided to the Panel, this Panelist considers that none of the limbs of Paragraph 4(b) of the Policy are satisfied.
The Respondent submitted evidence highlighting that the Disputed Domain Name was registered when a “Snap” was placed on it, after it appeared on a list of expired domain names. Considering the generic nature of the phrase “airline network” and the lack of evidence to show that the Respondent was aware of the Complainant’s business, this Panelist is unwilling to infer that the Respondent was on constructive notice of the Complainant’s business. Further, this Panelist does not consider that the Complainant’s previous pattern of conduct is sufficient to support an inference that the Disputed Domain Name was registered in bad faith.
As such, the Panelist would deny the Complaint on the basis of a failure by the Complainant to satisfy Paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, be transferred to the Complainant.
Alistair Payne
Presiding Panelist
Beatrice O. Jarka
Panelist
David E. Sorkin
Panelist
Dated: March 13, 2008
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