WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Qantas Airways Limited v. Minh Huynh Case No. D2008-1382 1. The Parties
The Complainant is Qantas Airways Limited, of New South Wales, Australia, represented by Blake Dawson of Sydney, Australia.
The Respondent is Minh Huynh, of Ho Chi Minh, Vietnam. 2. The Domain Names and Registrars
The disputed domain names , , , , , , , , , and are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2008, by email and on September 12, 2008, by hardcopy. On September 12, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the domain names at issue. On September 13, 2008, GoD, Inc. 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 23, 2008. In accordance with paragraph 5(a) of the Rules, the due date for
Response was October 13, 2008. The Response was filed with the Center on October 12, 2008 by email and on October 16, 2008 by hardcopy.
The Center received supplemental filings from both parties on October 23, 2008 and October 27, 2008 respectively.
The Center appointed Brigitte Joppich, Alan L. Limbury and Ilhyung Lee as Panelists in this matter on October 28, 2008. The Panel finds that it was properly constituted. Each member of the Panel has submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. 4. Factual Background
The Complainant is one of the world's leading airlines and has provided airline services since 1920. It presently operates a fleet of 228 aircraft and carries approximately 36 million passengers per year, offering services to 140 destinations in Australia, Asia, the Pacific, the Americas, Europe and Africa. As part of its business, the Complainant wholly owns the low fare airline Jetstar Airways Pty Limited (“Jetstar”). Jetstar has operated as a fully functional airline from its launch on May 25, 2004, now carrying more than 9 million passengers per year, flying to 30 destinations in 8 countries in the Asia-Pacific region, including Australia, Indonesia, Japan, New Zealand, Singapore, Thailand, the United States (Honolulu) and Vietnam.
The Complainant is registered owner of numerous trade mark registrations and applications for QANTAS worldwide with a priority as early as 1975 (the “QANTAS Marks”) and numerous trade mark registrations and applications for JETSTAR, JETSTAR PACIFIC and JET plus star device worldwide (the “JETSTAR Marks”). The Complainant's trademarks mainly cover air travel services, passenger transport services, accommodation services and related services.
The Complainant has been offering its services on the Internet inter alia at since 1996 and at since 2003.
On July 31, 2007, the Complainant announced that it would acquire an 18 percent holding in the Vietnamese airline, Pacific Airlines Joint Stock Aviation Company (“Pacific”) and that it would increase its investment in Pacific to 30 percent by 2010. This press release led to broad media coverage of the Complainant's investment in the Pacific region.
In April 2008, Jetstar announced that it would enter into an arrangement with Pacific and that in May 2008 Pacific would be re-branded as a low cost airline into Jetstar Pacific Airlines Joint Stock Aviation Company (“Jetstar Pacific”) and would be based in Vietnam. On May 23, 2008, Jetstar Pacific commenced operations under the Jetstar Pacific brand with a fleet of 4 aircraft.
The disputed domain names were registered on August 22, 2007 (, , , , , , ) and on November 25, 2007 (, , ) respectively.
The disputed domain names , , , and were used in connection with websites showing sponsored links to travel and airline companies including competitors of the Complainant.
The Complainant's lawyers informed the Respondent on May 5, 2008, that his registration of the domain names and had not been authorized by the Complainant and that the use and registration of such domain names was misleading and deceptive and likely to cause confusion. In reply, the Respondent stated that he was currently using the parking service at GoD for such domain names.
In May 2008, the representatives of Pacific were also corresponding with the Respondent about the domain names and . On May 16, 2008, the Respondent wrote an email to Pacific stating: “You know that I haven't had any plan to use the domain for the near future.” The Respondent indicated that he also registered the domain names , and and that he would be prepared to transfer the domain names and to the Complainant for a sum of US 325,000$. On May 26, 2008, the Complainant's lawyers wrote to the Respondent again and informed him that the registration of the domain names , and was misleading and deceptive and likely to cause confusion.
On June 1, 2008, the Respondent sent an email to the Complainant's lawyers and informed them that he had ended the parking service for the websites at “www.” and “www.” and that the websites were now under construction. The Respondent indicated to the Complainant's lawyers that he would agree to transfer the domain names , , , and to the Complainant for a sum of US 299,000$.
On June 2008, the Complainant conducted further investigations in relation to domain name registrations by the Respondent and discovered that the Respondent had also registered the domain names , , , and . 5. Parties' Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain names are confusingly similar to the names “Jetstar”, “Jetstar Pacific” and “Qantas” in which the Complainant has exclusive and longstanding rights in Australia and around the world, and which have been used extensively over several years, as the disputed domain names incorporate the JETSTAR, JETSTAR PACIFIC and/or QANTAS names and trademarks. The addition of “pacific”, “airlines”, “airline”, “airways”, “atlantic”, “arctic”, “indian” and/or “viet” to the Complainant's trademarks does not prevent the disputed
domain names from being confusingly similar to those marks.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain names as the Complainant has never granted the Respondent the right to use or register the JETSTAR, JETSTAR PACIFIC or QANTAS marks in connection with a domain name, as the Respondent is not the owner of any trade mark applications or registrations for the trade marks JETSTAR, JETSTAR PACIFIC or QANTAS or any similar trade marks, as the Respondent has not registered any company or business names which contain the names JETSTAR, JETSTAR PACIFIC or QANTAS, or similar names and is an individual and does not currently conduct any legitimate commercial or non-commercial business activities.
(3) The Complainant finally contends that the domain names were registered and were being used in bad faith.
With regard to the registration of the domain names in bad faith, the Complainant contends that the Respondent does not conduct any legitimate commercial or non-commercial business activity that relates to the disputed domain names and that the Respondent was aware of the Complainant and its trademarks when registering the disputed domain names based on the significant reputation of the Complainant and its affiliated companies in the names “Jetstar” and “Qantas” in Australia, Vietnam and internationally. Furthermore, the Complainant contends that a finding of bad faith registration is supported by the fact that the disputed domain names were registered in close proximity with public announcements made by the Complainant in relation to its proposed partnership with Pacific. Finally, the Complainant contends that the disputed domain names were registered in order to prevent the Complainant from reflecting its trademarks in a corresponding domain name and that the Respondent has established a pattern of conduct in this regard through the registration of the ten disputed domain names which include the Complainant's trademarks.
With regard to bad faith use, the Complainant contends that the disputed domain names were registered primarily for the purpose of selling them to the Complainant or its competitors for profit as he offered the domain names and to the Complainant for the sum of US 325,000$, respectively the domain names , , , and to the Complainant for the sum of US 299,000$, which is in excess of the out-of-pocket expenses directly related to the domain names and therefore constitutes bad faith under paragraph 4(b)(i) of the Policy. Furthermore, the Complainant contends that the Respondent intentionally used the disputed domain names for commercial gain and to attract Internet users to his websites by creating a likelihood of confusion as consumers mistakenly associate the websites at these domains with the Complainant. With regard to the domain names , , , , and the Complainant contends that these domain names have been used in bad faith under paragraph 4(b)(iv) of the Policy as they were used in connection with websites showing sponsored listings for various travel companies. B. Respondent
With regard to the domain names , , , and , the Respondent states that these domain names were the subject matter of negotiations between the parties, but that the Complainant never replied to the Respondent's last offer. Moreover, the Respondent contends that the websites at these domain names were “under construction”, that the domain names were registered legally under the terms and conditions of the Registrar on a “first come first served basis”, and that the use of the domain names was not in bad faith. Furthermore, the Respondent claims that the domain names are made up exclusively of the common English words “jet”, “star”, “pacific”, “atlantic”, “arctic”, “indian” and “airline”, which differ from distinctive names, such as “Pepsi”, “Wal-Mart”, “Telstra”, and that nobody can own such generic words. The Respondent finally contends that everybody can use websites at “www.”, “www.”, “www.”, “www.” and “www.” in a private, personal and non-commercial way and that the domain names were intended for websites providing information on jets, telescopes, oceanography, and airliners for pupils, students, engineers and officers. Finally, the Respondent contends that the websites under the domain names contain a disclaimer, i.e. “This web site is not commercial website – It is just my hobby and may be yours”, thereby preventing any confusion or the misleading of users.
With regard to the Complainant's trademark JETSTAR PACIFIC, the Respondent contends that such trademark is not registered in many countries worldwide, such as Cambodia, Indonesia, Hong Kong S.A.R of China, Malaysia, Thailand and Vietnam, and that it was created only after the registration of the domain name . Therefore, the domain name registration could not with intent violate the Complainant's trademark rights and therefore was not registered in bad faith.
With regard to the offer to sell some of the disputed domain names for the sum of US 299,000$ to the Complainant, the Respondent contends that such amount was not his final asking price. The Respondent first asked for US 325,000$ and - when the Complainant rejected such offer as too high – reduced the price to US 299,000$, before the negotiations were terminated by the Complainant. Finally, the Respondent contends that the price was not too high as the domain name was offered for sale at “” for the sum of US 211,200$.
With regard to the domain names , , , and , the Respondent claims that these domain names were not offered for sale, that the content of the website at “www.” was controlled by GoD and that the use of the domain name was not in bad faith. 6. Discussion and Findings
The first point to be dealt with is the admissibility of a supplemental submission of both parties.
The Rules do not allow the parties to file supplemental submissions on their own volition, and paragraph 12 of the Rules provides that a panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has
the right to insist upon the admission of additional arguments or evidence. Grounds justifying new submissions are above all the existence of new pertinent facts that did not arise until after the complaint was filed. In particular, if the respondent raises objections that could not have been anticipated when the complaint was filed, a panel can give the complainant a right to reply to the submission or may accept the complainant's unsolicited additional submission (See UNIVERSAL CITY STUDIOS, Inc. v. G.A.B. ENTERPRISES,WIPO Case No. D2000-0416; QNX Software Systems Ltd. v. Future Media Architects, Inc. and Thunayan K AL-Ghanim,WIPO Case No. D2003-0921; Goldline International, Inc. v. Gold Line,WIPO Case No. D2000-1151).
The Complainant does not cite any exceptional circumstances necessitating further submissions, nor does the Response itself disclose any new facts or new legal authority not available at the time the Complaint was submitted. Instead, the Complainant appears to have made the supplemental filing solely to reply to the Response. Such a reply is not justified under the Rules (See AT&T Corp. v. WorldclassM,WIPO Case No. D2000-0553; Universal City Studios, Inc., supra; AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr.,WIPO Case No. D2005-0485). Therefore, the Panel elects not to accept the Complainant's supplemental submission and has not relied on it in reaching this decision and, consequently, not on the Respondent's reply thereto either.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to a mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain names , , , , , , fully incorporate the Complainant's JETSTAR Marks in which the Complainant has exclusive rights.
The disputed domain names , and fully incorporate the Complainant's QANTAS Marks in which the Complainant also has exclusive rights.
Some of the domain names also incorporate the word “pacific”, the name of Pacific, a low cost airline based in Vietnam and re-branded into Jetstar Pacific following the Complainant's investment therein.
The fact that different trademarks are combined in the disputed domain names does not hinder a finding of confusing similarity, which may also be found where a domain name consists of a combination of two signs to which the complainant holds trademark rights (See Saab Automobile AB et al. v. Joakim Nordberg,WIPO Case No. D2000-1761; Audi AG v. Hans Wolf,WIPO Case No. D 2001-0148). In the present
case, every single domain name incorporates at least one of the Complainant's registered trademarks.
Furthermore, the addition of the generic words “airlines”, “atlantic”, “arctic”, “indian”, “viet”, “airline” or “airways” does not eliminate the similarity between the Complainant's marks and the domain names either. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (See Dr. Grandel GmbH v. Drg Randel Inc.,WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242). This is regardless of whether the generic term precedes or follows the trademark (See Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409; Yell Limited v. Ultimate Search,WIPO Case No. D2005-0091).
Finally, it is also well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant's trademark and the disputed domain name (See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trade mark or service mark at issue.
Even though paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name, it is consensus view among panelists that where the complainant makes a prima facie case to address the requirements of paragraph 4(a)(ii) of the Policy, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then lie with the respondent.
The Complainant has asserted that the Respondent has no rights to or legitimate
interests in the domain names, is not using the domain names in connection with a bona fide offering of goods or services and is not commonly known by the domain names. The Complainant has therefore made its prima facie case under paragraph 4(a)(ii) of the Policy.
The Respondent stated that the disputed domain names were legally registered and that they were made up exclusively of common English words which nobody could own, while publicly available information would be provided at the websites at e.g., “www.” in a non-commercial way, which was underscored by an appropriate disclaimer. However, while the words “jet”, “star”, “Pacific”, “Atlantic”, “arctic”, “Indian” “viet” and “airline” are generic or geographic terms which can be used by third parties descriptively nearly without limitation, the Panel is convinced that the specific combination of the generic words “jet” and “star” enjoys at least a certain degree of distinction. Moreover, the Respondent has not provided any kind of evidence for his intentions. The Panel therefore finds that the Respondent did in particular not make any preparations to use the disputed domain names in connection with a bona fide offering of services nor did he make a non-commercial or fair use of the domain names as suggested by paragraph 4(c) of the Policy. Therefore, the Respondent has failed to prove rights or legitimate interests under paragraph 4(a)(ii) of the Policy.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.,:
(i) circumstances indicating that the respondent has registered or acquired 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 the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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 on its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain names were registered in bad faith and are being used in bad faith.
The Panel is satisfied that the Respondent was aware of the Complainant when he registered the disputed domain names and therefore did so in bad faith under paragraph 4(a)(iii) of the Policy because of the following circumstances:
- The Complainant is one of world's leading airlines and has provided airline services since 1920; it is well known in its field of business.
- The Respondent registered the domain names , , , , , and all on the same day, making at the same time either the Complainant's valuable JETSTAR Marks or its valuable QANTAS Marks part of his domain names, which would in the Panel's view, seem improbable without knowing of the Complainant, its business and its trademark rights.
- The disputed domain names , , , , , and were all registered on August 22, 2007, shortly after the Complainant publicly announced its acquisition of an 18 per cent holding in the Vietnamese airline Pacific Airlines Joint Stock Aviation Company and its intention to increase such investment to 30 percent by 2010. This press release was broadly covered by the media, also in Vietnam, where the Respondent is domiciled.
- Next to the Complainant's JETSTAR Marks or QANTAS Marks, the disputed domain names , , , , , and all contain either the name of Pacific or the term “viet”, denominating the place of business of Pacific, namely Vietnam.
There is no explanation of the juxtaposition of the Complainant's prior trademarks and either the term “pacific” or “viet” (relating to the Complainant's publicly announced investment) other than the knowledge of the Complainant's trademarks and its business plans. Under these circumstances, it is irrelevant for the finding of bad faith that the registration of these domain names predates the JETSTAR PACIFIC trademark applications of the Complainant as the Respondent suggests (see Cliffe Dekker, Inc. and Hofmeyr Herbstein & Gihwala, Inc. v. Information Services, Brian Evans,WIPO Case No. D2008-1327).
As the Respondent was aware of the Complainant and its trademarks when he registered the first seven of the domain names on August 22, 2007, he was definitely also aware of the Complainant when he registered the remaining three of the disputed domain names, i.e. , , on November 25, 2007.
The Respondent also used the domain names in bad faith.
With regard to the domain names , , , and the Complainant
provided evidence that the Respondent offered these domain names for sale at a price of US 299,000$, which is by far exceeding the Respondent's out-of-pocket costs directly related to the domain names. The Panel is therefore satisfied that these domain names were registered primarily for the purpose of selling them to the Complainant and therefore in bad faith under paragraph 4(b)(i) of the Policy. The Respondent's contention that he might have been willing to sell the domain names at a lower price does not prevent such finding as the Respondent's attempt to sell them at the above-mentioned price constitutes bad faith as such.
Moreover, with regard to the domain names , , , and , the Respondent also acted in bad faith by fully incorporating either the JETSTAR Marks or the QANTAS Marks into the domain names and then using the websites at such domain names as parking websites, providing links to direct competitors of the Complainant. The Respondent thereby was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for the purpose of earning click-through-revenues from Internet users searching for the Complainant's website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (See L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc.,WIPO Case No. D2005-0623). The Panel is therefore satisfied that the Respondent used the disputed domain names , , , and in bad faith under paragraph 4(b)(iv) of the Policy as well.
Furthermore, bad faith use is with regard to all of the disputed domain names in this case established by the fact that the Respondent registered a total of 10 domain names all including the Complainant's trademarks. The Respondent thereby acted in a pattern of preventing the Complainant as owner of trademarks and service marks from reflecting its marks in a corresponding domain name as specified by paragraph 4(b)(ii) of the Policy.
Finally, the fact that the Respondent did not actively use all of the disputed domain names in connection with websites does not prevent a finding of bad faith use. It is consensus view that a panel must examine all the circumstances of a case to determine whether a respondent is acting in bad faith (See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131). In the present case, the Panel is satisfied that the overall circumstances support a finding of bad faith independent of the Respondent's non-use of some of the disputed domain names.
Consequently, the Panel finds that the Complainant has satisfied the requirements of 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 names , , , , , , , , and be transferred to the Complainant.
Brigitte Joppich
Presiding Panelist
Alan L. Limbury
Panelist
Ilhyung Lee
Panelist
Dated: November 13, 2008
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