WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Air Austral v. Tian Yi Tong Investment Ltd. Case No. D2009-0020 1. The Parties
The Complainant is Air Austral, of Ile de la Réunion, France, represented by MEYER & Partenaires, France.
The Respondent is Tian Yi Tong Investment Ltd., of Hong Kong, SAR of China represented by Jeffrey W. Berkman, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2009. On January 12, 2009, the Center transmitted by email to N LLC a request for registrar verification in connection with the disputed domain name. On January 12, 2009, N LLC 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 6, 2009.
On February 12, 2009, the Center received an email communication from the Respondent's authorized representatives. Attached to the email was a late Response.
The Center appointed Michael J. Spence as the sole panelist in this matter on February 17, 2009. 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 an airline operating under the AIR AUSTRAL trade mark in the Indian Ocean and Southern Africa. The Respondent is a Hong Kong based company that operates, amongst other things, a website on which consumers are encouraged to take legal action against airlines with whom they are in dispute. The website operates under the domain name . The Respondent registered the disputed domain name on June 19, 2008. On the same day it registered several other domain names comprised of the trade marks of airlines companies with the suffix ‘-sucks'. The website to which the disputed domain name directs Internet users is currently ‘parked' and contains click-through links to other sites, including travel related sites. 5. Parties' Contentions A. Complainant
The Complainant claims that the domain name is confusingly similar to its trade mark, because the domain name entirely reproduces the mark, and the suffix ‘-sucks' does not sufficiently distinguish the domain name from the mark. In making this second contention, the Complainant relies upon a body of panel decisions in which it is asserted that an Internet user may be confused into thinking that the domain name is a part of a ‘self-derision' marketing strategy, or that many Internet users, including many who do not speak English, may not know that ‘sucks' is a derogatory term. The Complainant stresses that this is not a case of ‘cybergriping', but that the Respondent has no right or legitimate interest in the domain name and that it is using the name in bad faith to operate a ‘click through' site for profit. B. Respondent
The Respondent contends that the Panel should accept its Response, notwithstanding its late submission, and that the registration of the disputed domain name, and the similar names registered on the same day, was for the purpose of establishing cybergriping sites associated with its site “”. It contends that it does not derive any profit from the links on the site at the disputed domain name, indeed that it did not know of them before the Complaint, and points to the decision of the panel in Tchibo Frisch-Röst-Kaffee GmbH v. Hans Reischl, WIPO Case No. D2001-0079 to argue that “an improper commercial purpose cannot be imputed to Respondent simply because of the parking of the domain or presence of hyperlinks.” In particular, it points out that the site had only been ‘parked' for a “few months” before the Complaint was brought. 6. Discussion and Findings
The first issue to be considered is whether the Panel should consider the Respondent's late response. The default position, under paragraph 5(e) of the Rules is that a late submitted response should be ignored in the absence of exceptional circumstances. The Respondent's claim that it did not receive notice of the complaint does not, prima facie, constitute evidence of exceptional circumstances. However, under paragraphs 10(a) and (e) of the Rules, the decision whether to admit a late response falls within the discretion of the Panel (Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009). Given that in this case the response contains relevant information and given the duty imposed on the Panel by paragraph 10(b) of the Rules to ensure that “each party is given a fair opportunity to present its case”, the Panel decides that the Respondent's late submission is admissible. A. Identical or Confusingly Similar
The situation in relation to cases containing derogatory suffixes such as ‘sucks' is contentious. The view of the majority of panels is summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions lends weight to the contention of the Complainants1. It is that:
“A domain name consisting of a trademark and a negative term is confusingly similar to the complainant's mark. Confusing similarity has been found because the domain name contains a trademark and a dictionary word; or because the disputed domain name is highly similar to the trademark; or because the domain name may not be recognized as negative; or because the domain name may be viewed by non-fluent English language speakers, who may not recognize the negative connotations of the word that is attached to the trademark.”
The Panel therefore finds that the Complainant has established the first element of Paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
It is for the Complainant to establish, at least prima facie that the Respondent has no rights or legitimate interests in the disputed names (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). The Panel accepts that the Complainant has not authorized the Respondent to use its trademark, and that the Respondent is clearly not known by the disputed domain name. Furthermore, Respondent is not using the domain name in connection with a bona fide offering of goods or services. Previous panels have found that the mere “parking” of a domain name does not of itself constitute a bona fide offering of goods or services under Paragraph 4(c)(i) of the Policy, particularly where links to products competing with those of the complainant are present. Martha Stewart Living Omnimedia, Inc. v. Domain Deals,WIPO Case No. D2007-0289. The Respondent is not currently making a legitimate non-commercial fair use of the domain name, although it does point to a potential use for that purpose.
In this regard, one potentially relevant fact in this case is the existence of a cybergriping site apparently operated by the Respondent under a different domain name at . This domain name, which is not under dispute in the present case, is apparently used by the Respondent to post a website on which inter alia information about various means by which air lines (in general) can be sued. The existence of this site makes this case somewhat different to that of other panel decisions which are in other respects similar, such as Societé Air France v. MSA, Inc., WIPO Case No. D2007-0143. Use of a domain name that contains a complainant's mark to identify a genuine cybergriping site about that complainant can give rise to a legitimate interest in that domain name, or an important vehicle of on-line critique and discussion may be silenced. Complainant is aware of this danger when it asserts in its Complaint that “it is not opposed to freedom of speech. To express its disagreement or opposition with something, someone or a company is one of the fundamental rights of human beings.”
In the view of the Panel, the purchase of this particular disputed domain name for the purpose of operating a genuine cybergriping site would have been a much more plausible claim if the domain name was in fact being used for a gripe site about the Complainant. In such case, the Panel would have had little hesitation in finding for the Respondent. But the domain name is not being used for that purpose. The Respondent claims that it has a “legitimate business interest” in using the disputed domain name in some manner associated with the Respondent's existing cybergriping site, yet the domain name has apparently been left “parked” by the Respondent as a click-through revenue generator possibly since its registration in June 2008. This fact makes the Respondent's claim highly suspect. At the very least, the Panel would have expected the Respondent to provide an explanation beyond essentially denying any knowledge or responsibility for the use apparently made of its own domain name during the course of the last nine months.
The Panel finds unconvincing the argument of the Respondent that it has not long held the disputed domain name, and the existence of hyperlinks on the site at the disputed name do little to bolster Respondent's claim to having a right or legitimate interest in the disputed domain name. The Panel also finds that the existence of the Respondent's website at does not necessarily establish a legitimate interest in the domain name in dispute in the present proceedings. The Respondent has not in these circumstances succeeded in rebutting the Complainant's prima facie case that it lacks rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the Complainant has established the second element of Paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Respondent was evidently aware of the Complainant when it registered the disputed domain name, and the disputed domain name is clearly being used in bad faith within the meaning of paragraph 4.b (iv) of the Policy. The disputed domain name wholly incorporates Complainant's mark and is being blatantly used as a revenue generator on which links to products apparently competing with those of Complainant appear. The fact that such links may be being automatically generated by a parking service does not excuse such use. As has been observed by numerous panels, a respondent is ultimately responsible for the content of a website generated by such technology. See inter alia Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448, NVT Birmingham, LLC d/b/a CBS 42 WIAT-TV v. ZJ,WIPO Case No. D2007-1079 and Grisoft, s.r.o. v. Original Web Ventures Inc.,WIPO Case No. D2006-1381.
The Respondent's use of the domain name to operate what could be described as a cybergripe site about the airline industry in general has given the Panel pause for thought. But even if the disputed domain name in this case was as the Respondent apparently claims registered because of a perceived potential business value in connection with its site at , it is not at all clear that this would have entitled the Respondent to make use of Complainant's trademark in particular for such purpose unless the Respondent's gripe was with the Complainant in particular. Moreover, even if the Panel was to accept that the Respondent should not be held responsible for the content of its own domain name, the Respondent's apparent indifference to the use of such domain name as an automated revenue generator for up to nine months does little to enhance the plausibility of Respondent's claim to having a legitimate interest in such domain name. In any event, on the present record, the Panel finds the more probable explanation for the Respondent's registration of the disputed domain name is that it hoped to utilize in some fashion connected with its business the value of the Complainant's AIR AUSTRAL mark. Such an objective could hardly be said to be consistent with registration in good faith.
In light of the above, the Panel finds that the Complainant has established the third element 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.
Michael J. Spence
Sole Panelist
Dated: March 4, 2009
1 Indeed, some panels have suggested that what is currently described in the WIPO Overview as the majority view may in fact have become the consensus view. See e.g. Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647, at footnote 5.
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