WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION AIDA Cruises German Branch of Societá di Crociere Mercurio S.r.L v. Demand Domains, Inc. Case No. D2009-1006 1. The Parties
Complainant is AIDA Cruises German Branch of Societá di Crociere Mercurio S.r.L, Rostock, Germany, represented by Selting und Baldermann, Germany.
Respondent is Demand Domains, Inc., Bellevue, Washington, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2009. On July 28, 2009, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the Domain Name. On that same day eNom, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 5, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 7, 2009. The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on August 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 7, 2009. The Response was filed with the Center on September 4, 2009.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on September 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.
Complainant submitted a request to suspend the proceedings on October 1, 2009. In view of the Panel's findings in this case, the Panel, in accordance with its powers under paragraph 10 of the Rules, decides to proceed to issuing the decision. 4. Factual Background
Complainant is a cruise line, based in Rostock, Germany, which operates cruises in Europe, the United States, the Caribbean and Asia. It has an annual turnover of some €566.100.000 in 2008.
Complainant owns the German trademark 397 01 328 (AIDA), registered on March 17, 1998 for “travel arrangements, transport; accommodation of guests”. In addition, Complainant owns the European Community (EC) Trademark 468 19 87 (AIDA), registered on January 24, 2008 for “travel arrangements, in particular cruises and tours”; and (2) Internationally Registered (IR) Trademarks 872 409 (AIDA) and 851 069 (AIDA CRUISES).
The disputed domain name was registered on July 1, 2007. 5. Parties' Contentions A. Complainant
Complainant contends that the Domain Name is identical to its AIDA marks. The TLD suffix “.org” and prefix “www” are neglected by the public because they are required features of domain names. The “online” portion of the Domain Name can also be neglected in determining whether the Domain Name is identical or confusingly similar because it is descriptive for the medium in which the Complainant offers and sells its travel services and offers travel information and arrangements for cruises – online the Internet.
Complainant contends that Respondent has not obtained from it any right to use the AIDA marks. Respondent's use of the Domain Name is commercial and not a bona fide use insofar as it offers sponsored links to travel services.
Complainant contends Respondent's use of the Domain Name was in bad faith in that Respondent was well aware of the AIDA marks when it registered the Domain Name (e.g., AIDA is mentioned by name on the website that uses the Domain Name).
Respondent has been using the Domain Name in bad faith because it has been using the AIDA marks to market products/services that are competitive to Complainant and to disrupt Complainant's business. B. Respondent
Respondent admits that it registered the Domain Name. Respondent alleges it has a policy against assuming registration or holding domains in derogation of legitimate rights holders. At the time Respondent assumed registration of the Domain Name, it was unaware that it had assumed registration of a domain that might conflict with Complainant's alleged trademark rights. Respondent was not aware of Complainant's alleged trademark rights until Respondent received the Complaint in this action.
Respondent alleges that Complainant did not contact Respondent directly regarding its concerns with the registration of the Domain Name although it had Respondent's contact information. Had it done so, Respondent claims it would have reviewed Complainant's allegations and responded accordingly.
Respondent chronicled the following events that it has alleged occurred: On August 18, 2009 after receiving a copy of the Amended Complaint a representative of Respondent contacted counsel for Complainant by email to quickly and amicably resolve the dispute, offering immediate and free transfer of the Domain Name (Annex A to Response). Respondent did not receive a response to this email. Another email contact was made on August 21, 2009 for the same purpose (Annex B to Response). On August 24, 2009, Complainant's counsel replied to Respondent's offer to transfer the Domain Name stating: “Responding to the below e-mail an immediate transfer of the domain to our client is highly appreciated. Please let us know your thoughts how to handle the transfer.” (Annex C to Response). On August 25, 2009 Respondent's representative replied stating in part that this proceeding would need to be suspended to allow the domain's registrar to unlock the domain to transfer to Complainant. (Annex D to Response). Respondent did not receive any response from Complainant. On August 27, 2009 Respondent's representative sent another email to Complainant's counsel inquiring whether Complainant was still interested in settling the current dispute amicably by agreeing to suspend this proceeding and accept Respondent's transfer of the Domain Name. (Annex E to Response). Once again, Respondent did not receive a response. Respondent made one more similar overture on August 31, 2009 (Annex F to Response) without receiving a response from Complainant.
Respondent disagrees with Complainant's allegations that it registered the Domain Name in bad faith. Respondent claims it did not have any knowledge of Complainant's alleged trademark rights, nor that its use of the Domain Name was an infringing one. Respondent claims that despite Respondent's repeated attempts to resolve the present matter quickly and amicably and Complainant's initial interest in settling this matter, Complainant made no further effort to acknowledge Respondent's subsequent communications to settle or take any necessary action to enable Respondent and the Domain Name's registrar to transfer the Domain Name to Complainant before the response deadline. Respondent alleges that it has acted with the utmost good faith in this proceeding.
Respondent maintains that it would still like to reach a resolution in this matter and again extends its offer to Complainant for immediate transfer of the Domain Name. Respondent requests that the Panel dismiss the Complaint so that Respondent can immediately transfer the Domain Name to Complainant. Alternatively, Respondent requests the Panel refrain from making any formal finding that Respondent acted in “bad faith” and endorse Respondent's offer to transfer the Domain Name to Complainant. 6. Discussion and Findings
Considering Complainant's request to have the Domain Name transferred to it by Respondent and Respondent's evidence supporting its unequivocal willingness to transfer the Domain Name to Complainant, the Panel concludes that no further elaboration is necessary and the Domain Name should be transferred to Complainant. Wilmer Cutler Pickering Hale and Dorr LLP v. Texas International Property Associates - NA NA,WIPO Case No. D2008-1451 (“[T]his Panel considers that a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements.”); Williams-Sonoma, Inc. v. EZ-Port,WIPO Case No. D2000-0207 (“Because Respondent has consented to the relief requested by Complainant, it is not necessary to review the facts supporting the claim.”) 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.
Harrie R. Samaras
Sole Panelist
Dated: October 1, 2009
Full & Egal Universal Law Academy