The Complainant is AIDA Cruises - German branch of Costa Crociere S.p.A. of Rostock, Germany, represented by Selting und Baldermann, Germany.
The Respondent is Noori net of Gyeongju Si, Gyeongsangbuk-Do, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2011. On February 28, 2011, the Center transmitted by email to Korea Information Certificate Authority Inc. d/b/a DomainCa.com a request for registrar verification in connection with the disputed domain name. On March 2, 2011, Korea Information Certificate Authority Inc. d/b/a DomainCa.com transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details.
On March 3, 2011, the Center issued a Language of Proceedings notification, inviting comment from the parties. The Complainant submitted a request that English be the language of the proceedings on March 11, 2011. The Respondent did not respond to the Center’s Language of Proceedings notification. On March 15, 2011, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available and also advised the parties that the Panel has the authority to determine the language of the proceeding.
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 March 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 5, 2011.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on April 12, 2011. 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 a cruise line based in Germany and is one of the market leaders in Germany with an annual turnover of EUR 722,100,000 in 2009. The Complainant has been operating cruises in Europe, the United States of America, the Caribbean, and Asia and is the owner of the German Trademark AIDA since its application for registration on January 15, 1997. The trademark is registered for travel arrangements, transport and accommodation of guests. The Complainant also holds the right to European Union trademark AIDA protected for “travel arrangements, in particular cruises and tours.”
The disputed domain name was registered on July 2, 2007. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to marks in which the Complainant has rights.
The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name, and confirms that it has not authorized or licensed rights to the Respondent in any respect.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Selection of Language
The Complainant was filed in the English language. It is noted that the language of the registration agreement for the disputed domain name is Korean.
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
In the present case, although the registration agreement for the disputed domain names was made in the Korean language, it appears that the Respondent was a party in the previous UDRP proceedings which were administered in English (Google Inc. v. Noori net, NAF Claim No.1003001311521 and Daimler AG v. Noori net, NAF Claim No.1005001323972). Moreover, the disputed domain name consists of English word “hotel” combined with the Complainant’s trademark. It is also noteworthy that the Center in preliminarily deciding to proceed with acceptance of the Complaint in English nevertheless communicated with the parties in both English and Korean, indicated that it would accept a Response in either English or Korean and that it would (and has) appointed a panel familiar with both English and Korean.
On the other hand, the Complainants do not appear to be able to communicate in Korean and therefore, if the Complainants were to have the documents submitted translated into Korean, the administrative proceeding would be unduly delayed and the Complainants would have to incur substantial expenses for translation. Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of the proceeding in this case. See Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003 0679. B. Substantive Elements of the Policy
Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint.” Under paragraph 14(a) of the Rules, in the event of such a “default” the Panel is still required “to proceed to a decision on the complaint,” and under paragraph 14(b), the Panel shall “draw such inferences therefrom as it considers appropriate.”
Consequently, the Panel must proceed with an assessment of the Complaint on its merits. C. Identical or Confusingly Similar
The disputed domain name consists of the word “hotel” and the Complainant’s trademark AIDA plus the descriptive top level domain suffix “.com.” The word “hotel” is descriptive for the travel services the Complainant has protection for under the trademark AIDA. The addition of the word “hotel” tends, if anything, to increase the likelihood of confusion, because the word is descriptive of the business operated by the Complainant under the AIDA mark. See The Ritz Hotel, Limited v. Damir Kruzicevic,WIPO Case No. D2005-1137; ACOR, Society Anonyme a Directoire et Conseil de Surveillance v. SEOCHO,WIPO Case No. D2002-0517; Marie Claire Album S.A. v. Buy This Domain,WIPO Case No. D2002-0677.
It is also well established that the specific top level of a domain name such as “.com”, “.org”, or “.net” does not affect a domain name for the purpose of determining whether it is identical or confusingly similar. See Missoni S.p.A. v. Ahmed Salman,WIPO Case No. D2007-1485; 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.
The disputed domain name wholly incorporates the Complainant’s distinctive trademark and in the Panel’s view creates sufficient similarity to be deemed identical to or confusingly similar to the Complainant’s trademark pursuant to the Policy, paragraph 4(a)(i). D. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. In connection with this element, several decisions of UDRP panels have held that “[o]nce a Complainant establishes prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondents to rebut the showing.” Ets Leobert, SARL v. Jeonggon Seo,WIPO Case No. D2009-0004. See also Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com,WIPO Case No. D2001-0784; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683.
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its mark; the Panel further notes that there is nothing in the record to suggest that the Respondent is, or has ever been, commonly known by the disputed domain name. The Panel’s view is that these facts must be taken as proven in the circumstances of this case provided that they have not been denied by the Respondent.
The Respondent has not submitted a response to the Complainant’s contentions. Therefore, it has failed to invoke any circumstances that could have demonstrated any rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii)of the Policy. E. Registered and Used in Bad Faith
Both under past UDRP decisions (see for instance Nike, Inc. v. B. B. de Boer,WIPO Case No. D2000-1397; Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806) and under the Policy (see paragraph 2), a well-established principle is that when someone registers a domain name, it represents and warrants to the registrar that, to its knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s mark is widely known, it is unlikely that the Respondent, at the time of registration of the disputed domain name, was not aware of the Complainant’s trademark rights.
Bad faith can be inferred based on the fame of the Complainant’s marks in Europe, the United States, the Caribbean and Asia, such that the Respondent was aware or should have been aware of the Complainant’s mark and claims of rights thereto.
The Respondent is using the disputed domain name to link to other sites with the same business activity as the Complainant. The fact that some of the commercial websites linked to the Respondent’s website were those of the Complainant’s competitors is a clear indication of bad faith use. See DORMEUIL FRERES and DORMEUIL UK v. Keyword Marketing, Inc.,WIPO Case No. D2007-1424.
The conduct described above falls squarely within paragraph 4(b)(iv) of the Policy and accordingly, the Panel concludes on the record before it that the Respondent registered and is using the disputed domain name in bad faith. 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.
Thomas P. Pinansky
Sole Panelist
Dated: April 25, 2011
Full & Egal Universal Law Academy