The Complainant is Monarch Airlines Limited of Luton, Bedfordshire, United Kingdom of Great Britain and Northern Ireland, represented by Demys Limited, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Richard Nani of Alispell, Montana, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2012. On December 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 2012, the Registrar 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 December 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2013.
The Center appointed Richard Tan as the sole panelist in this matter on January 23, 2013. 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 was established in 1968 and based in Luton, United Kingdom. It carries on business as a charter and scheduled airline and is one of the United Kingdom’s largest charter airlines, operating within Europe, the United States, the Caribbean, India and Africa, and mainly serving leisure destinations. It also operates scheduled flights to many Mediterranean destinations, the Canary Islands and Cyprus. Its main base is London Luton Airport, with hubs at Birmingham International Airport, London Gatwick Airport and Manchester Airport. The Complainant carried around 5.9 million passengers during 2011.
The Complainant is the owner of the trade mark MONARCH in the United Kingdom, trade mark registration number 1275140, registered in classes 37 and 39 with a filing date of October 1, 1986, and trade mark registration number 2259644, registered in class 43 with a filing date of October 24, 1996.
It has an online presence at through which the Complainant advertises and promotes its business, and allows Internet users to search for and book flights and hotels, in addition to making general corporate information available to the public.
The disputed domain name was registered by the Respondent approximately 26 years after the Complainant’s first registered trade mark. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical to the Complainant’s MONARCH mark except that it has the modifiers “airline” and “uk”. Both terms directly relate to the Complainant’s activities as a major European airline based in the United Kingdom. The Complainant contends that it has extremely strong rights in the MONARCH mark and submits that the disputed domain name is confusingly similar to its mark, the modifying words “airline” and “uk” being merely descriptive of the Complainant’s primary business.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name and contends that Respondent’s registration and use of the disputed domain name has been entirely in bad faith.
The Respondent has not been commonly known by the term “Monarch Airlines UK”. The Respondent is not a licensee of the Complainant and has not received any permission or consent from the Complainant to use the Complainant’s trademark. The Respondent is not named or commonly known as “Monarch Airlines UK” and owns no trademarks or service marks incorporating marks related to the term “monarch”.
The Respondent has made no demonstrable use, or preparations to use, the disputed domain name in connection with a bona fide offering of goods and services. The Respondent has no right to appropriate the Complainant’s mark to give the appearance that it is approved by, connected with or is indeed the Complainant itself.
The Complainant further contends that the disputed domain name has been either directly used or has been permitted to be used for the purposes of fraudulently impersonating the Complainant to commit “advanced fee fraud”. The Complainant has produced evidence of an email it received from a potential victim of the scam who alerted the Complainant to the disputed domain name having been used in relation to a scam targeting people who have posted their resumes or curriculum vitae on Internet employment websites. An email was sent to that person by a person purportedly named “Benny Hogan” with annexures which refer to the email address “hr@” and mentions an apparently fictitious office in Northern Ireland. The Complainant states that it does not employ anyone called Benny Hogan (in its Human Resources department or otherwise), does not have a major presence in Northern Ireland and does not charge potential employees fees of any kind.
The Complainant states that it can conceive of no circumstances in which the appropriation of a third party’s mark within a domain name for the purposes of fraud could be considered a bona fide use.
The Complainant asserts that the Respondent’s use of the disputed domain name cannot be construed as noncommercial in any way as envisaged by the Policy. Equally the Respondent’s use of the disputed domain name cannot be construed as a fair use, given the evidence that the disputed domain name has been used to mislead Internet users through the incorporation of the Complainant’s mark in the disputed domain name.
The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. The disputed domain name has been used for the purposes of advance fee fraud as mentioned above.
The Complainant contends that the use of the disputed domain name and the Complainant’s marks therein to potentially commit criminal activities will also inevitably disrupt the Complainant’s business. Any confusion will reflect extremely badly on the Complainant’s business and tarnish its reputation and goodwill with its customers and the general public. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on the evidence adduced by the Complainant as noted above, this Panel has no hesitation in finding that the Complainant has rights in the MONARCH mark. The MONARCH mark has been registered in the United Kingdom since 1986. The Complainant has an on-line presence and uses the domain name to market its services. Its airline services operate in many countries, including the United States of America (where the Respondent appears to be based), the United Kingdom and others.
The Panel finds that the threshold test for confusing similarity under the Policy involves a comparison between the trademark and the disputed domain name to determine the likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
In this Panel’s view, this threshold test is satisfied. The disputed domain name reproduces the MONARCH mark in its entirety but merely adds the common terms “airline” and “uk”.
As found by previous UDRP panels, the mere addition of common or generic words will not be sufficient under the circumstances to avoid a finding of confusing similarity. See the decisions by previous UDRP panels which have found that domain names that combine generic terms with trademarks are confusingly similar to the marks: Autodesk, Inc. v. Nurinet, WIPO Case No. D2011-1426 and the decision cited by the Complainant Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409. The top level domain “.com” is required only for technical reasons and should be disregarded.
The Panel finds that the addition of these generic or descriptive terms to the MONARCH mark do not distinguish the Respondent’s website from the Complainant or its services, but indeed only, as the Complainant asserts, adds to the likelihood of confusion.
In this Panel’s view, the test of confusingly similarity is clearly satisfied. This Panel accordingly finds that the disputed domain name is confusingly similar to the Complainant’s trademark in which the Complainant has rights. B. Rights or Legitimate Interests
As several UDRP panels have found, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name and once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, the Complainant contends that the Respondent registered the disputed domain name long after the Complainant established its rights in the MONARCH mark, which the Respondent would clearly have been aware of at the time of the registration of the disputed domain name.
On the evidence, the Panel accepts that the Respondent is not and has not been commonly known by the disputed domain name, that the Respondent has not been granted any license or other rights to use the Complainant’s mark for any purposes and that the Complainant is in no way associated or affiliated with the Respondent.
The Complainant further contends that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, and the disputed domain name has have been used for the purposes of committing “advanced fee fraud”, a term that is used to describe a fraudulent scheme in which a party impersonates another person and induces innocent people to make payment based on false promises.
The Complainant has produced evidence of an email it received from a potential victim of the scam who alerted the Complainant to the use of the disputed domain name being used for a scam which targeted people who have posted their resumes or curriculum vitae on Internet employment websites. The scammer impersonates a business – in this case the Complainant – and claims it wishes to employ the potential victim. It backs up its claims by sending the target a variety of documents which include falsified company logos. These communications often come from an email address which appears to be similar to that of the impersonated business’ domain name. The job offer itself usually offers an exceptional salary and benefits but notes the victim needs work or other permits to be employed in the impersonated business’s country. The scammer then takes payment for these permits and continues to press for further expenses until the victim realizes he or she is being targeted.
In this case, an email was sent by a person “Benny Hogan” with an email address “hr@” within its content and mentions an apparently fictitious office in Northern Ireland. The Complainant states that it does not employ anyone called Benny Hogan (in its Human Resources department or otherwise), does not have a major presence in Northern Ireland and does not charge potential employees fees of any kind. The Respondent has not filed a response to refute these allegations.
Absent a Response and in the light of the material before the Panel, the Panel accepts the contentions of the Complainant that the Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the disputed domain name has been registered and is being used in bad faith.
The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith.
The undisputed evidence establishes that the Respondent is not affiliated with the Complainant and has no license or other authorization to use the Complainant’s trademark or a mark similar thereto.
The disputed domain name was registered well after the Complainant’s mark was in use. The Panel finds that the Respondent must have had notice of the Complainant’s mark and business when registering the disputed domain name. The Respondent must have been intended to take advantage of the reputation of the Complainant.
The Panel finds that the incorporation of the MONARCH mark in its entirety as part of the disputed domain name is an indication of bad faith under the circumstances. The Respondent also added the descriptive element “airline” to the disputed domain name which, given the fact that the Complainant’s business was that of an airline, merely served to add to the confusion.
As noted above, the Complainant further asserts that the disputed domain name has been used for the purposes of advance fee fraud. Previous UDRP cases concerned with advance fee fraud have found the disputed domain name to have been registered in bad faith where the disputed domain name has been used for criminal activity: see La Française des Jeux v. MichaelE Wilkins,WIPO Case No. D2009-0898.
The Panel accepts that the use of the disputed domain name and the Complainant’s marks as an instrument of fraud constitutes bad faith.
The Panel also accepts the Complainant’s assertion that such use is capable of disrupting the Complainant’s business and the confusion will reflect extremely badly on the Complainant’s business and tarnish its reputation and goodwill with its customers and the general public.
The Panel further notes that, as found by other UDRP panels, where a domain name is so obviously connected with a well-known product or service, its very use by someone with no connection with the product suggests opportunistic bad faith: See for example Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov,WIPO Case No. D2002-0562; Go Daddy Software, Inc. v. Internet Masters, WIPO Case No. D2002-0570; and RapidShare AG, Christian Schmid v. PrivacyP, Domain Admin / n/a, Sergey Malgov, WIPO Case No. D2010-0608.
Based on the evidence submitted by the Complainant and having regard to all the relevant circumstances, the Panel accepts the Complainant’s contentions that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Richard Tan
Sole Panelist
Date: February 4, 2013
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