Complainant is VRG Linhas Aéreas S/A of São Paulo, SP, Brazil, represented by Kasznar Leonardos Advogados, Brazil.
Respondent is M SICARD of Ryde, New South Wales, Australia, represented pro se. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2013. On October 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 16, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 7, 2013. The Response was filed with the Center on October 29, 2013.
The Center appointed Richard W. Page as the sole panelist in this matter on November 13, 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
Complainant is a world-renowned airline company, founded in 2006, as a result of the merger between traditional companies VARIG and GOL LINHIAS AÉREAS (GOL AIRLINES) founded in 1927 and 2001 respectively. Apart from owning over thirty (30) Brazilian trademark registrations from as early as 2004, Complainant is also the owner of trademarks using GOL in more than twenty (20) countries, including Panama (where the owner of the Disputed Domain Name appears to be located) and the Dominican Republic (the location indicated in the Disputed Domain Name). These registrations shall be collectively referred to as the “GOL Mark”. Complainant is also the owner of several domain names which include the phrase “Gol” and which are accessible from Brazil, the Dominican Republic and other countries.
In June 2013, Complainant noticed that the Disputed Domain Name had been registered on December 6, 2012. The Disputed Domain Name resolved to a page which reproduced a photo of an airplane and links displaying discounts on travel tickets, hotels, and travel information. On the top right corner of the website, there was an announcement that the Disputed Domain Name was for sale.
On July 2, 2013, Complainant sent a cease and desist letter to the owner of the Disputed Domain Name, ZULU FLIGHTS, demanding that it cease use of the GOL Mark in relation to airline services and to transfer the Disputed Domain Name to Complainant.
On the same day, ZULU FLIGHTS replied to the letter stating that (i) it was the owner of many parked domain names and could not control ads displayed on them; (ii) the Disputed Domain Name related to soccer in the Dominican Republic and not to travel services, and it would therefore, remove any travel-related information from the website; (iii) the words “Gol” and “Dominicana” are both generic words and no one could have exclusive rights over them. ZULU FLIGHTS did not comply with Complainant’s request for a transfer.
After its response to the letter, initially ZULU FLIGHTS did remove the photo of the airplane and replace it with a soccer ball. However, many links related to travel services remained on display, and others were included, such as mention expressly of GOL AIRLINES, owned by Complainant, as well as references to other companies which are competitors of Complainant, such as “Tam Airlines”.
Complainant then tried to negotiate the transfer of the Disputed domain Name through a professional mediator, given that it is announced as being “for sale” in the website, but ZULU FLIGHTS asked the mediator if the interested party was GOL AIRLINES, and informed the mediator that it would not accept less than EUR 65,000 (sixty-five thousand euros) for transfer of the Disputed Domain Name.
ZULU FLIGHTS then changed its name on the WhoIs database to M SICARD. ZULU FLIGHTS did not change its email address on the WhoIs database or its administrative and technical contact. Hereafter in this decision, ZULU FLIGHTS and M SICARD shall be jointly referred to as “Respondent”. 5. Parties’ Contentions A. Complainant
Complainant alleges that it is the owner of numerous registrations comprising the GOL Mark. The Disputed Domain Name combines the word “Gol” with the word “Dominicana” (which indicates an origin from the Dominican Republic), forming the Disputed Domain Name . Therefore, Complainant’s GOL Mark is entirely reproduced in the Disputed Domain Name.
Complainant further alleges that the Disputed Domain Name is confusingly similar to Complainant’s GOL Mark, since it reproduces Complainant’s trademark in its entirety, with a mere addition of the generic or geographical word “Dominicana” which is a common, non-distinctive term indicating the Dominican Republic as origin.
Complainant further alleges that the addition of the generic or geographical term “Dominicana” may even increase the chances of confusion with Complainant’s GOL Mark and related services, since Complainant is an airline company which offers trips to many different countries, including the Dominican Republic (where Complainant also owns a trademark registration containing the word “Gol”).
Complainant contends that any Internet user who accesses the Disputed Domain Name is likely to make an erroneous association with Complainant, either perceiving the Disputed Domain Name as being owned by Complainant or has having some kind of commercial relation with Complainant.
Complainant argues that previous WIPO UDRP decisions have considered the mere addition of geographical terms to a domain name which reproduced a trademark in its entirety as insufficient to dispel the possibility of confusion between the domain name and the trademark. See, Petroleo Brasileiro S.A. – Petrobras v. Mario Andrés Vilches Alcaino, Precom Comunicaciones,WIPO Case No. D2011-1282; Playboy Enterprises International, Inc. V. Zeynel Demirtas,WIPO Case No. D2007-0768. Therefore, the term “Dominicana” is not sufficiently distinctive to avoid the possibility of confusion between the Disputed Domain Name and Complainant’s GOL Mark.
Complainant asserts it has verified that Respondent is not commonly known as “Gol” and does not own any registered trademarks or trade names corresponding to the Disputed Domain Name. Complainant has also not found anything that would suggest that Respondent has been using the GOL Mark in any other form that would justify rights or legitimate interests.
Complainant represents that it has granted no license or authorization of any kind to Respondent to use the GOL Mark in any form, or to seek registration of any domain name incorporating the GOL Mark. Respondent is not authorized to promote Complainant’s services and has never had a business relationship with Complainant.
Complainant further asserts that Respondent is not currently using the Disputed Domain Name in connection with a bona fide offering of goods or services, since it has intentionally chosen the Disputed Domain Name incorporating the GOL Mark in order to generate traffic to a commercial site. Complainant argues that Respondent makes several references to Complainant’s company, trademark and services in Respondent’s website without any authorization, making it clear that Respondent has no rights or legitimate interests in the Disputed Domain Name.
Complainant represents that it has established a new company, from the same business group as Complainant, called GOL DOMINICA LINEAS AÉREAS SAS (GOLD), established in the Dominican Republic in March 2013. The company GOLD is already owner of two domain names and as well as several trademark applications in the Dominican Republic.
Complainant contends that a few months after the registration of the Disputed Domain Name, Complainant sent a cease and desist letter to Respondent asking it to cease use of the GOL Mark in relation to airline services and to transfer the Disputed Domain Name to Complainant, which was not complied with. Complainant then tried to negotiate the purchase of the Disputed Domain Name, but Respondent advised that it would not take less than EUR 65,000 (sixty-five thousand euros) for its transfer.
Complainant further contends that the “notice of sale” on Respondent’s website should be considered an indication of bad faith, since it shows that he Disputed Domain Name was registered with the sole intent of being sold, or otherwise transferred to the legitimate owner of the GOL Mark.
Complainant argues that Respondent asked the mediator if the party interest in acquiring the Disputed Domain Name was GOL AIRLINES and then advised that it would not accept less that the absurd amount of EUR 65,000 (sixty-five thousand euros) for the transfer of the Disputed Domain Name, demonstrating another clear indication of bad faith. In Mapre S.A. y Fundación Mapre v. Josep Sitjar,WIPO Case No. D2011-0692, the panel considered a quoted purchase price over the out-of-pocket costs of registration to be an indicator of bad faith.
Complainant contends that it is highly unlikely that Respondent was not aware of Complainant’s company and its rights to the GOL Mark in relation to airline services when the Disputed Domain Name was registered, especially since Respondent’s website displayed a picture of an airplane and had several links related to travel. Previous UDRP Panels have considered a respondent’s knowledge of a complainant’s intellectual property rights at the time of registration of a domain name to be another indication of bad faith registration. Any reasonable attempt by Respondent to search trademark registrations would have disclosed the GOL Mark relating to airline or travel services as the intellectual property of Complainant.
Complainant further contends that Respondent is using the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s GOL Mark as to the source, sponsorship, affiliation or endorsement of the website. The Disputed Domain Name resolved to a page which reproduced a photo of an airplane and links displaying discount on travel ticket, hotels, and travel information – all of which comprise services that Complainant offers to its clients.
Complainant argues that after Complainant sent its cease and desist letter, Respondent altered its web page to pretend that it is a soccer related website, but it failed to remove the travel related links and include more than ten (10) links mentioning Complainant’s company name, which can be translated to “Gol flights”, “Gol tickets,” “Gol sales,” “fly Gol,” “Gol smiles” and “Gol airlines,” among others as well as links mentioning Complainant’s competitors’ companies such as “TAM Airlines”.
Complainant acknowledges that the word “Gol” may be a generic term of soccer and other sports, although before the foundation of Complainant’s company, it had no relation whatsoever with travel. Complainant represents that it has taken years of high investments for Complainant to create this new association between the word “Gol” and travel and to develop the association in the minds of consumers.
Complainant finally contends that “cyberflight” is an evasive tactic when an infringing domain name owner changes its name and address in its domain name registration information on WhoIs, in an attempt to “flee” or avoid further enforcement proceedings. Complainant adds that cyberflight is another clear indication of bad faith, as discussed by prior WIPO decisions. See, Fifth Third Bancorp v. Secure Whois Information Service,WIPO Case No. D2006-0696.
Complainant alleges that ZULU FLIGHTS’ address is Edificio 101, Ciudad del Saver, Panama City, 0843, Panama. B. Respondent
Respondent alleges that it registered the Disputed Domain Name on December 6, 2012. The Disputed Domain Name is made up of a two-word phrase - “Gol” and “Dominicana.” “Gol” in Spanish is a scoring shot in soccer. “Dominicana” refers to the Dominican Republic. The two words together in the phrase mean a cheer associated with the team from the Dominican Republic scoring a goal. Respondent’s intent for the Disputed Domain Name is to report soccer score results when the 2014 World Cup begins. The Disputed Domain Name was registered for noncommercial activities. In the interim, the Disputed Domain Name is being parked for future use when the 2014 World Cup begins. Respondent is currently developing the site to be launched in 2014.
Respondent argues that Complainant did not have a registered trademark in the phrase “Gol Dominicana” at the date of registration of Respondent’s Disputed Domain Name. Respondent asserts that Complainant’s registration of trademark for “Gol Dominicana Lineas Aéreas” occurred on February 8, 2013. Respondent further asserts that there can be no confusing similarity with the GOL Mark when it did not exist at the time the Disputed Domain Name was registered.
Respondent further argues that Complainant does not have exclusive right to the word “Gol”. Respondent first claims that the word “Gol” is generic. Respondent also claims to have done a USA trademark search, Respondent has found that the word “Gol” is in use by many other companies in their trademarks. Complainant cannot have exclusive rights to the use of the word “Gol” when so many other companies use it as well.
Respondent denies registering or using the Disputed Domain Name in bad faith. Respondent argues that it is impossible to have registered the Disputed Domain Name in bad faith when at the time of the registration the Complainant’s trademark rights not even exist. Respondent further argues that there is no evidence of trademark operations or a logo attributable to Complainant at the time of the registration of the Disputed Domain Name.
Respondent acknowledges that the Disputed Domain Name was parked and that travel ads were showing on its web page, but steps were taken to remedy the problem. Respondent argues that it is not bad faith to park a domain name and that any travel ads displayed on the site do not reflect the intent of Respondent. Respondent simply had no control over ads being displayed on the parked Disputed Domain Name. The parking ad system is automated. However, good faith steps were taken to remove any travel ads by contacting the parking company and upstream provider. This was a difficult and time consuming task.
Respondent asserts that under no circumstances did Respondent ever contact the Complainant to initiate discussions regarding the purchase of the Disputed Domain Name. Respondent denies that any negotiations took place with the Complainant in the company name of VRG Linhas Aéreas S/A or in the name of any of Complainant’s subsidiary companies.
Respondent challenges the existence of any evidence of sale negotiations where Respondent’s name and Complainant’s name (or an authorized representative duly stating they were representing VRG Linhas Aéreas S/A) were together in joint discussions over the purchase of the Disputed Domain Name.
Respondent finally alleges that Complainant is making false allegations. Complainant states that through a mediator negotiations took place. Respondent asserts that no such negotiations took place. This is a ploy, a non-factual attempt, to try and prove bad faith by Respondent when in true fact there were never any negotiations between Complainant and Respondent. By making false statements, the Complainant is clearly demonstrating reverse domain name hijacking traits. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant alleges that it is the owner of numerous registrations comprising the GOL Mark. The Disputed Domain Name combines the word “Gol” with the word “Dominicana” (which indicates an origin from the Dominican Republic), forming the Disputed Domain Name . Therefore, Complainant’s GOL Mark is entirely reproduced in the Disputed Domain Name.
Complainant further alleges that the Disputed Domain Name is confusingly similar to Complainant’s GOL Mark, since it reproduces Complainant’s trademark in its entirety, with a mere addition of the generic or geographical word “Dominicana” which is a common, non-distinctive term indicating the Dominican Republic as origin.
Respondent argues that Complainant did not have a registered trademark in phrase “Gol Dominicana” at the date of registration of Respondent’s Disputed Domain Name. Therefore, there can be no confusing similarity with the GOL Mark when it did not exist at the time the Disputed Domain Name was registered.
The GOL Mark as evidenced in this proceeding encompasses over thirty (30) Brazilian trademark registrations from as early as 2004 and additional registrations in more than twenty (20) countries, including Panama (where the owner of the Disputed Domain Name appears to be located) and the Dominican Republic (the location indicated in the Disputed Domain Name).
The Panel finds that the GOL Mark was established prior to the registration of the Disputed Domain Name and contains trademark rights which are enforceable for purposes of this proceeding. Furthermore, the Panel finds that the inclusion of the entirety of the GOL Mark in the Disputed Domain Name with a non-distinctive geographical term does not sufficiently distinguish the Disputed Domain Name. Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the GOL Mark pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy, paragraph 4(a)(ii). Paragraph 4(a)(ii) of the Policy requires Complainant to prove that Respondent has no rights to or legitimate interests in the Disputed Domain Name. Once Complainant establishes a 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 Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.
The Policy, paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:
(i) before any notice to you [respondent] of the dispute, your use 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) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant represents that it has granted no license or authorization of any kind to Respondent to use the GOL Mark in any form, or to seek registration of any domain name incorporating the GOL Mark.
Complainant asserts that Respondent is not currently using the Disputed Domain Name in connection with a bona fide offering of goods or services, since it has intentionally chosen the Disputed Domain Name which incorporates the GOL Mark and which is confusingly similar to the GOL Mark.
Respondent asserts that its intent for the Disputed Domain Name is to report soccer score results when the 2014 World Cup begins. Respondent further asserts that the Disputed Domain Name was registered for noncommercial activities. In the interim, the Disputed Domain Name is being parked for future use when the 2014 World Cup begins. Respondent is currently developing the site to be launched in 2014.
The Panel finds that Respondent has offered no services on the website to which the Disputed Domain Name resolves. The parking of a website does not constitute the affirmative offering of goods and services.
Complainant asserts that, pursuant to its investigations, Respondent is not commonly known as “GOL” and does not own any registered trademarks or trade names corresponding to the Disputed Domain Name. Respondent does not offer any evidence that it is commonly known by any variation of the phrase “GOL”.
Therefore, the Panel finds that Respondent is not commonly known as “GOL”.
Complainant argues that Respondent is making a commercial use of the Disputed Domain Name. Respondent counters that the website to which the Disputed Domain Name resolves is intended for the noncommercial use of reporting scores for the Dominican team during the 2014 World Cup.
The Panel finds that as part of the parking of the Disputed Domain Name, ads for travel services have been included and that the parked site offers to sell the Disputed Domain Name. Each of these factors demonstrates commercial activity. In addition, the Panel notes that a common practice during the parking of a domain name is the payment on a pay-per-click basis to the owner for traffic generated through the website. While engaging in these commercial activities, Respondent has posted no content on the website to further the noncommercial purpose of reporting on the 2014 World Cup.
The Panel finds that the Disputed Domain Name has been used for commercial purposes and has used confusing similarity to generate traffic to the relevant website. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy, paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product
Complainant further contends that Respondent is using the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s GOL Mark as to the source, sponsorship, affiliation or endorsement of the website.
Complainant argues that Respondent originally had information and links on its website containing a photo of an airplane and promoting travel services. Complainant further alleges that after it sent its cease and desist letter, Respondent altered its web page to pretend that it is a soccer related website, but it failed to remove the travel related links and include more than ten (10) links mentioning Complainant’s company name, among other links mentioning Complainant’s competitors’ companies such as “TAM Airlines”.
Respondent counters that the Disputed Domain Name was parked and that travel ads were showing on the page, but steps were taken to remedy the problem. Respondent argues that it is not bad faith to park a domain name and that any travel ads displayed on the site do not reflect the intent of Respondent. Respondent simply has no control over ads being displayed on the parked Disputed Domain Name. The parking ad system is automated. However, good faith steps were taken to remove any travel ads by contacting the parking company and upstream provider. This was a difficult and time consuming task.
The Panel finds that Respondent is responsible for the content of its website and that the elements of Policy, paragraph 4(b)(iv), have been met in that Respondent has intentionally attracted traffic for commercial gain to its website, by creating a likelihood of confusion with the Complainant’s GOL Mark as to the source, sponsorship, affiliation or endorsement of the website.
Therefore, based upon this evidence, the Panel finds that Complainant has shown sufficient facts to support a finding that the Disputed Domain Name was registered and is being used in bad faith pursuant to the Policy, paragraph 4(a)(iii). 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 W. Page
Sole Panelist
Date: November 29, 2013
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