The Complainants are Airbus SAS of Blagnac, France and Airbus Operations GmbH of Hamburg, Germany, represented by CSC Digital Brand Services AB, France.
The Respondents are Alesini Pablo Hernan of Tsurumi - Ku, Yokohama, Japan and PrivacyP of Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2013. On November 29, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 30, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on December 2, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on December 2, 2013.
The Center verified that 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 the Respondents of the Complaint, and the proceedings commenced on December 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2013. On December 9, 2013, the Complainants sent an email to second Respondent (Alesini Pablo Hernan) stating that they were still prepared to find an amicable solution to shorten and ease the transfer process of the Disputed Domain Name, and no reply was received. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 30, 2013.
The Center appointed John Swinson as the sole panelist in this matter on January 9, 2014. 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 first Complainant is Airbus SAS, a company incorporated under French law. It is one of the world’s leading manufacturers of commercial jetliners and military aircraft. It was first established in 1970 as a European consortium of French, German (and later Spanish and United Kingdom of Great Britain and Northern Ireland) companies. The second Complainant is Airbus Operations GmbH of Germany. It is an indirect 100 per cent affiliate of the first Complainant.
The second Complainant owns (and licences the first Complainant to use) a number of trademarks incorporating the word “Airbus”, including:
- International registration number 471782 for AIRBUS logo mark (registered August 10, 1982); and
- International registration number 604878 for AIRBUS logo mark (registered June 16, 1993),
(collectively, the “Trade Mark”).
The Complainants also own numerous business, company, trade and domain names containing the Trade Mark.
The first Respondent is PrivacyP of Queensland, Australia and the second Respondent is the individual Alesini Pablo Hernan of Japan. As the Respondents did not file a Response, little information is known about the Respondents.
The Respondents registered the Disputed Domain Name with the Registrar on March 16, 2007. Currently, there is no website operating at the Disputed Domain Name. 5. Parties’ Contentions A. Complainants
The Complainants make the following submissions. Multiple Complainants
The Complainants belong to the same group of companies and both have an entitlement to the Trade Mark as licensor and licensee. The Complainants have common legal rights and a common grievance against the Respondents. Identical or Confusingly Similar
The Disputed Domain Name is confusingly similar to the Trade Mark. The Disputed Domain Name wholly incorporates the Trade Mark. The additional descriptive term “group” does not distinguish or differentiate the Disputed Domain Name. “Group” is a commonly used term in the business world, including in the Complainants’ field of business (it refers to a whole company, including affiliates). The first Complainant and its affiliates are often referred to as “The Airbus Group”. Rights or Legitimate Interests
The Respondents have no rights or legitimate interests in the Disputed Domain Name for the following reasons:
- the Respondents do not have any registered trademark or trade name corresponding to the Disputed Domain Name;
- the Respondents are not commonly known by the Disputed Domain Name;
- the Complainants have not licensed or authorised the Respondents to use the Trade Mark; and
- the Respondents are not using the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name does not redirect to any website. In correspondence with the Complainants the second Respondent stated that he “does not use this domain”. Registered and Used in Bad Faith
The following is evidence that the Respondents registered and are using the Disputed Domain Name in bad faith:
- the use of a privacy service (i.e. the first Respondent);
- the cessation of correspondence from the second Respondent (after initially indicating that he wanted to assist the Complainants);
- the Respondents have no connection with the business of the Complainants or the Trade Mark;
- in light of the Complainants’ reputation, the Respondents must have been aware of the Complainants’ rights in relation to the Trade Mark when they registered the Disputed Domain Name (this suggests opportunistic bad faith); and
- the Disputed Domain Name has not been used, it is not delegated to name servers (passive use can constitute bad faith). B. Respondents
The Respondents did not reply to the Complainants’ contentions. 6. Discussion and Findings
To succeed, the Complainants must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements remains on the Complainants even though the Respondents have not filed a Response. A. Procedural Matters Multiple Complainants
The Panel accepts that Airbus SAS (first Complainant) and Airbus Operations GmbH (second Complainant) have common legal interests in the Trade Mark, as the licensee and as the owner/licensor of the Trade Mark, respectively. As such, the Panel permits both parties to be joint Complainants in this dispute, but for the purposes of the remedy requested, the Panel will refer to the first Complainant as the party requesting transfer of the Disputed Domain Name. Failure to Respond
While the Respondents’ failure to file a response does not automatically result in a decision in favor of the Complainants, the Panel may draw appropriate inferences from the Respondents’ default (see e.g. Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909). B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainants must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
Previous UDRP panels have found that where a distinctive trade mark is wholly incorporated in a domain name, adding a descriptive term (i.e. “group”) will generally not distinguish the domain name from the trade mark (see e.g. Guccio Gucci S.p.A. v. Smith Davilv,WIPO Case No. D2012-0052 and O2 Holdings Limited v. Profile Group, DNS Manager,WIPO Case No. D2013-1340). Here, the Panel finds that the distinctive element of the Disputed Domain Name is the Trade Mark. The addition of the descriptive term “group” does nothing to prevent the confusing similarity of the Disputed Domain Name with the Trade Mark.
In this case, the “.com” at the end of the Disputed Domain Name is irrelevant in assessing confusing similarity under the Policy and may be ignored (see e.g. Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698).
In light of the above, the Complainants succeed on the first element of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainants must establish that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Name. The Complainants are required to make out a prima facie case showing that the Respondents lack rights or legitimate interests.
The Panel finds that the Complainants have made out a prima facie case, as the Respondents have not:
- used or made preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services (there is no active website at the Disputed Domain Name);
- been commonly known by the Disputed Domain Name; or
- been making a legitimate non-commercial or fair use of the Disputed Domain Name, without intent for commercial gain (the Respondents are passively holding the Disputed Domain Name).
The Respondents had the opportunity to demonstrate their rights or legitimate interests, but did not do so. In the absence of a Response from the Respondents, the prima facie case established by the Complainants has not been rebutted and the Complainants succeed on the second element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainants must establish that the Respondents registered and subsequently used the Disputed Domain Name in bad faith.
The Disputed Domain Name is not being actively used, it resolves to an error page. Passive holding does not prevent a finding of bad faith under curtain circumstances (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, affirmed in subsequent cases such as Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273 and Atlas Copco Aktiebolag v. MKC Supply Inc,WIPO Case No. D2011-1844). The question is whether the Respondents’ passive holding of the Disputed Domain Name can be considered registration and use in bad faith, taking into account all the circumstances of the present case.
In light of the strong international reputation of the Airbus Group, AIRBUS trademark (which includes the Complainants), it is likely that the second Respondent had knowledge of the Airbus brand when it registered the Disputed Domain Name. Where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith on the part of the respondent may be inferred (see e.g. Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909 and cases cited therein). Here, the Panel can reasonably infer that the second Respondent sought to make use of the reputation of the Complainants (at some stage) and registered the Disputed Domain Name in bad faith.
Additionally, the following also support a finding of bad faith:
- the second Respondent’s failure to respond to further correspondence, after initially appearing willing to assist the Complainants (in an email of November 16, 2013 before this UDRP proceeding, the second Respondent stated “Yes, of course. I do not use this domain and I can transfer it to them, no problem, if they pay the costs, with pleasure” (see e.g. LEGO Juris A/S v. store24hour,WIPO Case No. D2013-0091 and cases cited therein); and
- the use of a privacy service (i.e. the first Respondent) (see e.g. The Uder Company Pty Ltd and Stay In Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) v. PrivacyP, Domain Admin, ID # 10760,WIPO Case No. D2012-0924 and cases cited therein).
The Respondents had the opportunity to rebut the above evidence of bad faith but failed to do so. The Panel infers from this failure to respond that the Respondents could not provide any evidence of good faith use of the Disputed Domain Name (see e.g. Nike, Inc. v. No Owner / Ashkan Mohammadi,WIPO Case No. D2013-1297 and cases cited therein).
In light of the above, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith. 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 first Complainant, Airbus SAS.
John Swinson
Sole Panelist
Date: January 21, 2014
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