The Complainant is Etihad Airways of Abu Dhabi, United Arab Emirates, represented by Clyde & Co., United Arab Emirates.
The Respondent is Whoisguard Protected, Whoisguard, Inc of Panama / Hamza Ali of Dubai, United Arab Emirates, self-represented. 2. The Domain Name and Registrar
The disputed domain name, (the "Domain Name"), is registered with eNom, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 31, 2016. On March 31, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 1, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 6, 2016.
The Center verified that the Complaint together with the amended Complaint (together 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 13, 2016. The Response was due on May 3, 2016. The Respondent sent two emails to the Center on May 1 and 2, 2016.
Upon the Complainant's request dated May 9, 2016, the proceedings were suspended for the parties to seek to resolve the dispute. Upon the Complainant's request dated June 15, 2016, the proceedings were reinstituted on the same day, with a Response due date as June 16, 2016.
A formal response was not received by the specified due date and on June 20, 2016, the Center informed the Parties of the commencement on the Panel Appointment process.
The Center appointed Tony Willoughby as the sole panelist in this matter on June 29, 2016. 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.
The invitation from the Center to the Complainant to file an amended Complaint stemmed from the fact that the underlying registrant of the Domain Name had been using a privacy service. In this decision the Panel treats the underlying registrant, Hamza Ali, as the Respondent. 4. Factual Background
The Complainant is the well-known Abu Dhabi-based international airline, which commenced operation of its passenger flights in 2003. The Complainant is the proprietor of numerous trade mark registrations covering the trade mark ETIHAD and pre-dating registration of the Domain Name, including by way of example United Arab Emirates Trade Mark Registration No. 59,950, registered on April, 29 2006 in class 39.
The Complainant operates a website connected to its domain name registered on October 18, 2001.
The Respondent registered the Domain Name on May 3, 2014 and connected it to a so-called "virtual airline" website simulating many aspects of the Complainant's website.
The home page features the following description of the website:
"Welcome to Etihad Virtual Airways. We are in no way affiliated with the real Etihad. ETDv is the first independent virtual airline of Etihad, the National Airline of the United Arab Emirates.
Our goal is to provide a realistic experience of the enthusiasts of aviation as well as Etihad Airways and Etihad Crystal Cargo. Our website hosts daily operations in the mimic of Etihad Airways, using flight simulation to fly their routes and aircrafts.
Etihad Virtual Airways is a constantly growing, world-wide effort with members from around the world." 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the Complainant's ETIHAD trade mark; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent has not filed a formal Response, but as indicated in section 3 above has submitted two emails to the Center. They are relatively brief and merit reproduction in full:
May 1, 2016 –
"First I would like to explain what the vEtihad domain is used for - it's an abbreviation for a 'Virtual Airline (VA)' that serves the popular flight simulation community. Please see /wiki/Virtual_airline_(hobby) for definition of what VA's are but in summary - A virtual airline (VA) is a dedicated hobby organization that uses flight simulation to model the operations of an airline. Virtual airlines generally have a presence on the Internet, similar to a real airline. Many hundreds of virtual airlines of significance are currently active, with tens of thousands of participants involved at any one time.
Secondly the vEtihad web site makes it clear that this is not associated with the real Etihad aniline – 'We are in no way affiliated with the real Etihad. ETDv is the first independent virtual airline of Etihad, the National Airline of the United Arab Emirates. Our goal is to provide a realistic experience of the enthusiasts of aviation as well as Etihad Airways and Etihad Crystal Cargo. Our website hosts daily operations in the mimic of Etihad Airways, using flight simulation to fly their routes and aircraft. Etihad Virtual Airways is a constantly growing, world-wide effort with members from around the world'
The VA is not-for- profit, no fees are collected and nothing is sold but I recognize the similarity in domain name but this was not intended to encroach on or devalue the Etihad brand in any way.
If you wish us to give up this domain we will willingly do that, in fact had you written to us before opening the dispute we would have agreed at that point.
Our proposal is as follows:
1. We accept to give up and cease to use the domain name .
2. We register and use the domain name E for our VA.
We would be grateful for a short 'overlap period' where we redirect the domain so as our users don't experience any break in access to the web-site."
May 2, 2016 –
"I would like to acknowledge that I will be moving away from the domain: " 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a Trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. B. Settlement Negotiations
As can be seen from section 3 above, this administrative proceeding was suspended briefly to enable settlement discussions to take place. The Panel has no information on how those discussions proceeded, but evidently they failed to achieve a settlement.
The emails from the Respondent at section 5.B above demonstrate that the Respondent stated that he was prepared to vacate the Domain Name on terms (May 1, 2016 email) and then apparently without pre-conditions (May 2, 2016 email).
One would have thought that that would have resulted in transfer of the Domain Name to the Complainant and withdrawal of the Complaint, but for whatever reason that has not happened. In the result the Panel is required to decide this case on the basis of the provisions of paragraph 4(a) of the Policy as set out in section 6.A above. C. Identical or Confusingly Similar
The Respondent acknowledges that the presence of the Complainant's trade mark in the Domain Name is intentional, the "v" being an abbreviation for "virtual" and the intention being to give the clear impression being that the Domain Name leads to a virtual Etihad airline website.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. D. Rights or Legitimate Interests
In light of the Panel's finding under section 6.E below, it is unnecessary for the Panel to address the issue as to whether or not the Respondent has rights or legitimate interests in respect of the Domain Name. E. Registered and Used in Bad Faith
There is no dispute between the parties as to the Respondent's principal objective in registering the Domain Name. His purpose was to use it for a "virtual" version of the Complainant's real life Etihad Airways airline service. The website, which has now been disconnected from the Domain Name, simulated the Complainant's service, reproducing many of the features of the Complainant's website, such as much of the Complainant's imagery including its trade marks. The users of the website would have been "virtual pilots". Indeed, insofar as the Panel has been able to determine nobody other than "virtual pilots" and would-be "virtual pilots" would have been able to make any use of the website.
The Complainant's contentions under this head are based solely on paragraph 4(b)(iv) of the Policy which provides:
"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 or service on your web site or location."
In the Complaint the Complainant puts its contention as follows:
"The Respondent has intentionally attempted to attract Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's flight simulator services. In particular, the Respondent is using the registered trade marks of the Complainant to attract customers to its online flight simulator by way of confusion with the official Etihad website and by way of association with the Complainant's aviation services under the ETIHAD trade mark."
It can immediately be seen that while paragraph 4(b)(iv) of the Policy calls for "commercial gain", the Complainant's iteration makes no reference to commercial gain. Indeed, while the Complaint makes various references to the Respondent's website visitors as "customers" and to the Respondent trading off the reputation and goodwill of the Complainant, nowhere in the Complaint is there any evidence to suggest that the Respondent has been deriving any revenue from his virtual airline whether by way of trade or otherwise. In his email of May 1, 2016 the Respondent states: "The VA is not-for-profit, no fees are collected and nothing is sold". There is nothing in the case file to suggest that that statement might be false.
In the particular circumstances of this case, in the absence of any evidence to suggest that the Respondent is motivated by a desire for commercial gain, the contention under paragraph 4(b)(iv) of the Policy must, in the view of the Panel, fail.
However, the list of circumstances set out in Paragraph 4(b) of the Policy is a non-exhaustive list and the fact that, apparently, the Respondent is not deriving any commercial benefit from his use of the Domain Name may not be decisive.
Why should it not be an abuse capable of being dealt with under the Policy for a registrant to select a domain name confusingly similar to a complainant's trade mark with the intention of using it for a website replicating in large part that complainant's website and with the result that a not insignificant number of visitors to that site, unaware of the true nature of the site (in this case a non-commercial virtual airline site), are likely to be confused? Such confusion, even if only momentary, clearly has the potential for causing damage to the trade mark owner.
This is a nuanced area where there is scope for intelligent minds to diverge. In the Panel's view, the starting point has to be the terms of paragraph 4(b) of the Policy, which provide general guidance as to the limits of the scope of the Policy. Paragraphs 4(b)(i) and 4(b)(iv) clearly envisage an intent on the part of the registrant to derive a profit from the domain name on the back of the trade mark. Paragraph 4(b)(ii), which contains no reference to any commercial intent, envisages a serial offender, whether or not for profit, and paragraph 4(b)(iii) envisages a competitor (which is sometimes construed to cover competition in a wider sense than two commercial actors selling competing goods) intent on causing damage to the trade mark owner.
Given that the list in paragraph 4(b) is recognised to be non-exhaustive, in the Panel's view it is permissible to look more broadly and to include within the scope of the Policy domain names for use in non-commercial situations where the intent behind the registration and use of the domain name in issue is in some way to cause damage to the complainant's business or its reputation or to benefit unfairly from that reputation. In so saying, the Panel is not seeking to exclude other possibilities, but simply to explain why the registration and current use of the Domain Name by the Respondent can fall within the scope of the Policy, even though it does not obviously fall within any of the examples given in paragraph 4(b) of the Policy.
In this case, the Respondent could have foreseen, had he thought about it, that the Domain Name, differing by only one letter from the Complainant's well-known and highly distinctive trade mark, was bound to give rise to a risk of confusion. Moreover, the website, featuring as it does, so many of the features (including trade marks and imagery) of the Complainant's website was bound to be taken at first sight by visitors unaware that the website is a third party virtual airline website to be a website of or authorised by the Complainant.
If the intention of the Respondent had been to cause that confusion, it would not be difficult for the Panel to find that the Respondent's registration and use of the Domain Name had been in bad faith.
However, as can be seen from section 5.B above, the Respondent denies any such bad faith intent. He asserts that his intention all along has been to use the Domain Name for a virtual airline service simulating in large part the online airline service of the Complainant. For that purpose it was important for him to use the Complainant's trade mark in the Domain Name and to indicate the fact that it was a virtual airline service by prefixing the Complainant's trade mark with the letter "v".
In arguing the contrary, the Complainant accepts that the Respondent's purpose in using the "v" prefix was to indicate that the website is a virtual website and asserts that "the Respondent has clearly chosen to use the word ETIHAD so as to attract customers of Etihad to the Respondent's flight simulator service" and relies in support of its argument on Croatia Airlines d.d. of Zagreb, Croatia,WIPO Case No. D2003-0455, a case in which, according to the Complainant, similar circumstances applied.
However, that case bears very little relation to this case, the only common denominator being that the complainants in each case are airlines. In that case the panel stated:
"Accordingly, the Panel considers it prima facie established, in the absence of proof otherwise, that Respondent has in fact knowingly incorporated Complainant's trade and service mark to attract Internet users by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation or endorsement of Respondent's website with the intent of commercial gain. Moreover, the fact that Respondent also sells airline tickets and is thus likely to benefit of diverting (potential) customers of Complainant to its own website supports the Panel in this opinion."
Material differences between this case and the case cited by the Complainant are that, unlike this case, the latter involved a domain name which was the name of the complainant without adornment, the latter was a commercial website, the latter involved a registrant who was selling airline tickets for various airlines and not just those of the complainant in that case.
On the basis of the evidence before it the Panel accepts that the Respondent's use of the Domain Name is non-commercial, that the use is for a virtual airline service based on the real life airline service of the Complainant for use by "virtual pilots" and that the Respondent has at all material times had an honest belief that his registration and use of the Domain Name is legitimate. Specifically, at no time did he intend to infringe the Complainant's trade mark rights, nor did he intend to cause any confusion or damage.
Is that a complete answer to the Complaint? The Panel does not believe so. While paragraph 4 of the Policy is clearly directed to bad faith intent on the part of the domain name registrant, in the view of the Panel it would make no sense if, objectively, the registrant's honestly held belief was a blatantly unreasonable one. In the view of the Panel there has to be an objective element to the assessment.
In this case the Panel is unable to conclude that the Respondent's honestly held belief that what he has been doing is legitimate is blatantly an unreasonably held honest belief. Insofar as the Panel is aware the creation and use of virtual airlines is an established online phenomenon and as sucha legitimate exercise; the use of the name of the airline in the Domain Name might reasonably be regarded as necessary to indicate the nature of the virtual airline (qv Human Resource Certification Institute v. Tridibesh Satpathy, Edusys,WIPO Case No. D2010-0291); the Respondent has not used a domain name featuring the Complainant's trade mark without adornment as was the case in Croatia Airlines d.d. of Zagreb, Croatia (supra), but seems to have honestly believed that the "v" prefix, a common abbreviation for "virtual", would alert the visitor to the nature of the website and that if it did not, the visitor would very soon realise that it was not the Complainant's website – not least because so far as the Panel is aware the website is not set up to cater for anyone other than "virtual pilots". In passing, however, the Panel observes that while the Respondent's home page features a disclaimer it is not as prominent as it might have been.
In this case, the issue over which the Panel has hesitated is the reasonableness of the Respondent's belief that the "v" prefix was sufficient to obviate confusion. When the Panel first saw the Domain Name, the Panel assumed that this was a standard typo-squatting case, which of course it is not. The Panel was unaware of the significance of "v" as an abbreviation. However, interestingly, the Complainant asserts in the Complaint that the Respondent is using the letter "v" as an abbreviation for "virtual" and that the Internet user would see it as such. Even so, despite the Complainant's concession, the Panel believes it likely that most Internet users will be unlikely to appreciate its significance. The significance of the Complainant's concession, however, is that it tends to support the view that the Respondent's belief in this regard is both honest and not unreasonable.
If it be the case that the Respondent has misjudged the position and his activity in any way infringes the intellectual property rights of the Complainant, an issue as to which the Panel expresses no opinion, that is a matter for the courts. The Policy is designed to deal with a very limited category of case where the registration and use of a domain name has been in bad faith and, as indicated, the Panel has not been persuaded that this case falls within that category. The Panel has come to a similar conclusion in previous cases such as Velcro Industries B. V. and Velcro USA Inc. v. /Andres Chavez,WIPO Case No. D2008-0864; and Human Resource Certification Institute v. Tridibesh Satpathy, Edusys, (supra) where in the view of the Panel the use of the complainants' trade marks was reasonably necessary to indicate the nature of the respondents' service. In both of those cases, unlike this case, the respondents' use was a commercial use.
Needless to say, if it subsequently transpires through evidence not currently available that the Respondent's representations set out in his emails of May 1, 2016 and May 2, 2016 are materially false, it will no doubt be open to the Complainant to re-file. 7. Decision
For the foregoing reasons, the Complaint is denied.
Tony Willoughby
Sole Panelist
Date: July 3, 2016
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