The Complainant is Alia - the Royal Jordanian Airlines, PLC of Amman, Jordan, represented by Kurdi Law Offices, Jordan.
The Respondent is Abraham Ben-Abbad of Garden City, Michigan, United States of America ("United States"), represented by Steven Rinehart, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 6, 2016. On December 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 7, 2016, 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").
On December 7, 2016, and December 8, 2016, the Center received email communications from the Respondent.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2016. On December 20, 2016, the Center received an email communication from the Respondent requesting a 61-day extension of the deadline to file a Response to February 28, 2017. On December 21, 2016, the Complainant objected to the Respondent's request for extension. On December 21, 2016, the Center notified the Parties that the due date for the Response was extended to January 9, 2017. The Response was filed with the Center January 7, 2017.
The Center appointed Warwick A. Rothnie, Syed Naqiz Shahabuddin and Dennis A. Foster as panelists in this matter on February 1, 2017. The Panel finds that it was properly constituted. Each member of 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.
On January 7 and February 8, 2017, the Complainant sought the Center's approval to file a supplemental filing. The Center replied pointing out that the Rules did not provide for a supplemental filing and whether or not a supplemental filing would be accepted was in the Panel's discretion. On February 9, 2017, the Complainant submitted an unsolicited supplemental filing. 4. Factual Background
Alia – the Royal Jordanian Airlines was established as the national carrier for Jordan in 1963. In 1968, it became a public institution (by which the Panel understands it became owned by the state). In 2001, the state-owned entity was privatized and the Complainant was incorporated as a publicly traded company in its current form. It currently has a fleet of 30 aircraft flying to 60 destinations. In 1999, when the disputed domain name was registered, it apparently had a fleet of 10 aircraft.
The Complainant has provided evidence of registered trademarks in Jordan for the words "Royal Jordanian" in English and Arabic with a device of a crown. The earliest of these is Trademark No. 86446 registered from June 7, 2006. The registrations cover a range of classes of goods and services.
The disputed domain name was registered on November 15, 1999.
It does not appear to be in dispute between the parties that it resolves to a website, the landing page of which is headed "Royal Jordanian Airlines Customer Reviews and Passenger Trip Reports". Beneath that are the statements:
"This Web Site is not a part of Royal Jordanian Airlines it is made by Passengers Who Had many bad experiences Flying Royal Jordanian....
If You are one the many passengers who had unpleasant travel with Royal Jordanian, Please send us your Comments to [further details omitted]."
Then follows what appear to be a number of complaints by customers of the Complainant's airline service about the performance of the Complainant in one respect or another. The website also includes a number of "tabs": "Travel Specials", "International Travel", "Domestic Travel" and "Contact Us". Each of the tabs "Travel Specials", "International Travel", "Domestic Travel", simply has a message "Coming soon …". They do not have any other content. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has 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.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
Before addressing the substantive requirements under the Policy, the Panel deals with the Complainant's request to file a supplemental filing.
Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.
Where unsolicited supplemental filings are admitted, it is usually because the material corrects some error or addresses something raised in a response which could not reasonably have been anticipated or which was not otherwise appropriate to deal with until a respondent's position on a particular point was clear.
In the circumstances of this case, it is not necessary to admit the proposed supplemental filing into the record. The Panel notes, in particular, to the extent that the supplemental filing seeks to provide evidence of older trademark registrations than those referred to in section 4 above, the Complainant was well aware of the date the disputed domain name was registered by the Respondent before filing the Complaint and, accordingly, that proposed evidence does not fall within the usual basis for admitting a supplemental filing. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks referred to in section 4 above.
The fact that the proven trademark registrations were registered after the registration of the disputed domain name is no bar under the first element of the inquiry as this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain ("gTLD") component as a functional aspect of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
The disputed domain name differs from the Complainant's trademark by the addition of the word "airlines", the gTLD ".com" and the omission of the Arabic words and the device of a crown. Notwithstanding these differences, the disputed domain name still contains the essential distinctive component of the Complainant's trademark – the words "Royal Jordanian" which distinguish which airlines are being referred to from all other airlines.
The Respondent argues that the words are all generic or descriptive terms and says further that, as virtually all businesses (scilicet of a certain size) are owned by the State in Jordan, the disputed domain name is descriptive of any airline in Jordan.
The Panel accepts that the individual words making up the disputed domain name are ordinary English words. As noted above, however, in combination they identify one particular trade source. To the extent that any corroboration of this is required, the complaints section of the website the disputed domain name resolves to is plainly directed to the Complainant's business and not just any airline based in Jordan.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant's trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview 2.0.
It is not in dispute between the parties that the Respondent and the website to which the disputed domain name resolves are not in any way authorized or licensed by the Complainant. Nor is the disputed domain name derived from any name by which the Respondent is commonly known. These factors are typically sufficient to raise the required prima facie case under this stage of the inquiry.
The Panel notes that the disputed domain name was registered almost seven years before the earliest of the registered trademarks on which the Complainant relies. That is often a strong basis for finding that the respondent has rights or a legitimate interest in the disputed domain name. In the present case, however, the Complainant (or its predecessor) had been operating as Alia – Royal Jordanian Airlines for more than 30 years before the disputed domain name was registered. The Respondent was plainly aware of this when registering the disputed domain name given the claimed purpose for registering the disputed domain name in the first place as discussed below.
The central plank of the Respondent's rebuttal is that he registered the disputed domain name in 1999 for a website to review the services provided by the Complainant. That is, the Respondent contends he registered and is using the disputed domain name as a "criticism site". Given both the Registrar and the Respondent are based in the United States, the Respondent argues that the Panel should apply the second view identified in paragraph 2.4 of the WIPO Overview 2.0 which provides in relevant part:
"View 2: Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and noncommercial. [citations omitted]"
Taking that approach as most favourable to the Respondent, the issue in the present administrative proceeding is whether the Respondent's use is fair and noncommercial. In that connection, the Panel notes the three "tabs" for "Travel Specials", "International Travel", "Domestic Travel". The Panel acknowledges that there is no content on any of these tabs other than the message "Coming soon …". The provision for these tabs, even though they do not actually provide links to competing services at this time, is incompatible with the requirement that the use made of the disputed domain name must be fair and noncommercial. The Respondent's plans or intention to provide browsers of his site with travel specials and links promoting international and domestic travel is inconsistent with the noncommercial justification of a legitimate criticism site under the Policy.
The Respondent also points to the length of time he has had the disputed domain name registered and invokes the doctrine of laches. The Respondent has pointed to some decisions of prior panels in which laches has been accepted. As a general rule, however, laches has not been accepted as a bar to bringing a complaint under the Policy. In the present case, the Respondent does not point to any detriment he has suffered as a result of any delay in the Complaint being brought against him. The fact that he has been able to attract Internet users to his website until now does not provide a basis to allow him to continue operating from a confusingly similar domain name.
In these circumstances, the Complainant has established a clear prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
It is apparent from the discussion above that the Respondent was well aware of the Complainant and its trademark when the disputed domain name was registered and the disputed domain name was registered specifically to target the Complainant (and its predecessor).
That targeting, involving the use of a domain name confusingly similar to the Complainant's trademark without a right or legitimate interest in the disputed domain name under the Policy, constitutes registration and use in bad faith under the Policy. The fact that the Respondent had not yet fully implemented his plans to offer "Travel Specials" and the like does not detract from the impermissible nature under the Policy of the Respondent's actions.
Accordingly, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith under the Policy. 6. 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.
Warwick A. Rothnie
Presiding Panelist
Syed Naqiz Shahabuddin
Panelist
Dennis A. Foster
Panelist
Date: February 14, 2017
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