The Complainant is Etihad Airways of Abu Dhabi, United Arab Emirates, represented by Clyde & Co., United Arab Emirates.
The Respondent is John Caldow of Abu Dhabi, United Arab Emirates, represented by legalcounsel@. 2. The Domain Name and Registrar
The disputed domain name is registered with Register.IT SPA (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2016. On December 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 2, 2017. The Response was filed with the Center on January 27, 2017.
The Center appointed Hoda T. Barakat as the sole panelist in this matter on February 15, 2017. 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 is an airline established by Royal Decree in July 2003 and incorporated in the Emirate of Abu Dhabi, United Arab Emirates. The Complainant commenced operations in November 2003 and achieved fame and success as a leading airline carrier. The Complainant launched a program for its users called “Etihad Airways Partner” on October 8, 2014 which brought together a group of airlines as partners for the Complainant’s users.
The Complainant owns various trademarks in the United Arab Emirates and in many countries of the world for the word “Etihad” as a plain wordmark, in its stylized form and with other elements.
The Complainant operates the domain name , which resolves to its website where customers can book tickets, manage their bookings, and etcetera. The domain name was first registered in 2001 and displays the Complainant’s registered trademarks.
The Respondent is an individual, Mr. John Caldow, residing in Abu Dhabi, United Arab Emirates. The Respondent registered the disputed domain name on November 23, 2014.
The disputed domain name resolves to a website containing sponsored links. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights:
The Complainant has achieved fame and success as a leading airline carrier around the world and has received various accolades. The Complainant launched a program for its users called “Etihad Airways Partner” on October 8, 2014 which brought together a group of airlines as partners for the benefit of the Complainant’s users.
The Complainant has acquired substantial registered and unregistered rights in the wordmark ETIHAD and in the recognition of the name of its Partner program called “Etihad Airways Partner”. The Complainant contends that the disputed domain name is almost identical and is confusingly similar to the Complainant’s well known trademark.
The disputed domain name wholly incorporates the Complainant’s registered ETIHAD trademark, and differs only from the Complainant’s own domain name by the insertion of the word “partners” which also forms part of one of Complainant’s marks and is almost identical to part of its registered mark ETIHAD AIRWAYS PARTNER.
The Complainant asserts that the addition of the word “partners” to the disputed domain name, does not detract from the fact that the disputed domain name is identical or confusingly similar to the Complainant’s registered and unregistered rights for ETIHAD, when comparing the disputed domain name in appearance, sound, meaning and overall impression in accordance with the Policy.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name:
The Complainant has submitted that the Respondent does not own any registered or unregistered rights in any trademark corresponding to the disputed domain name and that the Complainant has no affiliation or association with the Respondent. The Complainant also claims that there is also no evidence that the Respondent is known by the disputed domain name and it claims that he has no bona fide offering of goods or services.
(c) The disputed domain name was registered and is being used in bad faith:
The Respondent registered the disputed domain name on November 23, 2014, just over a month after the launch of the Complainant’s partner program called “Etihad Airways Partner”, which was launched on October 8, 2014. As the launch was widely publicised especially in Abu Dhabi and as the Respondent resides in Abu Dhabi, the Complainant asserts bad faith by the Respondent.
Further, the Complainant uses the Respondent’s own assertions to claim that the Respondent registered the disputed domain name in bad faith solely to benefit from the Complainant’s long-standing goodwill and reputation and to attract users to any connected website.
Lastly, while the Complainant offered to cover the costs of transferring the disputed domain name to the Complainant, the Respondent insisted on a sizable lump sum or other benefits amounting to sizable discounts off flights and this was asserted as proof of bad faith on the part of the Respondent. B. Respondent
The Respondent’s contentions can be summarized as follows:
- While the Respondent agrees that the Complainant has been established for several years and enjoys well known status in the airline aviation services sector, he claims that this should not be seen as granting rights across all goods and services;
- The Respondent has cited cases where the courts’ findings are that a generic or descriptive term cannot be protected and in this regard the generic word “etihad” is a noun which means unity or oneness in Arabic and so cannot be protected;
- The Respondent denies the claims of bad faith made by the Complainant and claims that he registered the disputed domain name as a “unique personal marketing initiative”;
- The Respondent denies that the disputed domain name would pass a literal infringement test and since the Respondent is not using the disputed domain name to imitate the Complainant or use in the same manner as the Complainant, then there cannot be bad faith;
- The Respondent stated that at the time of registration of the disputed domain name, there was nothing preventing him from registration and as such, there is no bad faith and he was merely exercising his constitutional right to trade and commerce;
- The Respondent requests that the Complaint be denied, and that it be awarded monetary fees. 6. Discussion and Findings A. Identical or Confusingly Similar
In this case, given the similarity between the disputed domain name and the Complainant’s marks and the well known nature of the mark ETIHAD as accepted by the Respondent and the knowledge by the Respondent (who resides in the United Arab Emirates) of the Complainant’s business, the Panel believes there to be confusing similarity between the disputed domain name and the Complainant’s mark.
In this instant case, the Panel accepts that the Complainant has rights in respect of the ETIHAD mark based on its renown, its numerous trademark registrations all over the world including the United Arab Emirates, and the Respondent’s own admission that the Complainant enjoys well known status in airline aviation services.
In Xerox Corporation v. Imaging Solution,WIPO Case No. D2001-0313 (), a domain name was found to be confusingly similar where it substantially incorporated the Complainant’s mark and that simply incorporating the Complainant’s trademarks in a slightly different word sequence was not sufficient. Further, it is well established that in cases where the distinctive and prominent element of a disputed domain name is the Complainant’s mark and the only deviation from this is the inclusion of a indicator as a prefix or a suffix, such prefix or suffix does not typically negate the confusing similarity between the disputed domain name and the mark (see Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI,WIPO Case No. D2006-0768). In this case, “etihad” is the prominent component of the disputed domain name and the addition of the word “partners” does nothing to distinguish it from the Complainant’s ETIHAD trademark for purposes of the Policy. This is compounded by the fact that the Complainant has gained unregistered rights in its program entitled ETIHAD AIRWAYS PARTNER.
This all leads to the conclusion that the disputed domain name is confusingly similar to the Complainant’s marks.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark in which it has rights, and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a Respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it 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.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
WIPO Overview 2.0 goes on to clarify that factors that “a panel tends to look for when assessing whether there may be rights or legitimate interests would include the status and fame of the trademark, whether the respondent has registered other domain names containing dictionary words or phrases, and whether the domain name is used in connection with a purpose relating to its generic or descriptive meaning (e.g., a respondent may well have a right to a domain name “apple” if it uses it for a genuine site for apples…”. In this instant case, the Respondent claims that the disputed domain name is a generic word for union or alliance but does not use the disputed domain name in any way that could be said to describe his services.
The Panel accepts that the Respondent has not provided any evidence to demonstrate a registration of the ETIHAD trademark anywhere in the world in any classification or any evidence that it has become commonly known by the disputed domain name nor has the Respondent proven that he is using the disputed domain name in relation to the generic meaning of the word “etihad” as he claims. Accordingly, the Panel is of the view that a prima facie case is established and it is for the Respondent to prove it has rights or legitimate interests to the disputed domain name but the Respondent has failed to do so.
The Complainant has been using the ETIHAD mark in relation to the provision of airline aviation services, in the Middle East and around the world, prior to the registration of the disputed domain name. The website that the disputed domain name resolves to provides sponsored links including in relation to services in the Complainant’s field. The Panel therefore finds on balance, that the Respondent has not been using the disputed domain name in connection with a bona fide offering of goods or services, and is not making fair use of the disputed domain name without the intent of commercial gain to misleadingly divert consumers to the Respondent’s website. The Respondent’s only defence is that he has a right to commercial gain and to own the disputed domain name which is insufficient under the circumstances to establish rights or legitimate interests in the disputed domain name for purposes of the Policy.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel accepts the Complainant’s contention that the ETIHAD trademark is a well known mark in multiple countries but most notably in the place of jurisdiction of the Respondent; namely Abu Dhabi.
The Panel accepts that the Respondent likely knew of the Complainant’s ETIHAD AIRWAYS PARTNER trademark and program based on the following:
(a) the Respondent registered the disputed domain name on November 23, 2014, one month and fifteen days after the Complainant had launched its partner program and years after the Complainant obtained its first registration for the ETIHAD trademark;
(b) the Complaint’s ETIHAD trademark and domain name are confusingly similar to the disputed domain name, with the only difference being the word “partners”, which is added as a suffix to the “etihad” brand in the disputed domain name and acts as a descriptor.
The Panel reviewed the Lloyds TSB Bank PLC v. Daniel Carmel-Brown,WIPO Case No. D2008-1889 () as it considers a case where the disputed domain name was registered the very day of the Complainant’s widely reported announcement and that the Respondent did not deny that he was aware of this when he registered the disputed domain name. Also, the case considers the fact that when the complainant’s representative offered to compensate the respondent reasonably for his time and effort involved, the respondent and, subsequently, his representative took the complainant to be offering to buy the domain name and sought to sell it at a market value reflecting the Complainant’s desire to own the domain name. In this instant case, the Respondent insisted on a sizable amount or at least discounts from flights for the transfer of the disputed domain name.
Based on the above, the Panel infers that the Respondent registered the disputed domain name with the intention of trading on the reputation of the Complainant’s ETIHAD trademark to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s ETIHAD mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and also to sell to the Complainant for an amount in excess of its out-of-pocket costs. This constitutes evidence that the disputed domain name was registered and is being used in bad faith.
The Panel finds 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. D. Remedy
The Complainant in its Complaint requested that the disputed domain name be transferred to it. The Respondent requests the Panel to deny the Complaint and award it a monetary fee based on the value of the disputed domain name and costs related to the administrative proceeding.
The Policy, paragraph 4(i) provides that the remedies available are limited to cancellation or transfer of the domain name, and does not provide for monetary relief. Tommy Lee v. Netico, Inc.,WIPO Case No. D2005-0915. In any event, the Panel finds that the Complaint is well founded. 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.
Hoda T. Barakat
Sole Panelist
Date: March 7, 2017
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