The Complainant is Alitalia - Società Aerea Italiana S.p.A. of Fiumicino, Italy, represented by Società Italiana Brevetti S.p.A., Italy.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD of Panama City, Panama. 2. The Domain Names and Registrar
The disputed domain names and (the “Domain Names”) are registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 31, 2018. On January 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 3, 2019, 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 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 29, 2019.
The Center appointed Jon Lang as the sole panelist in this matter on February 5, 2019. 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 Italian airline and successor to Alitalia – Società Aerea Italiana S.p.A. and Alitalia – Linee Aeree Italiane S.p.A., which have operated under the mark ALITALIA since its first flight in 1947.
As part of its 2018 summer schedule, Alitalia flies to 94 destinations, including 26 Italian and 68 international destinations, with 4,000 weekly flights and 143 routes.
The Complainant owns numerous trademark registrations in several jurisdictions for its trademark, ALITALIA such as International Trademark No: 378816 (Registration Date: May 6, 1971) and European Union Trademark No: 900829 (Registration date: December 21, 1999)
The Complainant is the owner of more than 60 domain names containing the trademark ALITALIA.
The Domain Name was registered on June 8, 2004, and the Domain Name was registered on October 11, 2004. Both Domain Names resolve to a parking page (“ww1.”) with pay-per-click links that redirect consumers to services offered by third parties in the airline market which either directly or indirectly compete with the Complainant. 5. Parties’ Contentions A. Complainant
The Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Domain Names and are confusingly similar to the trademark ALITALIA.
The Domain Name contains the trademark ALITALIA. The word “air” which precedes it is commonly associated with airlines and does not serve to alleviate confusing similarity. The Domain Name differs only by one letter – an additional “i” after the second “a” and thus attempts to profit from typing mistakes of Internet users.
The generic Top-Level Domain (“gTLD”) “.com” is of no relevance when it comes to determining confusing similarity.
Internet users and consumers will inevitably focus their attention on the word “alitalia” or “alitailia” and associate it with the Complainant’s well-known trademark ALITALIA.
The Domain Names were registered long after the ALITALIA trademark was first used in commerce and registered in different jurisdictions, and both resolve to a parking page (“ww1.”) with pay-per-click links that redirect consumers to services offered by third parties in the airline market which either directly or indirectly compete with the Complainant.
The Respondent has no rights or legitimate interests in respect of the Domain Names.
The Respondent is not known and cannot be known by the Domain Names which clearly refer to the trademark ALITALIA in which only the Complainant has rights.
The Complainant has not authorized the Respondent to register and use the Domain Names which have been registered and are being used in order to attract current and potential customers of the Complainant.
Use of the Domain Names for a parking page that is built on and around the Complainant’s trademark ALITALIA does not establish rights or legitimate interests and cannot constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Domain Names were registered and are being used in bad faith
The Respondent has no rights or legitimate interests in the confusingly similar Domain Names which are used for a website hosting links to providers of services in the airline industry that compete with those of the Complainant, i.e. other airline companies or to online travel agencies, which only increases the risk that consumers will be misled. The Domain Names may therefore attract the Complainant’s clients or potential clients and divert them away from the Complainant’s business which is prima facie evidence that the Domain Names were registered and are being used in bad faith.
It matters not if the parking page at “ww1.” is managed by someone other than the Respondent; the Respondent must have known that by using a parking service, some sponsored links would be generated which were likely to relate to services in the airline industry, and also that the Domain Names could be associated with the Complainant’s business.
The following circumstances are further indications of bad faith registration and use:
- ALITALIA is not a common or descriptive term (but a trademark in which the Complainant has rights);
- because of the intensive use made by the Complainant of its trademark, ALITALIA is well-known; and
- the Domain Names are registered through a privacy protection service that masks the identity of the Respondent.
When registering the Domain Names, the Respondent had knowledge of or exercised a willful blindness to the Complainant’s earlier, registered trademark rights.
The Respondent is unfairly and intentionally taking advantage of, and exploiting without authorization, the reputation and distinctiveness of the Complainant’s trademark ALITALIA to attract Internet users, for commercial gain, to the website at “ww1.”, and to thereafter divert them to other websites creating a likelihood of confusion with the Complainant’s trademark ALITALIA, as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website (“ww1.”) or of the services to which visitors are redirected through links on that site.
The use made by the Respondent of the Domain Names, i.e. for a parking page that contains sponsored links, shows the Respondent’s intention to monetize the Domain Names by exploiting and harming the value of the trademark ALITALIA. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that: (i) a respondent has registered a domain name which is identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed. A. Identical or Confusingly Similar
The Complainant clearly has rights in the trademark ALITALIA.
Ignoring the gTLD “.com” (as the Panel may do for comparison purposes), the Domain Name comprises the Complainant’s ALITALIA trademark preceded by the dictionary word “air”, and the Domain Name comprises the Complainant’s ALITALIA trademark but with an additional letter “i” after the second “a”.
The ALITALIA trademark is clearly recognizable within the Domain Names. They are therefore similar, but not identical. The question that therefore needs to be considered is whether the Domain Names are confusingly similar to the ALITALIA trademark. Under the UDRP, the test for confusing similarity typically involves a comparison, on a visual or aural level, between the trademark and the domain name. To satisfy the test, the trademark to which the domain name is said to be confusingly similar, would generally need to be recognizable as such within the domain name. Accordingly, the only question to consider is whether the word “air” in the Domain Name and the letter “i” in the Domain Name renders the Domain Names something other than confusingly similar to the ALITALIA trademark. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent confusing similarity. So too, is the addition of a letter.
The Panel has no hesitation in finding that the Domain Names and are confusingly similar to the Complainant’s ALITALIA trademark. Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy has been established. B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Names. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.
Despite a respondent not having been licensed by or affiliated with a complainant (as is the case here), it might still be able to demonstrate rights or legitimate interests. For instance, a respondent can show that it has been commonly known by a domain name or that it is making a legitimate noncommercial or fair use of a domain name without intent for commercial gain to misleadingly divert consumers.
Here, the Respondent is not known by either Domain Name and, given the nature of their use, it cannot be said that there is legitimate noncommercial use. As to an absence of an intent to mislead (for commercial gain), the Respondent’s choice of Domain Names suggests the very opposite. In these circumstances, the use could not be regarded as fair, either.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services, but in the circumstances of this Complaint it would be difficult to accept that there is anything bona fide about the Respondent’s use of either Domain Name.
The Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its (or an associated) website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its (or an associated) website or of products or services on it. In the Panel’s view, these are the circumstances present here.
The Respondent clearly knew of the Complainant and its rights prior to registration of the Domain Names. ALITALIA is a well-known trademark. The use of the word “air” in the Domain Name and the clear case of typosquatting in the Domain Name, puts the targeting of the Complainant’s trademark beyond doubt.
If a UDRP proceeding is commenced in circumstances where well-known marks are used in identical or confusingly similar domain names, it is incumbent on the Respondent to come forward with an explanation if it is to avoid or attempt to avoid the risk of an adverse finding. Moreover, a respondent’s non-participation in UDRP proceedings is a factor that can be taken into account, along with others, in considering bad faith under the Policy.
The Respondent chose a well-known trademark to incorporate into two Domain Names rendering such Domain Names confusingly similar to the ALITALIA trademark. There is no evidence that the Respondent has any rights or legitimate interests in the Domain Names, but ample evidence to suggest that, for the purposes of the Policy, there has been both registration and use of the Domain Names 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 Domain Names and be transferred to the Complainant.
Jon Lang
Sole Panelist
Date: February 19, 2019
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