The Complainant is Alitalia - Società Aerea Italiana S.p.A. in Amministrazione Straordinaria, Italy, represented by Società Italiana Brevetti S.p.A., Italy.
The Respondent is Suniti Tour, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2019. On December 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 10, 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 December 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2019. The Center received an informal communication from the Respondent on December 10, 2019. On January 8, 2020, the Complainant requested the suspension of the proceedings to pursue settlement negotiations with the Respondent. On January 8, 2020, in accordance with paragraph 17 of the Rules, the proceedings were suspended until February 8, 2020. The proceedings were reinstituted on February 10, 2020. Pursuant to paragraph 6 of the Rules, the Center informed the Parties that it would proceed to panel appointment on the same day. The Center appointed Nicholas Smith as the sole panelist in this matter on February 12, 2020. 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 Italy’s largest airline. Founded in 1947, the Complainant flies to 100 destinations (including New Delhi, India), with 4,300 weekly flights. In July 2019 alone the Complainant carried over 2 million passengers and achieved revenues of EUR 295 million. Among other methods of marketing and sales, the Complainant operates a website at “www.alitalia.com”. The Complainant has held a trademark registration since 1999 for a mark consisting the word ‘Alitalia’ (the “ALITALIA Mark”) in various jurisdictions including the European Union and India (location of the Respondent). This includes a European Union trademark for the ALITALIA Mark, with a registration date of December 21, 1999 (registration no. 000900829). The Complainant also uses and has registered a mark consisting of a stylized version of the ALITALIA Mark (“Stylized Mark”). The Domain Name was registered on December 10, 2018 by the Respondent, an entity that appears to operate a travel agency of some sort. The Domain Name presently resolves to a website offering pay-per-click links, including links referencing the Complainant, but prior to the commencement of the proceeding the Domain Name resolved to a website (the “Respondent’s Website”) that reproduced the ALITALIA Mark, the Stylized Mark and encouraged visitors to call the Respondent’s business in order to purchase tickets for the Complainant’s flights as well as flights of the Complainant’s competitors. The Respondent’s Website contained no disclaimer and contained the notice “Copyright Alitalia-airlines.com”. 5. Parties’ Contentions A. Complainant The Complainant makes the following contentions: (i) that the Domain Name is identical or confusingly similar to the Complainant’s ALITALIA Mark; (ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. The Complainant is the owner of the ALITALIA Mark, having registered the ALITALIA Mark in the European Union and other jurisdictions. The Domain Name is confusingly similar to the ALITALIA Mark as it reproduces the ALITALIA Mark in its entirety and adds the descriptive term “-airlines”. There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather the Respondent is using the Domain Name to resolve to a website that offers for sale air tickets under the Complainant’s ALITALIA Mark without permission or consent from the Complainant, which does not amount to a bona fide offering of goods and services. The Domain Name was registered and is being used in bad faith. By using the Domain Name to resolve to a website and business that offers services (including services from the Complainant’s competitors) that may compete with the Complainant, the Respondent is using the Domain Name to divert Internet users interested in the Complainant to the Respondent’s Website for commercial gain. Such conduct amounts to registration and use of the Domain Name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark. The Complainant is the owner of the ALITALIA Mark, having a registration for the ALITALIA Mark as a trademark in the European Union and various other jurisdictions. The Domain Name incorporates the ALITALIA Mark in its entirety with the addition of the dictionary term “airlines” which precisely describes the service offered by the Complainant and a hyphen between both words. The addition of a term to a complainant’s mark is insufficient to dispel the impression of confusing similarity, see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056. The Panel finds that the Domain Name is confusingly similar to the Complainant’s ALITALIA Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the ALITALIA Mark or a mark similar to the ALITALIA Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial or fair use. The Respondent, that appears to be a travel agency, has used the Domain Name to operate a website that seeks to pass itself off as a website operated by the Complainant for the purpose of encouraging visitors to contact it and purchase air tickets, both for the Complainant’s services and those of its competitors, under the impression that they are dealing with the Complainant or an authorised representative of the Complainant. Given lack of any connection between the Complainant and the Respondent and the manner in which the Respondent’s Website impersonates the Complainant (including by reproducing both the ALITALIA Mark and the Stylised Mark and placing a false copyright notice) the Panel finds that the Respondent’s use of the Domain Name does not amount to a bona fide offering of goods or services. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a Response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location (Policy, paragraph 4(b)). The Panel finds that the Respondent was aware of the Complainant and its reputation in the ALITALIA Mark at the time the Domain Name was registered. The Respondent’s Website impersonates the Complainant, including by reproducing the Stylised Mark. The registration of the Domain Name in awareness of the ALITALIA Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith. The Respondent has used the Domain Name, wholly incorporating the ALITALIA Mark, to sell airline tickets in competition with the Complainant under the Complainant’s ALITALIA Mark. Consequently the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant’s ALITALIA Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website (Policy, paragraph 4(b)(vi)). Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy. 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 Name Nicholas Smith
Sole Panelist
Date: February 14, 2020
Full & Egal Universal Law Academy