WIPO Domain Name Decision DAU2008-0004 for emirates.com.au

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Emirates, Emirates Group v. Bluecom Consulting Group Pty Ltd

Case No. DAU2008-0004

 

1. The Parties

The Complainant is Emirates, Emirates Group, Dubai, of United Arab Emirates, represented by DLA Phillips Fox, Australia.

The Respondent is Bluecom Consulting Group Pty Ltd, Furnissdale Western Australia, of Australia, represented internally.

 

2. The Domain Name and Registrar

The disputed domain name is registered with NameScout Corp.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2008. On February 7, 2008, the Center transmitted by email to NameScout Corp. a request for registrar verification in connection with the domain name at issue. On February 14, 2008, NameScout Corp. transmitted by email to the Center its verification response confirming that:

(a) it is the registrar for the disputed domain name;

(b) the Respondent is listed as the registrant of the disputed domain name;

(c) the contact details for the administrative, billing, and technical contacts provided in the Complaint are correct;

(d) the disputed domain name was created on December 23, 2003, and registered to the Respondent;

(e) English is the designated language under the Registration Agreement for the disputed domain name; and

(f) the registration of the disputed domain names is subject to the .AU Domain Name Dispute Resolution Policy (the “Policy”).

The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules for .AU Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .AU Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2008. The Response was filed with the Center on March 7, 2008.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 25, 2008. 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.

On April 4, 2008, the Complainant purported to file a supplemental filing entitled a “Reply”. This consisted of a 4 page written submission and some 25 pages of attachments. The Respondent objected by email dated April 5, 2008 to the admissibility of this material at this late stage and pointed out that it would be unfair to expect it to reply in good time before the projected decision date.

By Procedural Order No. 1 made on April 9, 2008, the Panel permitted the Respondent to file any further answering material within 7 days, limited to paragraphs 10 – 15 of the purported “Reply”. By Procedural Order No. 1, the Panel also extended the projected date for the decision in this proceeding to April 18, 2008.

Pursuant to Procedural Order No. 1, the Respndent filed a Supplementary Response on April 15, 2008.

 

4. Factual Background

The Complainant was set up by the Dubai government in 1985. Its main activities are the provision of passenger and freight air services, ground logistics and tourism (under the name Arabian Adventures), outbound tour operator (Emirates Holidays) and aircraft engineering and maintenance (Emirates Engineering).

It is the official international airline of the United Arab Emirates. In that capacity, it now flies to 90 destinations in 59 countries. At the date of the Complaint it had received over 300 awards for excellence including being named Skytrax’ Airline of the Year in 2001 and 2002 and the Marco Polo Award for Best Airline in 2003.

In 2005-2006, it carried 14.5 million passengers and 1 million tonnes of cargo. In 2006 – 2007, this had risen to 17.5 million passengers and 1.1 million tonnes of cargo. For the financial year ending March 2007, it announced group net profits of US$942 million on revenues of US$8.5 billion.

While figures for advertising expenditure are not provided, the Complainant has an extensive range of sponsorships. This include sponsorship of the FIFA World Cup in 2006, the Asian Football Confederation since 2002, the AFC Asian Cup in 2007, the Arsenal Football Club and its stadium, the AC Milan football club, the Rugby World Cup in 2007, the Australian cricket team since 2006, the Collingwood Football Club, Emirates Melbourne Cup Day since 2004, Emirates Stakes Day since 1998, The Golf Masters Series in 2003, the Australian PGA Championship since 2007, the Australian Jockey Club’s Autumn and Spring Carnivals since 2003, the Victorian Racing Club since 1998, the Gold Coast Turf Club since 2004, the Australian Film Industry Awards since 2000, the Melbourne Symphony Orchestra since 2003, the Sydney Symphony Orchestra since 2002, the Western Australian Symphony Orchestra since 2003 and the Forces Western Australian rugby team since July 2005.

It has 33 airport lounges in 16 cities. In Australia, it opened lounges in Brisbane in 2004, Melbourne, Sydney and Perth in 2006.

In 2003, 2005 and 2007, it announced the then largest order for new aircraft made by an airline to that time.

The Complainant has registered the “Emirates mark” (the word “Emirates” plus an image or device) in 117 countries and “Emirates Holiday” plus image in 105 countries. In both cases, there are registrations in Australia, the United States of America and the United Kingdom, amongst others.

The Australian registrations include Trade Marks No. 701864 in class 39 for

Airline services; air transportation services, aircraft chartering services; courier services for cargo and passengers; cargo handling services; chauffeur and limousine services; delivery of goods by air; customs clearing services; escorting of travellers; forwarding agency services in this class; freight brokerage and freight forwarding services; guarded transport services; travel guide services; air navigation services; air traffic control services; packing and storing of goods; operating and organising tours; booking and reservation agencies for travel; warehousing services; airport handling services; information and advisory services relating to all the aforesaid services

and No. 701865 in class 41 for

Education and training services (in relation to the operation of airlines and cargo handling); flight instruction; publication of magazines and books in relation to the airline and tourism industries; production of radio programmes and video films; provision of in flight entertainment services; provision of airline club facilities at airports; arranging and conducting of conferences, seminars and symposiums.

Both are registered with effect from February 6, 1996. Both trademarks are endorsed with a statement that the image included in the mark is the word Emirates in Arabic writing.

As noted above, the Respondent registered the domain name on December 23, 2003. When the Complaint was filed, the domain name resolved to a website headed “E Your guide to the United Arab Emirates”.

The home page includes a range of advertisements “by Google” and links to other pages on the site under topics such as “Facts”, “Flights”, “Hotels”, “Holidays”, “Insurance”, “Car Hire”, Travel Tips”, “Local News”, “Local Weather”. The “Facts” page requires a login. The other pages contain some text related to the topic and further ads by Google.

 

5. Discussion and Findings

Before addressing the substance of the Complaint, it is necessary to determine the admissibility of the Complainant’s supplemental filing.

The Policy and the Rules provide that the Panel may permit further statements or documents from either of the parties, in its sole discretion: Paragraph 12 of the Rules.

The Policy and the Rules have established a dispute resolution process on written materials, keystones of which are efficiency and expedition. It is important for the efficacy of the Policy that the need for both efficiency and expedition be respected. Accordingly, paragraph 10(c) of the Rules directs the Panel to ensure that the administrative proceeding takes place with due expedition. However, by paragraph 10(b) of the Rules, the Panel must also ensure that each party is treated with equality and given a fair hearing.

In accordance with these considerations, panels have been willing to permit supplemental filings only in special circumstances. Usually, five conditions are required to be met: (1) the material must be relevant, (2) the material must not be merely repetitive; (3) the material must be provided expeditiously, (4) there must be a proper explanation of why the material has not been filed, as appropriate, in the Complaint or Response and (5) the other party must not be deprived of their right to be treated equally and given a fair hearing: see e.g. Soci�t� pour l’œuvre et la m�moire d’Antoine de Saint Exup�ry-Succession Saint Exup�ry - D’Agay v. The Holding CompanyWIPO Case No. D2005-0165 and PRL USA Holdings, Inc. v. J. SchwarzWIPO Case No. D2006-0147.

In this case, the delay by the Complainant is almost unpardonably long – being provided only four days before the projected decision date and almost one month after the Response was filed and served. That delay is also unexplained. Much of the purported “Reply” merely repeats arguments already made or is merely argumentative, not dealing with new facts. Paragraphs 10 to 15 of the purported “Reply” in particular, however, address the Respondent’s claim under paragraph 4(a)(ii) of the Policy to have rights or legitimate interests in the use of the domain name. This is material of which it can reasonably be said that the Complainant was not in a position to address in its Complaint as it was really advanced by the Respondent by way of a positive defence.

In the absence of any explanation by the Complainant for the delay in filing the material and having regard to the length of that delay, the admissibility of these paragraphs is very finely balanced. In the end, however, the Panel concludes that fairness to both parties required that the Respondent be provided with an opportunity to put forward any answering material addressing that limited issue. Accordingly, Procedural Order No. 1 was issued and the Panel admits the supplemental material in Reply and the Supplementary Response.

By paragraph 4(a) of the Policy, the Complainant must establish that:

(i) the domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered or subsequently used in bad faith.

The Complainant bears the onus of proof in respect of all three matters.

A. Identical or Confusingly Similar

There are two parts to this inquiry: does the Complainant have a name or trademark rights and, if so, is the disputed domain name identical or confusingly similar to that name or those trademark rights?

The Complainant here invokes its corporate name, which is simply “Emirates” and which, according to the Historical Company Extract included in the Complaint, is registered as a foreign body under Australian corporations law. The Complainant also has demonstrated ownership of a number of registered trademarks in Australia and around the world. For present purposes, it is sufficient to refer only to Australian Trademarks Nos. 701864 and 701865, details of which have been set out above as illustrative of those rights. The Complainant also invokes its common law rights deriving from its extensive use and promotion of its name.

The Respondent does not really contest these rights. Rather, the Respondent contends that the Complainant does not have a registered trademark for the word “Emirates” alone. Further, the Respondent argues that the Complainant’s rights do not entitle it to prevent anyone from making any use of the word “Emirates” for any purpose at all.

Formally, the Respondent’s argument fails to take into account that, unlike the UDRP, the Policy extends protection expressly to “names” as well as trademark rights. For the purposes of the Policy, a “name” is defined by note 2 as referring to:

(a) the complainant's company, business or other legal or trading name, as registered with the relevant Australian government authority; or

(b) the complainant's personal name.

Moreover, this part of the Respondent’s argument does not take into account that the Policy strikes not just at domain names which are identical to a complainant’s name or trademark rights but also at confusingly similar domain names.

The Respondent further contends that, if there be confusion, it is relevant for the purposes of the Policy only if it is conduct of the Respondent that causes or leads to the confusion. The Respondent denies that is the case here. First, the Respondent contends that any confusion is the result of the Respondent’s promotional activities after the Respondent registered the domain name. Secondly, the Respondent says that the word “Emirates” is a common or ordinary term in English usage referring either to the territory of an Emir or often, in Australia, to the United Arab Emirates.

The first objection can be easily dismissed. It certainly appears to be the case that much of the evidence submitted in the Complaint relates to activities by the Complainant after the domain name was registered in December 2003. However, the trademarks already referred to were registered in 1996, well before that date. In addition, the Policy strikes at registration or use in bad faith. Thus, a respondent’s conduct after registration of the domain name, even if the original registration of the domain name was not in bad faith, may be sufficient for a complainant to succeed. In such a case, an expansion of the reputation of a complainant after the domain name was registered may well be highly relevant to consideration of the significance of a change in a respondent’s conduct.

Turning to the Respondent’s second objection, the fact (if it be a fact) that a term has geographic or dictionary meaning may be relevant to whether or not a complainant has established the rights required under paragraph 4(a)(i) of the Policy: see e.g. Puerto Rico Tourism Company v. Virtual Countries, Inc.WIPO Case No. D2002-1129 contrast Excmo. Cabildo Insular de Tenerife and Promocion Exterior de Tenerife, S.A. v. Jupiter Web Services LimitedWIPO Case No. D2003-0525. Here, however, the Complainant has secured registered trademarks containing the term (and an associated image) and has provided substantial evidence that the term “Emirates” (used alone or with the associated image) has acquired secondary meaning in respect of, in particular, airline services and related activities.

It is well established under the UDRP (and the .auDRP is no different in this respect) that, at this stage, the inquiry requires a comparison of the disputed domain name with the name or mark in which the Complainant has rights. Questions of the scope of the Complainant’s rights or consideration of the Respondent’s entitlement to use the sign comprised in the disputed domain name are not considered at this stage. This is a different test to that involved in trademark law where questions of the goods or services covered by the trademark rights can be relevant to the likelihood of confusion: see for example Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420. The question of the scope of the Complainant’s rights may of course be relevant to the issues under paragraphs 4(a)(ii) and (iii).

Disregarding the ccTLD in the disputed domain name for the purposes of the comparison (see e.g. Technosystems Consolidated Corporation, Invention Submission Corporation t/a Invent Help v. Hugh Godman, Royal Computer Proprietary Ltd.WIPO Case No. DAU2007-0001), the disputed domain name is identical to the Complainant’s corporate name as registered under Australian corporations law. The extensive evidence of sales and promotion submitted by the Complainant in support of its claim to common law rights demonstrates use of the name both alone or with the image.

Furthermore, the disputed domain name is also confusingly similar to the Complainant’s registered trademarks and the common law usage of “Emirates” with the image. The registered trademarks do include an image as well as the word “Emirates”. Nonetheless, the word “Emirates” is of equal prominence and would be the natural point of reference for the trademark, even for non-Arabic readers who did not appreciate the verbal significance of the image. In these circumstances, the Panel has no doubt that a person seeing the disputed domain name (whether on a side by side comparison or relying on imperfect recollection) would be caused to wonder if there was an association with the Complainant’s trademark rights.

Accordingly, the Panel finds that the Complainant has successfully established the first requirement under the Policy.

B. Rights or Legitimate Interests

The second requirement that the Complainant must establish is that the Respondent has no rights or legitimate interests in the domain name.

It is not in dispute between the parties that the Respondent is not associated with the Complainant or authorised by the Complainant to use the term “Emirates”. Further, for the purposes of the Policy, auDA has determined that “rights or legitimate interests in respect of the domain name” are not established merely by a registrar's determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration.

In these circumstances, the Complainant has shown a prima facie case on this requirement and the onus shifts to the Respondent to rebut that case: see e.g. Jenna IP Holding Company LLC v. Mobile Alive Pty LimitedWIPO Case No. DAU2006-0013.

The Policy provides that a respondent may rebut such a finding by showing that:

(i) before any notice to [the Respondent] of the subject matter of the dispute, [the Respondent’s] bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or

(ii) the Respondent has] (as an individual, business, or other organisation) been commonly known by the domain name, even if [the Respondent has] acquired no trademark or service mark rights; or

(iii) the Respondent is] making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue.

These are not an exhaustive listing of the grounds on which a Respondent can demonstrate rights or legitimate interests.

As already noted, the Respondent contends that the Complainant’s rights are limited; they do not cover all possible uses of the term “Emirates”.

The Respondent also relies on the dictionary meaning of the term “Emirates” and its use as a colloquial or shorthand reference to the Complainant’s home country.

The Respondent further submits that the domain name was registered to support a business which the Respondent says it was operating of importing and distributing Dead Sea salt under the name Emirates Salt.

In support of that claim, the Respondent has submitted a Certificate of Business Name Registration confirming registration of the business name on February 3, 2004. The Respondent has also submitted a print out from the Wayback Machine [] showing a page headed Emirates Salt, with a logo, setting out an Australian Business Number, indicating the page is under construction and requesting that inquiries be emailed to “[]@”.

The Respondent concedes that this business did not prove profitable. By that stage, its principal had traveled extensively to the Middle East, including “the Emirates” and had made extensive contacts there. According to the Respondent, its principal had by then established a reputation in the Perth area as a source of information about “the Emirates” and established the current website as a portal for Australians interested in that country.

In its Reply, the Complainant points out that the business name was not in fact registered by the Respondent but by its director, Mr. Jumeau. The Complainant also relies on the 5 or 6 week difference in time between the registration of the domain name and of the business name. The Complainant criticised the Response on the grounds that no material was produced to demonstrate operations of Emirates Salt or that any goods or services were ever offered. It points out that the website never actually operated as Emirates Salt, having only ever been “under construction”, and, when “it was finally activated” in January 2007 was used for a completely different purpose. It questions why the domain name registered was not instead of . Finally, it contends that the website is not a free information portal, but is being used explicitly for commercial gain in the same class of services as those of the Complainant.

In the Supplementary Response, the Respondent provided more information about Mr. Jumeau’s involvement in the business and a certificate from the Mayor of Miniara, dated April 11 2008, that an associate of the Respondent was in fact working in Miniara engaging in salt commerce. The Respondent also provided a pro forma Word file on Emirates Salt letterhead said to have been sent out to numerous persons in 2004 and 2005 soliciting orders for the salt products. The metadata for the file show that it was first created in April 2004, but it has been modified in some indeterminate fashion since then.

The Respondent points out that a website directed at Australians providing information about “the Emirates” can hardly avoid including information about traveling there and denies that air travel is the focal feature of the website. The Respondent admits that there is advertising on the website – Ads by Google the content of which the Respondent claims is controlled by Google’s AdSense and many, if not most, of which are in fact for the Complainant’s own services.

The Panel considers it preferable not to explore in detail the possible rebuttals and counter-rebuttals which the arguments of the parties raise in view of the potential for the dispute between the parties to be carried into another forum where issues of credit could play a vital role. Ultimately, the Panel is not persuaded by the Complainant’s criticisms of the Respondent’s claims.

It is very unlikely that the Complainant could have relied on its trademark rights, registered or unregistered, to prevent the Respondent engaging in Australia in a business of supplying salt under the name Emirates or Emirates Salt: See e.g. McIlhenny Co v Blue Yonder Holdings Pty Ltd formerly t/as Tabasco Design (1997) (1997) 39 IPR 187. The Respondent’s claims that this was its original intention are not purely assertion. They are corroborated to some extent by the business name registration, the extracts from the Wayback Machine and the pro forma solicitation letter. These materials are not demonstrably on their face ex post facto manufactures. Notwithstanding the arguments advanced by the Complainant, their veracity cannot be simply dismissed on the papers. Going behind them, and the Respondent’s claims, requires access to procedures which are not available in a proceeding such as the present.

Similarly, the Respondent’s claim to be operating an information portal about the United Arab Emirates is not palpably specious. Some thought and work has been expended in preparing the material on the site. It is not the usual “Parking” page or as obviously transparent as the website showing vision of Pana at issue in Panavision v. Toeppen 141 F.3d 1316 (9th Cir. 1998).

As a term, “the Emirates” is not inapt to refer to the United Arab Emirates. That this is so receives some support from the fact that the UAE government itself operates an information portal about the United Arab Emirates from the website to which the domain name resolves which describes itself as “The Most Comprehensive Site About UAE”. In this connection, the Respondent correctly points out that it is unlikely it would be permitted to register the domain name in the ccTLD . under the stringent rules qualifying registrations in that domain. Another information portal about the United Arab Emirates is operated from the website associated with the domain name . The Respondent has also provided listings of a number of businesses operating under names starting with “Emirates” which do not obviously appear to be related to the Complainant.

Thus, it is debatable that the Respondent’s use can be characterised as likely to infringe the Complainant’s rights: see e.g. MID Sydney Pty Ltd v. Australian Tourism Co. Ltd (1998) 42 IPR 561 and Musidor BV v. Tansing (1994) 29 IPR 203.

In these circumstances, the Panel finds that the Complainant has not successfully established that the Respondent has no rights or legitimate interests in the domain name.

C. Registered or Used in Bad Faith

It is not strictly necessary for the Panel to resolve this issue as, having failed on the second requirement, the Complainant cannot succeed in the dispute.

 

6. Decision

For all the foregoing reasons, the Complaint is denied.

Warwick A. Rothnie
Sole Panelist

Dated: April 18, 2008

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