The Complainant is Société Internationale de Télécommunications Aéronautiques, Belgium, represented by Kemp Little LLP, United Kingdom.
The Respondent is WhoisGuard, Inc., United States of America (“United States”) / Mattew Ohio, United States. 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 10, 2020. On December 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 18, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 21, 2020. The Center verified that the Complaint, together with the amended 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 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2021. The Center appointed Alistair Payne as the sole panelist in this matter on January 20, 2021. 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, formed in 1949, is a global provider of technology, telecommunications, and computing services and solutions and associated goods and services to the aviation and air transport industry and operates as a global corporate group. It is active in more than 200 countries and has offices all over the world employing nearly 5,000 people and serving 2,800 airline, airport, or government customers. The Complainant, or its group companies, own various trade mark registrations including United Kingdom word mark registration 00001353728 registered on October 22, 1990, for SITA and European Trade Mark registration number 000186577 for SITA in stylized logo format registered on November 18, 1998. In addition, the Complainant is the sponsor of the “.aero” Top‑Level Domain space and owns a large portfolio of domain names which feature its SITA trade mark, including its main domain name The disputed domain name was registered on October 15, 2019, and at the date of filing appears to have expired and does not resolve to any webpage or website. 5. Parties’ Contentions A. Complainant The Complainant submits that it owns registered trade mark rights in the SITA mark as noted above. It says that its mark is wholly contained in the disputed domain name and notes that the inclusion of the word “aero” before the country code Top-Level Domain (“ccTLD”) “.co” is a commonly used term associated with aeronautics and is descriptive and does not distinguish the disputed domain name but rather adds to potential Internet user confusion. As a result says the Complainant the disputed domain name is confusingly similar to its SITA mark. The Complainant asserts that there is no evidence that the Respondent has any active or ongoing commercial or business offering under the disputed domain name or that it has ever been used by the Respondent to provide a bona fide service offering. It says that it has not licensed or given permission to the Respondent to use the SITA mark as part of the disputed domain name. Further, says the Complainant, although the disputed domain name appears to have expired and does not resolve to any website, previously it resolved to a holding page operated by the company that operates the “.co” ccTLD registry. The Complainant says that this webpage offered visitors the opportunity to search for alternative “.co” domain names and was being used to offer other “.co” domain names for sale but that this was a service offered by the “.co” domain registry operator and was not a service provided by the Respondent under the disputed domain name. As far as bad faith is concerned, the Complainant says that considering its consistent and substantial use of the SITA mark globally, the considerable degree of renown attaching to its mark in the aeronautical industry, and its web presence that would be evident upon any Internet search (it notes that its webpage comes up as the first result on a Google search for the mark), it is most likely that the Respondent was aware of the Complainant’s SITA mark when it registered the disputed domain name. It says that, in the circumstances, it appears likely to the Complainant that the sole reason for the Respondent to have registered the disputed domain name was to sell, rent, or transfer it to the Complainant for valuable consideration in excess of the out-of-pocket expenses directly related to the disputed domain name. The Complainant notes in this regard that the Respondent appears to have previously engaged in similar conduct in Gómez-Pinzón Abogados S.A.S. c. Mattew Ohio,WIPO Case No. D2020-1037, in which the disputed domain name was ultimately transferred to the Complainant in circumstances that the disputed domain name was almost identical to that complainant law firm’s distinctive name and mark GOMEZPINZON. In addition, the Complainant says that the use being made of the disputed domain name for a webpage containing banner advertising for domain name registration services amounts to commercial use in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has demonstrated that it owns United Kingdom word mark registration 00001353728 registered on October 22, 1990, for SITA and also European Trade Mark registration number 000186577 for SITA in stylized logo format, registered on November 18, 1998. The disputed domain name wholly incorporates the SITA mark and is therefore confusingly similar to it. The inclusion, before the “.co” ccTLD of the descriptive word “aero” does not detract from this finding. As a result, the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests The Complainant has asserted that there is no evidence that the Respondent has made any active or ongoing commercial or business offering under the disputed domain name or that it has ever been used by the Respondent to provide a bona fide service offering. The Complainant has further asserted that it has not licensed or given permission to the Respondent to use the SITA mark as part of the disputed domain name. At the time of filing, the disputed domain name appears to have expired, but remains in the Respondent’s name during the renewal period and does not resolve to any website. The Complainant notes that it previously resolved to a holding page operated by the company that operates the “.co” ccTLD registry. The Complainant maintains that this webpage offered visitors the opportunity to search for alternative “.co” domain names and was being used to offer other “.co” domain names for sale but that this was a service offered by the “.co” domain registry operator and was not a bona fide service offering provided by the Respondent under the disputed domain name. The Panel agrees with the Complainant’s analysis in this regard. The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. This case has not been rebutted by the Respondent. For these reasons, and as supported by the below circumstances under Part C, the Panel finds that the Complaint also succeeds under this element of the Policy. C. Registered and Used in Bad Faith The SITA mark is distinctive and has been registered and extensively used globally by the Complainant for many years. The Complainant has noted that its webpage under the domain name The disputed domain name does not appear to have ever resolved to a website other than a registrar’s domain name holding page. In the right circumstances, this effectively amounts to a passive holding of the disputed domain name. Past panels have found various factors (as set out at section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)), as relevant in applying the passive holding doctrine including: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. Applying these factors, the Panel notes its finding that the SITA mark is distinctive and that the Complainant has made considerable use of it globally in the aeronautical sector over a period of many years. The Respondent has failed to file a response or to rebut the Complainant’s case and appears to have used a privacy service to conceal its identity. Thirdly, the Panel notes that the Complainant’s SITA mark (which is an abbreviation of its full corporate name) is very distinctive and is used by the Complainant in relation to services in the aeronautical industry and that the Complainant is the sponsor of the “.aero” TLD space. The Complainant’s main domain name is also in the “.aero” space. In all of these circumstances the Respondent’s registration of the disputed domain name incorporating the SITA mark with the word “aero” cannot have been a coincidence and it is difficult to conceive of any likely good faith use by the Respondent. As a result, the Panel finds that this case amounts to a passive holding of the disputed domain name in bad faith The Complainant has submitted that the sole reason for the Respondent to have registered the disputed domain name was to sell, rent, or transfer it to the Complainant for valuable consideration in excess of the out-of-pocket expenses directly related to the disputed domain name. While this is a possible thesis, and the Respondent’s failure to reply and choice of adding a term related to the Complainant’s area of commercial activity may support such thesis, the Panel need not make a finding on this limited evidence noting the above findings. However, the fact that the Respondent appears to have previously been involved fairly recently in similar conduct in Gomez-Pinzon Abogados S.A.S c. Mattew Ohio, supra., is relevant and reinforces an inference of registration and use in bad faith in the current case. Accordingly, the Panel finds that the Complaint also succeeds under the third element 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 disputed domain name Alistair Payne
Sole Panelist
Date: January 27, 2021
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