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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
South American Tours v. Brian Boyajian
Case No. D2001-0950
1. The Parties
The COMPLAINANT is SOUTH AMERICAN TOURS, Representatives GmbH & Co. Touristik KB ("the COMPLAINANT") a limited partnership based in Frankfurt am Main, Germany. The RESPONDENT is Brian Boyajian ("the RESPONDENT") whose address is PO Box 18334 Irvine, CA 92623 in the United States of America. According to the NSI-WHOIS, the Registrant is listed as Brian Boyajian. The RESPONDENT is listed as the Technical and Billing Contact; the Administrative Contact is Stalin Mendoza of 548 South Spring Street, Suite 814, Los Angeles CA 90013 in the United States of America. Email addresses were provided for the RESPONDENT and Mr. Mendoza.
2. The Domain Name and Registrar
The domain name, the subject of the COMPLAINT, is <southamericantours.com> ("the domain name"). The Registrar with which the domain name is registered is Network Solutions, Inc. ("the Registrar").
3. Procedural History
The World Intellectual Property Organization Arbitration and Mediation Center ("the Center") received a COMPLAINT from the COMPLAINANT by email on July 25, 2001, ("the COMPLAINT"). On July 26, 2001, the Center acknowledged the receipt of the COMPLAINT to the COMPLAINANT.
On July 30, 2001, the Center requested Registrar verification for the domain name and on August 1, 2001, the Registrar confirmed the RESPONDENT as the current registrant of the domain name, confirmed the Administrative, Technical and Billing Contact details and confirmed that Network Solutions, Inc. is the Registrar of the domain name. The Registrar also confirmed that the Network Solutions service agreement 5 is in effect and that the Uniform Domain Name Dispute Resolution Policy ("the Policy") applies to the domain name. The language of the service agreement is English and the domain name registration status is active.
On August 2, 2001, the Center notified the COMPLAINANT, through its Authorised Representative, of deficiencies in the COMPLAINT with respect to the number of copies received, the absence of payment and failure to comply with the rules with respect to mutual jurisdiction. The Complaint Deficiency Notification was also forwarded to the RESPONDENT by email on August 2, 2001. On August 2, 2001, the COMPLAINANT submitted an amendment to the COMPLAINT by email and the COMPLAINT was received in hard copy form on August 6, 2001. The Center forwarded the amendment to the RESPONDENT by email on August 3, 2001. The COMPLAINANT confirmed on August 2, 2001, that a copy of the amendment also was sent by the COMPLAINANT to the by email and by post.
On August 22, 2001, the Center confirmed compliance with the ICANN 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"). It is apparent that there was such compliance.
By email, on August 22, 2001, the Center forwarded to the RESPONDENT and to the Administrative Contact the Notification of Complaint and Commencement of Administrative Proceedings without annexures and the amendment to the COMPLAINT without annexures on the same day. Hard copies of the documents were forwarded with enclosures by courier and, without attachments, by facsimile.
On August 22, 2001, the Center received an email from Stalin Mendoza confirming receipt of the documents and confirming that he is listed as the Technical Contact, but stating that he has "no ownership whatsoever" of the domain name. On the same date, the Center informed Mr. Mendoza of its obligation to notify him, as the Administrative Contact, in accordance with the Policy. No further communication was received from Mr. Mendoza.
There was no communication from the RESPONDENT and on September 12, 2001, the Center sent to the RESPONDENT, by email, a Notification of Respondent Default. There was no answer or RESPONSE from the RESPONDENT. On September 21, 2001, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Dr. Annabelle Bennett S.C. ("the Sole Panelist"), the Center notified the parties of the appointment of the Administrative Panel consisting of the Sole Panelist.
4. Factual Background
The following facts as asserted by the COMPLAINANT in the COMPLAINT are not disputed.
The COMPLAINANT is a travel agency that offers and organises travel to all countries of South America and has done so since the early 1980s. The COMPLAINANT registered the trademark SOUTH AMERICAN TOURS in various forms as a word mark and as a word/picture mark in Germany (claiming priority from April 11, 1996) and the European Union (claiming priority from July 20, 1999). The COMPLAINANT has applied for registration of the trademark SOUTH AMERICAN TOURS in the United States (claiming priority from February 2, 2000) and in Canada (claiming priority from August 10, 1999). An affiliate of the COMPLAINANT is the owner of an identical trademark in Brazil. The COMPLAINANT acquired the domain name <southamericantours.de> in June 2000, but was unable to acquire the domain name, the subject of this dispute, <southamericantours.com>, as the RESPONDENT had registered it on November 28, 1999.
The COMPLAINANT asserts as a fact, and there is no dispute, that the home page for the domain name has not been used since its registration and no home page could be found under this domain. On May 22, 2001, the COMPLAINANT sent an email to the RESPONDENT asking whether the RESPONDENT intended to use the domain name or whether the COMPLAINANT could take over the domain name. By email on May 22, 2001, the RESPONDENT replied, asking whether the COMPLAINANT wished to purchase or lease the domain name, and stating "[i]f so, plans might be altered to accommodate you if the price or arrangement is lucrative enough". By a further email of June 5, 2001, the COMPLAINANT sought further information from the RESPONDENT about his present and future plans for the use of the domain name. The RESPONDENT replied on the same day, stating that it is not his policy to share business plans and domain strategies and further stating that the RESPONDENT and his partners would "... welcome and entertain your offers to purchase. We feel that the descriptive and generic aspect of the name makes it an ideal domain. We do not respond to offers that are inappropriate or respectful of the domains true marketable value". It would seem that there was some further correspondence as to any prior usage of the domain name and, in particular, the RESPONDENT’s assurance that no "adult" usage had occurred.
On June 18, 2001, the COMPLAINANT emailed the RESPONDENT and expressed the opinion that the RESPONDENT had only registered the domain name with the intention to sell it for more than the cost of acquisition. The COMPLAINANT asserted that the RESPONDENT had no "adequate right to own the domain" and that the RESPONDENT would mislead the public and endanger the COMPLAINANT’s trademark if he were to use the domain name. The COMPLAINANT asked the RESPONDENT to co-operate with the COMPLAINANT and the COMPLAINANT offered to reimburse the registration fees and pay a further $US1,000.00. The COMPLAINANT nominated June 21, 2001, for a reply, failing which the COMPLAINANT said that it would hand the matter to its lawyers. No further reply was received from the RESPONDENT and no agreement was reached.
5. The COMPLAINANT’s Assertions
The COMPLAINANT asserts that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the COMPLAINANT has rights; and
(ii) the RESPONDENT has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered and is being used in bad faith in accordance with paragraph 4(a) of the Policy.
Identical or Confusingly Similar to a Trademark
The COMPLAINANT points to its registered domain name <southamericantours.de> and its trademark SOUTH AMERICAN TOURS. The COMPLAINANT asserts that the public could easily be misled by the use of the domain name and asserts that the interested public and business clients "all over the world" are familiar with the trademark "South American Tours", it being a label for high-quality travel, well organised by skilled staff located in each country. The COMPLAINANT alleges confusion if clients go to the domain name and find an unused website or the home page of a totally different business.
No Rights or Legitimate Interests
The COMPLAINANT relies upon the fact that at no time has the RESPONDENT demonstrated any use of a domain name for any purpose and also the absence of a home page under the domain name.
The Domain Name had been Registered and is Being Used in Bad Faith
The COMPLAINANT relies upon a presumption of bad faith in circumstances that fall within those of paragraph 4(b) of the Policy. In particular, the COMPLAINANT relies upon paragraph 4(b)(i), which provides that circumstances indicating registration or acquisition of the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name to the COMPLAINANT who is the owner of the trademark for valuable consideration in excess of out-of-pocket expenses that relate directly to the domain name are, if found, evidence of both registration and use of the domain name in bad faith. The COMPLAINANT relies upon the correspondence in which the RESPONDENT stated, inter alia, that the price would have to be "lucrative enough" and the fact that the RESPONDENT made no RESPONSE to a direct offer by the COMPLAINANT to reimburse the RESPONDENT for out-of-pocket expenses and to pay $US1,000.00.
The COMPLAINANT contends that each of the elements of paragraph 4(a) of the Policy is present. The RESPONDENT has not answered or disputed any of the contentions.
6. Discussion and Findings
Identical or Confusingly Similar Domain Name to a Trademark in which the COMPLAINANT has Rights (paragraph 4(a)(i) of the Policy)
The only difference between the substantive part of the domain name and the registered trademark of the COMPLAINANT is the absence of spaces between the words "South American Tours" and the differential use of upper and lower case. The trademark is also descriptive of the work of the COMPLAINANT. The Panel finds the domain name is confusingly similar to the COMPLAINANT’s trademark.
Rights or Legitimate Interests in Respect of the Domain Name (paragraph 4(a)(ii) of the Policy)
The RESPONDENT has not actually asserted any rights or legitimate interests in the domain name. In the correspondence with the COMPLAINANT, the RESPONDENT seems to assert a right in the domain name by virtue of registration. However, the only interests apparently asserted by the RESPONDENT relate to his right to sell or dispose of the domain name. The RESPONDENT has not demonstrated any rights or legitimate interests such as those provided in paragraph 4(c) of the Policy. There has been no use of the domain name or a name corresponding to the domain name in connection with any bona fide offering of goods and services. There is no evidence or assertion that the RESPONDENT has been known, commonly or otherwise, by the domain name and there has been no use of the domain name. There is no evidence to suggest that the RESPONDENT conducts any activity at all in connection with South America or South American tours. The Panel finds that the RESPONDENT has no rights or legitimate interests in the domain name.
The Domain Name has been Registered and is being Used in Bad Faith (paragraph 4(a)(iii) of the Policy)
The COMPLAINANT first registered the trademark SOUTH AMERICAN TOURS in 1996 and has been offering and organising travel to South American countries since the 1980s. The RESPONDENT registered the domain name in November 1999. The RESPONDENT has not provided any evidence suggesting that he registered the domain name in good faith or that it was and is being used in good faith. The evidence, by reason of the correspondence, indicates that the RESPONDENT registered the domain name primarily for the purpose of selling or renting it. The RESPONDENT did offer to sell the domain name to the COMPLAINANT but did not respond to an offer to purchase the domain name for a price that covered his expenses. The only offer was to sell for a price that was clearly to be in excess of those expenses.
The Panel finds that the circumstances in paragraph 4(b)(i) have been made out. Paragraph 4(b) provides that, if those circumstances are found to be present, they shall be evidence of both registration and use of the domain name in bad faith. Accordingly, the Panel finds that this element is present.
The Panel finds that the COMPLAINANT has proved each of the elements required to be proved under paragraph 4(a) of the Policy.
The Panel concludes:
(i) that the domain name registered by the RESPONDENT is identical or confusingly similar to a trademark or service mark in which the COMPLAINANT has rights; and
(ii) the RESPONDENT has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <southamericantours.com> be transferred to the COMPLAINANT.
Dr. Annabelle Bennett, S.C.
Dated: October 5, 2001