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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

British Airways Plc v. Cadmos LLC and Francis R Grenier

Case No. D2002-0612

 

1. The Parties

The Complainant:

British Airways Plc, Waterside, PO Box 365, Harmondsworth UB7 0GB, England, United Kingdom.

The Respondents:

The name and address of the registrant of the domain name in issue is Cadmos LLC, CP 47039, Sillery, Quebec G1S4X1, Canada. Francis R Greiner appears to be the name of a real person behind this registration. The submission in relation to the appropriate Respondents to this action are given in section 5.A. below, and the discussion and finding in relation to this submission is given in section 6.A.

 

2. The Domain Name and Registrar

The domain name in issue is <britishairways.info> (hereafter the "domain name").

The domain name was registered with eNom, Inc., 16771 NE 80^th Street, Suite #100, Redmond, WA 98052, United States of America.

The domain name was registered on or about September 15, 2001.

 

3. Procedural History

(1) The Complaint in this case was filed in email form on July 1, 2002, and in hardcopy on July 4, 2002.

(2) The WIPO Arbitration and Mediation Center has found that:

- The Complaint was filed in accordance with the requirements of 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");

- Payment for filing was properly made;

- The Complaint complies with the formal requirements;

- The Complaint was properly notified in accordance with the Rules, paragraph 2(a);

- A Response to the Complaint was not filed;

- The Respondents were appropriately served with a Notice of Default; and that

- The Administrative Panel was properly constituted.

As Panelist, I accept these findings.

(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

(4) The date scheduled for issuance of a decision is August 16, 2002.

(5) No extensions have been granted or orders issued in advance of this decision.

(6) The language of the proceedings is English.

 

4. Factual Background

A. The Complainant and its marks

The Complainant is one of the world’s largest international airlines, and also one of the world’s longest established airlines. Last year, more than 44 million people flew on the 499,000 flights that it operated. The Complainant also carried more than 907,000 tonnes of freight and mail last year. In 2000-2001, an average of 62,175 staff were employed by the Complainant’s Group world-wide. As at September 30, 2001, the Complainant’s Group fleet comprised 373 aircrafts. The Complainant’s turnover for the financial year ended March 31, 2001, was Ј9,278 million. The operating profit of the Complainant for the same year was Ј380 million, its profit before tax was Ј150 million and its profit after tax was Ј128 million.

The Complainant is the registered proprietor of the trade mark "BRITISH AIRWAYS" in a substantial number of countries around the world, including the trade mark "BRITISH AIRWAYS" in Canada in Class 39 (Registration No. A242410, registered April 3, 1980) and in Classes 39 & 42 (Registration No. A425501, registered March 25, 1994). Both registrations are valid and subsisting, and both of these registrations predate the registrant’s registration of the domain name in issue.

B. The Respondents

No Response was filed. According to Afilias’ and eNom, Inc.’s Whois databases, the registrant in this administrative proceeding is Cadmos LLC, CP 47039, Sillery, QC, G1S4X1, Canada.

All communications between the Complainant and Respondents have been through Francis R Grenier who appears from this correspondence to have initiated the registration. The Complainant alleges that Cadmos LLC and Francis R Grenier have registered and used other domain names, at least one of which has been the subject of an adverse finding under the Uniform Domain Name Dispute Resolution Policy ("the Policy"). The Complainant also provided evidence of a Google search which disclosed a Francis R Grenier at the same address as that given in the Whois record for the registrant of the domain name.

A discussion of this issue is provided in section 6 below.

C. The Use of the Domain Name

The domain name correctly resolves to two different sites at "http://www.britishairways.info" (the First Web Site) and "http://britishairways.info" (the Second Web Site) The First Web Site is a placeholder website which does nothing, but contains the following statement: "This site will soon offer interesting informations (sic) for the general public and shareholders regarding the history of the company, a news section and will also give the possibility to leave public comments". The Second Web Site contains a number of links to airline and other travel related sites.

The Complainant applied for the domain name in question during the sunrise period but its application for the domain name was unsuccessful, due to a number of errors. On October 22, 2001, the Complainant became aware that the domain name had been registered by the Respondents.

On February 4, 2002, an email approach was made on behalf of the Complainant to the registrant to inquire if it was willing to sell the domain name and if so, at what price. A response was received from "Frank R.Grenier" on February 4, 2002, stating:

"Hello,

Thank you for your email. Unfortunately, I am not looking for selling it.

I’m setting up in my free times an informative website for BA’s shareholders. I would have liked to help you with this.

Sincerely,

Frank R. GRENIER"

On March 6, 2002, a letter of demand was sent on behalf of the Complainant to the Respondents by email and by post, and copied to Francis R. Grenier by email and by post. No response was received. On March 26, 2002, a further email was sent on behalf of the Complainant to the Respondents attaching a copy of the email dated March 6, 2002. No response was received.

 

5. Parties’ Contentions

A. The Complainant’s assertions

As an initial procedural matter, the Complainant submits that this proceeding should be noted as being brought against two Respondents, Cadmos LLC and Francis R Greiner. This is based on the evidence discussed above at section 4.B.

On the substantive issues, the Complainant asserts that the Respondents’ domain name is identical or confusingly similar to the Complainant’s mark. Specifically, the Complainant asserts:

(1) The domain name is identical to the Complainant’s registered trade mark "BRITISH AIRWAYS" since the suffix <.info> is irrelevant to the question of identicality.

(2) In the alternative, the domain name is confusingly similar to the Complainant’s rights in the mark "BRITISH AIRWAYS" since the suffix <.info> does not serve to distinguish the domain name from the word "britishairways".

The Complainant asserts that the Respondents have no legitimate interest or rights in the domain name. Specifically, the Complainant asserts:

(1) The Respondents (as an individual, business or other organization) have not been commonly known by the domain name.

(2) The Respondents do not own a trade mark registration that is identical, similar to or in any way related to the Complainant’s trade marks.

(3) There is no relationship between the Complainant and the Respondents that would give rise to any license, permission or other right by which the Respondents could use the Complainant’s trade marks or use the domain name in issue;

(4) Before receiving notice of the Complainant’s dispute on March 6, 2002 (the date of the letter before action sent on behalf of the Complainant to the Respondents by email as well as by post), there was no evidence of the 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 for the following reasons:

(a) The page displayed when accessing the web site at "www.britishairways.info" on February 26, 2002, several months after the domain name in question was first registered states: "This site will soon offer interesting informations (sic) for the general public and shareholders regarding the history of the company, a news section and will also give the possibility to leave public comments". As at the date of filing the Complaint, this page is still displayed.

(b) The Respondents operate a different web site accessed at the address "http://britishairways.info" which also claims to offer a discussion forum for the shareholders of the Complainant. It prominently states on the home page "Welcome to BRITISHAIRWAYS".

(c) If it is the aim of the web sites to serve as a discussion forum about the Complainant, this provides the Respondents with no rights or legitimate interests in respect of the domain name in question: the exercise of the right of free speech does not extend to the use of a domain name identical to the trade mark of the Complainant. See Dassault Systemes v. Francis Raynald Grenier and Cadmos LLC, WIPO Case No. D2002-0049, at p. 5; Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299, at p. 9; Migros Genossenschaftsbund v. Centro Consulenze Kim Paloschi, WIPO Case No. D2000-1171, at p. 5; Women on Waves Foundation v. Chris Hoffman, WIPO Case No. D2000-1608, at p. 4. If the true motive is to operate a web site providing information about the Complainant or a discussion forum on the Complainant’s activities, the Respondents could easily have, and should have, chosen a domain name which would clearly indicate to users that this was not the Complainant’s official web site but an unofficial web site containing information about the Complainant and/or a discussion forum.

(5) As at the date of filing this Complaint the content of the First Web Site has not changed since it was accessed on February 26, 2002; the present content of the Second Web Site is almost identical to its content when accessed on February 26, 2002. Neither site contains information about the "history" of the Complainant nor a "news section" about the Complainant. Given that the Respondents purportedly had these objectives in mind since at least before February 4, 2002 (the date of the Respondents’ original email response), the Complainant submits that the Respondents’ representations as to the purpose of their registration should be disbelieved. In the Complainant’s submission, they are a sham designed to mask the illegitimacy of their registration and their bad faith motive.

(6) It is apparent from the present content of the Second Web Site and the links it contains that the Respondents are not making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers for the following reasons:

(a) The Respondents cannot show that they are using the disputed domain name to make a genuine offer of goods and services because the use of the Complainant’s trade mark is calculated to mislead consumers. The Second Web Site contains the phrase "Welcome to BRITISHAIRWAYS" and invites the visitor to "Search the web for sites related to BRITISHAIRWAYS". This is calculated to mislead customers into believing that the Second Web Site is connected with the Complainant.

(b) The Complainant submits that the content of the web sites and the links in the Second Web Site demonstrate that the registration and use of the domain name is for commercial purposes and is designed to misleadingly divert consumers who are searching for the Complainant’s official web site to the Respondents’ sites. The opening page of the Second Web Site both before the Respondents were notified of the Complainant’s concerns and as at the date of filing this Complaint contained a number of links to airline and other travel related sites. For example on May 1, 2002, when a visitor clicked on "British airways" on the opening page this directed the visitor to a page entitled "Top Results for: british airways". This page contained links to an online travel agency site specializing in discounted international airline travel and another to a travel auction site. One of the links was to a site offering discount vacation packages. This site contained a link to the Complainant’s web site. Another of the links from the page entitled "Top Results for: british airways" led to a site which displayed the Complainant’s trade mark and logo without authorization.

The Complainant asserts that the Respondents registered the domain name and are using it in bad faith. Specifically, the Complainant asserts:

(1) The domain name should also be considered as having been registered and used in bad faith for the reasons set out above in considering the requirements of paragraph 4(a)(ii).

(2) It is evident from the Respondents’ email dated February 4, 2002, that they knew of the Complainant’s reputation and goodwill in the "BRITISH AIRWAYS" mark prior to registration of the domain name in question.

(3) The Complainant contends that the Respondents registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name. The Respondents have engaged in a pattern of such conduct as can be seen from the adverse decision against the Respondents in Dassault Systemes v. Francis Raynald Grenier and Cadmos LLC, WIPO Case No. D2002-0049. It is telling that the Respondents purported to justify their registration of the domain name <catia.info> in that case on the same basis as this Complaint; in catia.info the Respondents also submitted that the use of the disputed domain would be for a non-official support of the software "CATIA" and that they would be offering, under the domain name, an informative source about the Complainant’s (Dassault Systemes’) product.

Further, the Complainant is aware of other domain names registered by Francis Grenier which incorporate other famous brand names or misspellings of such brand names namely, <bellcanada.info> and <waltdisny.info>.

In the Complainant’s submission, these domain names have also been registered in bad faith.

(4) The opening page of the Second Web Site contains the phrase "Welcome to BRITISHAIRWAYS" and invites the visitor to "Search the web for sites related to BRITISHAIRWAYS". When a visitor clicked on "British airways" on the opening page this resolved to a page entitled "Top Results for: british airways". This carries a clear message that, contrary to the facts, the Second Web Site is operated, endorsed, sponsored, authorised or otherwise connected to the Complainant. This misrepresentation is reinforced in the links from the page entitled "Top Results for: british airways" by the unlicensed use of the Complainant’s trade mark and logo and the link to the Complainant’s official web site.

(5) The choice of domain name, the content of the sites to which it resolves, and the links used on the Second Web Site demonstrate clearly that the Respondents have intentionally attempted to attract, for commercial gain, internet users to their web sites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the web sites or of a product or service on the web sites.

(6) The registration and use of the domain name in question constitutes an unlicensed use of the "BRITISH AIRWAYS" mark which is in bad faith because it will:

a) reduce, dilute and damage the exclusivity of the Complainant’s trade marks and goodwill;

b) confuse internet users as to the source of the sites;

c) direct internet users who are seeking information about the Complainant and its services to the Respondents’ web sites.

Accordingly, the Complainant submits that the Panel should order that the domain name be transferred to the Complainant.

B. The Respondents’ assertions

The Respondents have not filed a Response.

 

6. Discussion and Findings

A. Procedural Question

Before dealing with the substantive requirements of paragraph 4(a) of the Policy, it is necessary to consider the procedural submission of the Complainant. It argues that there should be two Respondents, not one, noted on the record of this proceeding. Cadmos LLC is the registrant noted in the Whois record of the domain name. However, the Complainant alleges that Cadmos LLC and Francis Grenier are effectively the same person, and hence Mr. Greiner should be joined to the action. The Complainant troubles itself with this argument because there is evidence that Francis Grenier has registered and used other domain names, at least one of which has been the subject of an adverse finding under the Policy. As a result of this, the Complainant’s case is stronger on the substantive issues of absence of any right or legitimate interest (paragraph 4(a)(ii)) and bad faith (paragraph 4(a)(iii)) if it can join Mr. Grenier to the action.

The Complainant’s evidence for this submission is:

(1) email correspondence entered into between it and Cadmos LLC, which are signed by Francis R Grenier;

(2) email addresses used in correspondence which contain the name Frank;

(3) a Google search of the web which disclosed a Francis Grenier with the same address as the Respondent; and

(4) the relationship between Cadmos LLC and Francis Raynald Grenier established in a previous decision within the Policy (Dassault Systemes v. Francis Raynald Grenier and Cadmos LLC., WIPO Case No. D2002-0049).

I must say that I initially viewed this submission with some skepticism. It is all too easy to fake Whois records, and the names given in email correspondence are often pseudonyms. Without any Response by the Respondents it is easy for the Complainant to make unilateral claims that are impossible to verify. I take the view that in most circumstances undefended procedural submissions should be rejected. However the extent of evidence in this case is significant. Not only has the Respondent signed its name as Francis Grenier, there are two independent pieces of evidence (the Google Search and the previous decision with the same Respondent names) pointing to Mr. Grenier as the real person behind the legal person of Cadmos LLC.

As a result of all of the evidence I have concluded that the registrant of the domain name and Frank Grenier are effectively the same person, and that it is therefore appropriate to enter the names of the Respondents in this case as both Cadmos LLC and Francis R Grenier.

B. Substantive Questions

The Policy adopted by the Internet Corporation for Assigned Names and Numbers on August 26, 1999, applies to domain name registrations made in the <.info> namespace. Paragraph 4(a) of the Policy requires the Complainant to make out three elements to succeed in an administrative proceeding initiated under the Policy:

1. The Complainant has rights in a trade or service mark, with which Respondent’s domain name is identical or confusingly similar (paragraph 4(a)(i)); and

2. The Respondent has no rights or legitimate interests in respect of the domain name (paragraph 4(a)(ii)); and

3. The Respondent registered and is using the domain name in bad faith (paragraph 4(a)(iii)).

1. The Complainant has rights in a trade or service mark, with which Respondent’s domain name is identical or confusingly similar

There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.

The Complainant provided registration documents for the "BRITISH AIRWAYS" mark, in multiple countries and classes. There is no question that the Complainant, as registered proprietor of those marks, has established rights in a trademark, sufficient for the purposes of paragraph 4(a)(i).

The second requirement is that the domain name be identical or confusingly similar to the mark. The domain name is identical to the Complainant’s mark, with the absence of any spaces and the inclusion of the namespace identifier <.info>. Previous decisions in the Policy have, sensibly, concluded that mandatory or technical requirements of the domain name system (DNS) are not relevant to the consideration of identicality or confusing similarity. Thus, the absence of spaces has ignored in assessing this question since it is not possible to render spaces in the DNS. And the inclusion of the gTLD or ccTLD has, equally, been ignored since this is, obviously, necessary to distinguish one namespace from the other (see e.g. World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001). I am happy to endorse this position. I therefore conclude that the domain name is, for the purposes of the Policy, identical to the Complainant’s trademark.

The Complainant has shown that it has rights in a trademark, and that the domain name is identical to this mark. I conclude therefore that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

2. The Respondent has no rights or legitimate interest in respect of the domain name

The Complainant asserts that the Respondents have no rights or legitimate interests in the domain name, as required under paragraph 4(a)(ii) of the Policy. It makes a number of specific arguments on this point, as provided above in section 5.

Many of the Complainant’s assertions go to the requirements under paragraph 4(c) of the Policy. This is appropriate, since, in the absence of a Response, I consider it necessary to analyze whether any of the defenses provided in paragraph 4(c). might apply. Paragraph 4(c) of the Policy provides the following examples to the Respondent:

"(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 only relevant section is paragraph 4(c)(iii), since there is no evidence that the Respondents have any other type of legitimate interest or right to the domain name. The evidence supporting a conclusion based on paragraph 4(c)(iii) is Mr. Grenier’s email response to the Complainant where he said that he was "…setting up in my free times(sic) an informative website for BA’s shareholders" and the information on the website at "http://www.britishairways.info" which reads "This site will soon offer interesting informations (sic) for the general public and shareholders regarding the history of the company, a news section and will also give the possibility to leave public comments".

If, in fact, the Respondents had provided interesting information or anything else that they claim they were going to do, then this case might be more troubling. However, words are cheap, and the Respondents’ actions belie their statements. They have not provided any information in the ten months since the domain name was registered. Moreover, they have redirected consumers to commercial sites using the other website they maintain "http://britishairways.info", and appear to engage in this sort of behavior in respect of a number of well-known trademarks. Clearly the Respondents are not engaged in a legitimate noncommercial or fair use of the domain name, as contemplated by paragraph 4(c)(iii). Theirs is clearly a commercial, abusive use of the Complainant’s mark.

As a result I conclude that, even having considered the possible application of paragraph 4(c), the Respondents have not established any rights or legitimate interests in the domain name. I conclude that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

3. The Respondent registered and is using the domain name in bad faith

The final issue is that of bad faith registration and use by the Respondent. For paragraph 4(a)(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and continues to use it in bad faith. The Complainant makes numerous submissions in relation to this point (see section 5, above).

Paragraph 4(b) of the Policy provides exemplar scenarios which will be sufficient to establish the requirements of paragraph 4(a)(iii). Paragraph 4(b) states:

"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 you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

A number of the exemplar situations of paragraph 4(b) are present here.

Paragraph 4(b)(ii) deals with the situation of a serial abusive registrant preventing a trademark proprietor from registering a corresponding domain name. Here, the Respondents have prevented the Complainant from reflecting its mark in a corresponding domain name in the <.info> namespace, and have engaged in a pattern of conduct of such registrations. Not only do the Respondents have a previous decision against them in this namespace (Dassault Systemes v. Francis Raynald Grenier and Cadmos LLC., WIPO Case No. D2002-0049) but they appear to have registered domain names which are identical or confusingly similar to the marks of other well-known entities (Bell Canada, Walt Disney Corporation) in this namespace.

Moreover, paragraph 4(b)(iv) applies here. The Respondents’ second website at "http://britishairways.info" redirects users to commercial airline travel booking sites. As such the Respondents have intentionally attempted to attract, for commercial gain, internet users to their web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the web site. This activity falls clearly into the exemplar of paragraph 4(b)(iv).

Therefore it is obvious that, on a number of grounds, there has been bad faith registration and use in this case. I therefore conclude that the Complainants have satisfied paragraph 4(a)(iii) of the Policy.

 

7. Decision

The Complainant has made out all of the elements of paragraph 4(a) of the Policy.

Pursuant to Paragraph 4(i) of the Policy and paragraph 15 of the Rules, the requested remedy is granted.

I hereby order that the domain name <britishairways.info> be transferred forthwith to the Complainant.

 

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Dan Hunter
Sole Panelist

Dated: August 16, 2002