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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Australian Airlines Limited , Qantas Airways Limited and AAL Aviation Limited v. Joint Adventure

Case No. D2003-0140

 

1. The Parties

The Complainants are Australian Airlines Limited , Qantas Airways Limited and AAL Aviation Limited of Mascot NSW 2020, Australia; represented by Jemille King, General Manager, Legal.

The Respondent is Joint Adventure, Klagerstuin, 1689 JN, Netherlands represented by Jan Silver.

 

2. The Domain Name and Registrar

The disputed domain name <australianairlines.com> is registered with Network Solutions, Inc. Registrar.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 24, 2003. On February 25, 2003, the Center transmitted by email to Network Solutions, Inc. Registrar a request for registrar verification in connection with the domain name at issue. On February 28, 2003, Network Solutions, Inc. Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 3, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2003. The Response was filed with the Center on March 22, 2003.

The Center appointed David Perkins as the sole panelist in this matter on April 4, 2003. 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

4.1 The Domain Name in Issue

The domain name in issue was registered by the Respondent on October 19, 1999. No use of that domain name in relation to a website has been made since registration.

4.2 The Complainants

4.2.1 The Second Complainant: Qantas Airways Limited

Qantas was founded in Australia in 1920. Currently it operates a fleet of approximately 178 aircraft across a network spanning 129 destinations in 34 countries. It employs around 34,000 staff in over 30 countries.

4.2.2 The Third Complainant: AAL Aviation Limited

This company was formed in 1946. From 1986 to 1999, it traded under the name "Australian Airlines" servicing a wide network of domestic routes across Australia. It changed its name to Australian Airlines Limited in 1988. In 1992, Qantas purchased the Third Complainant and from 1993 the two airline businesses were integrated and flew under the QANTAS name. In February, 2002 the name of the Third Complainant was changed from Australian Airlines Limited to AAL Aviation Limited.

4.2.3 The First Complainant: Australian Airlines Limited

This company was incorporated on February 19, 2002, the day after the Second Complainant's name was changed to AAL Aviation Limited.

4.2.4 In August 2001, Qantas announced that it would operated "Australian Airlines" as an independent airline. On April 2, 2002, Australian Airlines was officially re-launched as a new, low-cost international airline. Bookings were accepted from May 2002, and services under the Australian Airlines name commenced in October 2002.

4.2.5 The Complainants' case is that, even after the original Australian Airlines was rebranded as Qantas in 1993, AAL's AUSTRALIAN AIRLINE registered trademarks were maintained, since all along there was an intention to resurrect that brand. As stated in the preceding paragraph, the Australian Airlines brand was, indeed, resurrected by the Third Complainant almost 10 years later in 2002.

4.3 The Complainants' Trademarks

So far as relevant to this Complaint, the Complainants own the following registered trademarks and trademark applications:

Trade Mark	Country & Class of Goods/Services	Status	Owner
AUSTRALIAN AIRLINES	Benelux : Class 42	Filed November 23, 2001	First Complainant
AUSTRALIAN AIRLINES	China : Classes 39 and 42	Filed April 11, 2002	First Complainant
AUSTRALIAN AIRLINES	Indonesia : Classes 39 and 42	Filed September 11, 2001	First Complainant
AUSTRALIAN AIRLINES	Japan : Classes 39 and 42	Registered October 11, 2001	First Complainant
AUSTRALIAN AIRLINES	Korea : Classes 39 and 42	Filed March 4, 2002	First Complainant
AUSTRALIAN AIRLINES	Malaysia : Classes 39 and 43	Filed August 28, 2001	First Complainant
AUSTRALIAN AIRLINES	Philippines : Classes 39 and 43	Filed April 11, 2002	First Complainant
AUSTRALIAN AIRLINES	Singapore : Classes 39 and 42	Filed August 24, 2001	First Complainant
AUSTRALIAN AIRLINES	Vietnam : Classes 39 and 42	Filed March 2002	First Complainant
AUSTRALIAN AIRLINES and Device	Australia : Classes 16, 39 and 42	Registered June 6, 1990	Third Complainant
QANTAS The Australian Airline and Device	Australia : Classes 16, 39 and 42	Registered April 21, 1993	Second Complainant
QANTAS - The Australian Airline	France : Class 28	Registered October 18, 1993	Second Complainant
QANTAS - The Australian Airline	Germany : Class 28	Registered August 16, 1993	Second Complainant
QANTAS - The Australian Airline	United Kingdom : Class 28	Registered August 13, 1993	Second Complainant
QANTAS - The Australian Airline	United States of America : Class 39	Registered October 1, 1996	Second Complainant
QANTAS - The Australian Airline	Vietnam : Classes 39 and 42	Registered July 27, 1994	Second Complainant
Air Australia	Australia : Class 16	Registered September 28, 1964	Third Complainant
Air Australia	France : Classes 12, 39 and 42	Registered August 29, 1975	Second Complainant
Air Australia	France : Class 16	Registered June 12, 1979	Second Complainant
Air Australia	Italy : Class 39	Registered April 27, 1983	Second Complainant

4.4 The First Complainant also has the word AUSTRALIAN in combination with a Kangaroo device registered in Australia and New Zealand since 1986 and 1987 respectively, and applications and registrations for the word AUSTRALIAN (script) with a different Kangaroo device mostly dating from March/April, 2002, in 13 countries.

4.5 The Second Complainant also has QANTAS AIR AUSTRALIA registered in Canada (1976) and New Zealand (1978); QANTAS AUSTRALASIAN AIRLINES registered in New Zealand (1997); THE AUSTRALIAN WAY registered in Australia (1986).

4.6 The Complainant states that both the Second Complainant [Qantas], in its own right and as the parent company of the First and Third Complainants, and the First Complainant

"… enjoy tremendous goodwill and reputation in the name and trade mark 'Australian Airlines'. The name 'Australian Airlines' has been well known since the operation of the Third Complainant's service in August, 1986. The Second Complainant's name is synonymous with the phrase 'The Australian Airline'; to many travelers, the Second Complainant is the Australian airline."

In this respect, the Panel notes that between August, 1986 and 1993, the Third Complainant operated under the AUSTRALIAN AIRLINES trademark. That brand was then re-activated by the First Complainant in 2002 after a period of non-use of about 10 years.

4.7 Correspondence between the Parties

March 15, 2002: Cease and desist letter from Dutch Counsel for the First and Second Complainants offering to pay the Respondent Ђ100.00 for transfer of the domain name in issue.

April 8, 2002: Letter from the Respondent's Dutch Counsel stating:

- The principle business of the Respondent is operating a chain of coffee shops in the Netherlands.

- When marijuana is legalized in Australia, the Respondent intends to promote the expression flying australian airlines so that it will become synonymous with "smoking weed".

- When that phrase

"… is established as the code for smoking marijuana, then the australianairlines.com website will be the best name to offer airline tickets to Australia on-line, to smokers of marijuana."

- So, the Respondent is waiting to develop a website for the domain name when marijuana is legalised in Australia.

- But, the Respondent is prepared to sell the domain name to the Complainants. However, Ђ100 is rejected as being inadequate, pointing out that registration of the domain name [on October 19, 1999] predates registration of the Complainant's AUSTRALIAN AIRLINES trademark in the Benelux [on November 23, 2001 - see, paragraph 4.3 above].

April 9, 2002: In a telephone conversation the Complainants' Dutch Counsel made an increased offer of Ђ250.00 to the Respondent's Counsel.

April 24, 2002: The Respondent's Counsel rejected the offer of Ђ250. He also stated that he would no longer be representing the Respondent.

June 3, 2002: Mr Jan Silver [the Respondent's administrative contact] e-mailed the Complainant's Counsel. He stated that on October 29, 1999, solutionhome.com had valued the domain name in issue as worth US $25,000.00 and that when developed into a website should be worth US $95,000.00. Mr. Silver went on to explain that in the United States the express "4.20" and "blunt" had become codes for smoking marijuana. His aim was to make australianairlines as famous as "4.20" and "blunt" amongst marijuana smokers. There is, he says, a cannabis coffee shop in Amsterdam called "4.20". So, when marijuana is legalized in Australia, an australianairlines.com website will be developed for selling air tickers to cannabis smokers wanting to travel between Australian and Holland. He also plans to change the name of one or more of his existing cannabis coffee shops to Australian Airlines. At that stage, Mr. Silver said he considers

"… the domain name to be worth millions of dollars."

February 7, 2003:Mr. Jan Silver sent a further email to the First Complainant repeating his willingness to sell the domain name.

"I might step into an offer that says me and my family can fly for free all over the world for always until the year 2013."

 

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

5.A.1 The Complainants claim exclusive rights to the trademark AUSTRALIAN AIRLINES by reason of:

- The registered trademarks and applications set out in paragraphs 4.3 to 4.5 above.

- The period from August 1986 until the end of 1992, during which time the Third Complainant operated a wide network of domestic routes across Australian under the name, Australian Airlines.

- The Second Complainant [Qantas] is synonymous with the phrase "The Australian Airline" and to many travelers is the Australian airline.

5.A.2 As to confusing similarity, anyone accessing the domain name in issue will inevitably expect to connect with the First Complainant, whose website is at "australianairlines.com.au".

Rights or Legitimate Interests

5.A.3 Use of or demonstrable preparations to use the Domain Name

- The domain name has not been used in relation to a website since it was registered in October 1995, over three years ago.

- There is no evidence that the Respondent has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. In this respect, the suggestion that the Respondent is waiting for the legalisation of cannabis in Australia so that he can name a Dutch coffee shop "Australia Airlines", establish the words australianairlines as a code name among marijuana smokers and on the back of that establish an "australianairlines.com" website selling air tickets between Australia and the Netherlands is fanciful. It is, the Complainants say, merely fabricated for the purpose of defending this Complaint. The Complainants point to the current state of the law in the States and Territories of Australia where, for the most part, possession and use of cannabis is a criminal offence. The importation of cannabis into Australia is a serious criminal offence. Further, there is no current legislative initiative to decriminalize possession and use of marijuana in Australia.

- A search made in the Dutch Chamber of Commerce in January 2003, shows no businesses with a registered trade name "Australian Airlines". Further, a search at the same time of telephone directories in the Netherlands revealed no entries for either "Australian Airlines" or "Joint Adventure".

5.A.4 The Respondent is not commonly known by the Domain Name

- As demonstrated from the searches referred to in the preceding paragraph there is no evidence of use by the Respondent of "australianairlines.com".

- A general search of the Internet revealed no entity, product or service using the AUSTRALIAN AIRLINES mark other than entities affiliated with the Complainants.

- There is no indication that the Respondent has any trademark rights in AUSTRALIAN AIRLINES and thus far no third party marks have been cited against any of the Complainants' AUSTRALIAN AIRLINES [word marks and word mark plus device] trademark applications or registrations in any of the jurisdictions listed in paragraphs 4.3 to 4.6 above.

5.A.5 The Respondent is not 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 Complainants' AUSTRALIAN AIRLINES trade mark

- As noted in paragraph 5.A.3 above, in the period of over 3 years since registration of the domain name in issue there is no evidence of any use in relation to a website or otherwise.

- Because of the notoriety of the Complainants' AUSTRALIAN AIRLINES mark, continued maintenance by the Respondent of the domain name in issue will misleadingly divert consumers and thereby tarnish the Complainants' trademark.

- The Respondent's proposal to use the domain name [see, paragraph 4.7 above and in particular the communications of April 8, 2002, and June 3, 2002] will inevitably tarnish the Complainants' trademark given the status of the law in relation to possession and use of marijuana in many jurisdictions, including Australia.

Registered and Used in bad Faith

5.A.6 As to use, the Complaint cites the Telstra case [WIPO Case No. D2000-0003] as authority for the now generally accepted proposition that passive holding of a domain name can, in certain circumstances, constitute use of that domain name in bad faith. The Complaint points to an analogy between the facts of this case and those in Westfield [WIPO Case No. D2000-0227]. In this case the only use of the domain name in issue by the Respondent has been his attempts to sell it to the Complainants.

5.A.7 The Complainants' case is that the evidence indicates that the Respondent registered the domain name primarily for the purpose of selling it to the Complainant trademark owners for consideration far in excess of the Respondent's out-of-pocket costs directly related to the domain name. For example, within 10 days of registering the domain name the Respondent sought appraisals of its value. From the outset of the correspondence, the Respondent offered to sell the domain name to the Complainants [letter from Respondent's Dutch Counsel of April 8, 2002]. In Mr.. Silver's subsequent email of June 3, 2002, he said that he had sent several letters to Qantas [the Second Complainant] offering to sell the domain name but had never received a response. In his February 7, 2003, letter Mr. Silver continued to offer to sell the domain name. These communications are summarized in paragraph 4.7 above.

5.A.8 These repeated offers, coupled with a fanciful business plan to use the domain name in issue cooked-up solely for the purposes of answering this Complaint, clearly point towards a strategy by the Respondent indicating an intention by the Respondent to sell the domain name to the Complainant for the highest price he can get. His proposed use of the domain name to promote activities which are illegal in Australia and many other countries is clearly designed to coerce the Complainants into paying a grossly inflated price to acquire the domain name. In that respect, the Complaint cites the Foxxwolf case [WIPO Case No. D2002-0120], where the Respondent - after being put on notice of the Complainant's rights - deliberately directed the domain name to an anti-abortion website with the intention of exerting pressure on the Complainant in negotiating sale of the domain name to him.

5.A.9 The Complainants further say that the Respondent registered the domain name in issue to prevent the Complainant trademark owners from reflecting the AUSTRALIAN AIRLINES mark in a corresponding domain name and the Respondent has engaged in a pattern of such conduct. The Complainants point in this respect to the fact that, even after they had put the Respondent on notice of their claims in March 2002, the Respondent nevertheless renewed the domain name in issue in October 2002. The only reason for this could be a deliberate act to prevent the Complainants from using their AUSTRALIAN AIRLINES mark in a corresponding domain name.

5.A.10 As to pattern of conduct, the Complainants point to registration by the Respondent of domain names incorporating well known trademarks of other parties. For example, <thedowjonesindex.com>; <theex-box.com>; and <2008olympicsbeijing.com>.

B. Respondent

The Respondent's case is as follows:

5.B.1 When he registered <australianairlines.com> in October 1999, he had no knowledge of an entity which had traded under that name. It was, so far as he was concerned, a generic description for Australian airlines or airlines that serve Australia. He first knew about Australian Airlines when he was contacted by a reporter from Melbourne or Sydney in August 2001, just after Qantas announced its intention to re-launch the Australian Airlines brand.

5.B.2 If Qantas [the Second Complainant] had an interest in the name in 1999, why did they not register it themselves?

5.B.3 His intention was either to maintain a travel website himself or, having developed such a website, to sell on the domain name and developed site. The intended purchaser would be anyone interested in servicing the Australian travel market. The appraisal commissioned in 1999, was merely confirmatory that the domain name had great potential for use in relation to a travel website. He had no specific buyer in mind at that time, whether Qantas or any other party.

5.B.4 His plans to establish a marihuana AUSTRALIAN AIRLINES coffee shop in Holland, popularize those words as synonymous with smoking cannabis etc referred to in the 2002 correspondence were no more than a story, designed to send the Complainants on a wild goose chase. He did this because he considered the offers of Ђ100, rising to Ђ250, were an insult.

5.B.5 The Respondent says that it is correct that he approached Qantas to see if they were interested in acquiring the domain name. The first such approach was in 2001, just after the Australian reporter had contacted him in around August 2001.

5.B.6 The Respondent admits that he has registered many domain names but denies a pattern of cybersquattering. He has developed a website for only one of these many registrations and that is <dutchwoodenshoes.com>, which sells shoes worldwide.

5.B.7 The Respondent points to Qantas' failure to register the domain name in issue prior to October 1999 as indicative of Qantas having no interest in the AUSTRALIAN AIRLINES trademark or intention to relaunch Australia Airlines. How could he possibly have known in October 1999, when he registered the domain name in issue.

5.B.8 The Respondent contends that it should be up to him when he decides to use the domain name in relation to a website. He should not be penalized in this administrative proceeding for having thus far not implemented his original strategy [see, 5.B.3 above] to establish a travel web site.

5.B.9 Finally, the Respondent reiterates that he is willing to sell the domain name in issue to the Complainants for a "fair market value payment".

 

6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

- that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- that the Respondent has no rights or legitimate interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

6.2 The Policy paragraph 4(c) of the Policy sets out circumstances which, in particular, but without limitation, if found by the Panel to be proved to be proved shall demonstrate the Respondent's rights or legitimate interests in the domain name in issue.

6.3 The Policy paragraph 4(b) set out circumstances which, again 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.

6.4 As stated, the circumstances set out in paragraphs 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognises that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5 Did the Complainants have trademark or service mark rights in AUSTRALIAN AIRLINES as at the date when the domain name in issue was registered, namely October 19, 1999? None of the AUSTRALIAN AIRLINES word marks had been applied for or registered at that date. But, the AUSTRALIAN AIRLINES and device mark had been registered since 1990 in Australia. Further, the mark QANTAS THE AUSTRALIAN AIRLINE had been registered in Australia and elsewhere [but not specifically in the Benelux] since 1993. Quite apart from the exclusive unregistered rights which the Complainants claim for the mark AUSTRALIAN AIRLINES [see, paragraph 4.6 above], the Panel is satisfied that the Complainants have established registered trademark and service mark rights in AUSTRALIAN AIRLINES which precede the Respondent's registration of the domain name in issue.

6.6 It is immediately apparent that the domain name is identical to that trademark. The Complainants, therefore, succeed in satisfying the first requirement of the Policy under paragraph 4(a)(i).

Rights or Legitimate Interests

6.7 The Respondent now says that the elaborate intention to use story first promulgated by its Dutch Counsel [letter of April 8, 2002] and later confirmed by Mr. Silver [email of June 3, 2002] was no more than a ruse. But, as to the so-called real original intention at that time of registration of the domain name in October 1999 the Respondent offers not a shred of evidence. The Response fails to exhibit any documents, third party testimony or other evidence of any intention to use the domain name as a travel website.

6.8 It is inconceivable to the Panel that, if Mr.. Silver was intending to use the domain name for a travel site, that he could have been ignorant of Qantas. Indeed, he does not suggest that he was. A trademark search against Qantas would have revealed the QANTAS THE AUSTRALIAN AIRLINE registrations dating from 1993 and would immediately have put him on notice of a possible conflict. Further, the Response does not deny, nor even comment on, the Complainants' case that Qantas' name is synonymous with the Australian Airline. Whilst it is entirely credible that the Respondent was not aware of the trading between 1986 and 1992, of the Third Complaint as "Australian Airlines", it is not, in the Panel's view, credible that he was unaware of Qantas and its reputation as the Australian Airline.

6.9 In all the circumstances, the Panel considers that the Respondent has failed to demonstrate any of the circumstances in paragraph 4(c) of the Policy evidencing rights to and legitimate interests in the domain name in issue. Accordingly, the Complaint succeeds in satisfying the second requirement of the Policy under paragraph 4(a)(ii).

Registered and Used in Bad Faith

6.10 In the absence of establishing rights to or legitimate interests in the domain name, there is nothing in the Respondent's conduct which convincingly avoids the conclusion that the domain name was primarily registered with a view to selling it to the Complainants for the best price he could get. As against that, the Respondent did nothing with the domain name for almost 2 years. But immediately he was alerted in about August 2001 to Qantas' plans to re-introduce the AUSTRALIAN AIRLINES brand, he was trying to sell the domain name to Qantas. By June 2002, the Respondent was suggesting to the Complainants that he considered "… the domain name to be worth millions of dollars".

6.11 As to the alleged pattern of cybersquattering conduct, the Respondent's registration of other third party trademarks as domain names [for example, thedowjonesindex.com and theex-box.com] is not denied in the Response, nor is any explanation proffered in the Response. Instead, Mr.. Silver appears to rely on Qantas' failure to register the domain name before him. That, of course, is no answer to the Complainants' case made out under paragraph 4(b)(ii) of the Policy. Nor is the fact that the address on the <dutchwoodenshoes.com> website visited by the Panellist is the same as that given for the Respondent relevant. One legitimate operation does not legitimize registering domain names incorporating well-known third party trademarks.

6.12 Accordingly, on the evidence in this administrative proceeding, the Panel is satisfied that the Complaint meets the twin requirements of paragraph 4(a)(iii) of the Policy. Further, this is, in the Panel's view, one of these cases similar to Telstra where the Panelist at paragraph 7.12(v) of the Decision suggested that it was not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate in the light of the Complainant's trademark rights. As the Complainants in this case have rightly pointed out, any use by the Respondent of the domain name in connection with a travel site would inevitably cause consumers to believe it was in some way connected with or endorsed by the Complainants.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <australianairlines.com>, be transferred to the First Complainant, Australian Airlines Limited.

 

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David Perkins
Sole Panelist

Dated: April 22, 2003