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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Emirates v. WhoisGuard Protected

Case No. D2006-0433

 

1. The Parties

The Complainant is Emirates, Emirates Group Headquarters, Dubai, United Arab Emirates, represented by Baker & McKenzie, Hong Kong, SAR of China.

The Respondent is WhoisGuard Protected, Westchester, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <emiratestaff.com> is registered with Spot Domain LLC dba Domainsite.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2006. On April 6, 2006, the Center transmitted by email to Spot Domain LLC dba Domainsite.com a request for registrar verification in connection with the domain name at issue. On April 10 and 11, 2006, Spot Domain LLC dba Domainsite.com 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 April 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2006.

The Center appointed James A. Barker as the sole panelist in this matter on May 10, 2006. 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 following facts, taken from the Complaint, are not contested.

The Complainant is the well-known middle-eastern based airline known as Emirates.

The Complainant was set up in 1985 by the government of Dubai. The activities of the Complainant and companies in Complainant’s group consist chiefly of passenger air services, freight services, ground logistics and tourism, outbound tour operator, and aircraft engineering and maintenance.

The Complainant has become known as the official international airline of the United Arab Emirates. Complainant now flies to over 80 destinations in 56 countries.

The Complainant’s services are promoted to consumers by the staff of Complainant’s offices or agents, which are located in numerous cities around the world and through Complainant’s Website at “www.emirates.com”.

At home, Emirates sponsors various festivals and events held in Dubai, including the Dubai Shopping Festival (DSF), Dubai Summer Surprises (DSS), Dubai World Cup (horse racing), Dubai Desert Classic (golf), and the Dubai Tennis Championships.

The Complainant participates in sponsorship of sporting teams and events including: football (soccer); horse racing; sailing; golf; cricket; rugby union and Australian Rules Football. In particular, in 2003 Complainant became a co-partner of the 2006 FIFA World Cup soccer tournament – one of the world’s biggest sporting events – including that it is title sponsor for the match cast section of the <fifaworldcup.com> which will attract millions of fans when the tournament is broadcast in Summer 2006.

As a result of its marketing efforts, in the 2004/2005 financial year, the Complainant carried 12.5 million passengers and 838,400 tones of cargo.

The Complainant is the owner of the domain name <emiratesstaff.com> which it registered on June 21, 2003, two years prior to the disputed domain name. The Complainant’s domain name is used as the address for its staff Website (“the Complainant’s Website”).

The Complainant’s Website is operated by the Complainant for the benefit of its current and retired employees. In addition to providing company and travel information, the Complainant’s Website allows staff to access the Complainant’s ticketing system.

The disputed domain name reverts to a Website at <domainsponsor.com>. DomainSponsor describes itself as “the industry’s leading solution for monetization of parked domain names”. According to the terms of the DomainSponsor program, persons participating in the “domain monetization” portion of the program, i.e. the domain name owners, are paid 50% of the revenues generated by referrals to the Website.

 

5. Parties’ Contentions

A. Complainant

Identical or confusingly similar

The Complainant is the well-known middle-eastern based airline known as Emirates. The word “Emirate” means a country ruled by an Emir. However, the word “Emirates” is exclusively associated with Complainant due to its substantial trading and promotional activities.

The Complainant has a substantial and exclusive reputation in the mark EMIRATES to the extent that it is now a house-hold name. The Complainant has registered the plain word EMIRATES in relation to a range of travel and transport related services in the United States under trademark registration 2495959. In addition, the Complainant has numerous registrations around the world for trademarks that include the word EMIRATES.

In the case of Emirates Corporation v 2220 Internet Coordinator, WIPO Case No. D2005-1311, the Panel accepted the Complainant’s evidence that the word EMIRATES has acquired a secondary significance and connotes the Complainant more so than it does the region known as the United Arab Emirates. In that case, the Panel ordered that the domain name <emiratescareers.com> be transferred to the Complainant, which is also the Complainant in this Complaint.

Through its registration and use of the word EMIRATES as a trademark, and through operation of its “www.emirates.com” Website, Complainant has rights in the single word trade mark EMIRATES. In addition, through the use of the name on its “www.emiratesstaff.com” Website, Complainant has accrued rights in the expression “Emirates Staff”.

Consumers seeing the domain name <emiratestaff.com> would be, and have been, confused or mislead into believing that the disputed domain name refers to a Website operated by the Complainant - which is not the case. The mere addition of the generic word “staff” to the Complainant’s well-known mark is clearly “insufficient to avoid confusion with the registered trademark.” See, e.g., Revlon Consumer Prods. Corp. v. Morel, WIPO Case No. D2002-0215.

Rights or legitimate interests

The Respondent has no rights or legitimate interests in the disputed domain name.

There is nothing on the Website at the disputed domain (“Respondent’s Website”) to indicate that Respondent, or anyone associated with the Respondent’s Website, is commonly known by the name “Emirates Staff”.

Clearly, no bona fide trade is carried on through the Respondent’s Website since it does not perform any function other than to provide the links to third party Websites.

The disputed domain name, being used to divert internet users under a sponsorship program, is blatantly being used by a money-making domain name parking service.

Bad faith

The Complainant’s Website address is identical to the disputed domain name, save that the disputed domain name only has one “s” instead of two – a very minor difference, and one that many users would not notice or could easily mistype. This has already caused confusion amongst Complainant’s staff who have mistakenly typed the disputed domain name when trying to access the Complainant’s Website. (The Complainant supplied copies of emails to the Complainant’s legal department from members of the Complainant’s staff who were mistakenly directed to the Respondent’s Website.)

It is therefore obvious that the disputed domain name was registered with the bad faith intention of misdirecting users to the Respondent’s Website.

The Respondent’s Website includes a number of links that are the same as sections on the Complainant’s Website:

The Respondent has registered the disputed domain name in bad faith by doing so with knowledge of the Complainant’s rights in the EMIRATES mark. It is inconceivable that Respondent, who has placed or arranged for links to airline related Websites on the Respondent’s Website, some of which links have the same descriptions as those on the Complainant’s Website, was unaware of the Complainant’s rights in the EMIRATES mark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Under the Policy, paragraphs 4(a)(i)-(iii), for the Complainant to succeed and have the disputed domain name transferred to it, the Complainant must prove that:

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

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

- the domain name was registered and is being used in bad faith.

Paragraph 4(a) of the Policy provides that the Complainant must prove all of these three elements, which are discussed as follows.

A. Identical or Confusingly Similar

There is no dispute in this case that the Complainant has registered rights in the trademark EMIRATES in the United States, where the Respondent is apparently located. Evidence of trademark registration is prima facie evidence of rights in the mark. The Respondent has not submitted any evidence to the contrary.

It is well-established that the gTLD extension is to be disregarded by panels in determining whether a domain name is identical or confusingly similar to a trademark.

Disregarding the gTLD extension, the disputed domain name entirely incorporates the Complainant’s mark, and adds the generic word “staff”.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark. The addition of the word “staff” does not avoid that confusion. As noted by the Complainant, Panels have usually found domain names which combine a trademark with common words to be confusingly similar to the mark. See, for example, Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037. Panels have also found that the addition of a common word to a trade mark is only a “neutral” addition that does not avoid confusing similarity with the mark. See e.g. Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out matters by which the Respondent may demonstrate that it has rights or legitimate interests in a domain name. Panels have consistently found that the burden is on the Respondent to provide evidence of its rights or legitimate interests under paragraph 4(c) once the Complainant establishes a prima facie case against the Respondent. See, for example Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753. In this case the Complainant has made a prime facie case by its substantial argument and evidence.

The Respondent filed no response or any other communication in connection with this case. There is no evidence to show that the Respondent has any rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The evidence also demonstrates that the Respondent has registered and used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.

Paragraph 4(b)(iv) provides (in part) that there is evidence of bad faith registration and use where, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its Website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its Website.

The Respondent was most likely aware of the Complainant’s mark when it registered the disputed domain name. The Complainant’s mark appears well-known and its business activities are extensive. Moreover, and importantly, the Respondent’s Website includes links and items that appear characteristic of the Complainant’s own Website at <emiratesstaff.com>. The only reasonable inference from this evidence is that the Respondent was aware of the Complainant and its mark, and sought to create confusion with it.

It is also apparent that the Respondent has sought to attract Internet users for commercial gain, since it appears that the diversion of Internet users via the disputed domain name takes place in connection with a sponsorship scheme, under which the Respondent may receive fees for referrals.

Accordingly, the Panel also finds that the Respondent intentionally attempted to attract Internet users by using the disputed domain name and so has demonstrated bad faith under paragraph 4(b)(iv) of the Policy.

 

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, <emiratestaff.com> be transferred to the Complainant.

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James A. Barker
Sole Panelist

Dated: May 24, 2006