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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

British Airways PLC v. Wayne Nicholas / Beroca Holdings B.V.I. Limited

Case No. D2009-0110

1. The Parties

The Complainant is British Airways PLC, West Drayton, United Kingdom, represented by Wragge & Co., United Kingdom.

The Respondent is Wayne Nicholas / Beroca Holdings B.V.I. Limited, London, United Kingdom.

2. The Domain Name and Registrar

The Disputed Domain Name <britishairways.mobi> is registered with Dotster, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 28, 2009. On January 29, 2009, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the Disputed Domain Name. On January 29, 2009, Dotster, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on February 27, 2009.

The Center appointed Ian Blackshaw as the sole panelist in this matter on March 4, 2009. 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 is the owner of the goodwill and reputation subsisting in the trademark BRITISH AIRWAYS, and is very well known as an international airline, trading under the names BRITISH AIRWAYS and BA, amongst others. When used in relation to airline (and related) services, the trademark BRITISH AIRWAYS denotes exclusively the business of the Complainant.

As can be seen from the Complainant`s 2007/08 Annual Report and Accounts, a copy of which has been provided to the Panel, the Complainant:

- is the UK`s largest international scheduled airline (page 2);

- has a fleet of 245 planes (page 2);

- flies to over 300 destinations worldwide (page 2);

- had revenue in the 2007/08 financial year of ВЈ8,753,000,000 (page 3); and

- made an operating profit in the 2007/08 financial year of ВЈ875,000,000 (page 3).

The Complainant has been trading under the name "British Airways" since 1974 and has had the words BRITISH AIRWAYS registered continuously as a trade mark since, at least, 1991 under United Kingdom trade mark registration number 1454014.

The Complainant has also registered the words BRITISH AIRWAYS as trade marks in other jurisdictions including in:

- the European Union, at the Office for Harmonization in the Internal Market ("OHIM"), under registered trade mark number 003184322; and

- the United States of America, at the United States Patent and Trademark Office ("USPTO"), under registered trade mark number 1408939;

Copies of these trade mark registrations have also been provided to the Panel.

The registered trade marks cover a wide range of goods and services, including goods in classes 16 and 28 and services in classes 36, 39 and 42. The services for which it is most well known are those in class 39, namely, airline services, air travel services, arranging the transportation of goods and people, excursion, travel agency and booking services, package holiday services and car hire services.

5. Parties` Contentions

A. Complainant

The Complainant makes the following contentions:

A1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

On the basis of the above-mentioned trademark registrations, the Disputed Domain Name registered by the Respondent is identical to the Complainant`s registered trademark BRITISH AIRWAYS.

According to the "www.better-whois.com" search in respect of the website "www.britishairways.com", conducted on January 23, 2009, a copy of which has been provided to the Panel, the Complainant has had the domain name <britishairways.com> registered since 1998. And since then, the Complainant has been using it in connection with the provision of at least the goods and services mentioned above, and a substantial part of the Complainant`s business is now conducted through the website "www.britishairways.com".

Therefore, not only is the Disputed Domain Name identical to the Complainant`s trademark BRITISH AIRWAYS, but the Complainant has a worldwide reputation as a provider of airline services under the registered trademark BRITISH AIRWAYS, and through the website "www.britishairways.com".

A2. The Respondent has no rights or legitimate interests in respect of the domain name;

(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

To the Complainant`s knowledge the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. In particular:

- the Complainant has not licensed or otherwise permitted the Respondent to use any of its trade marks, or to register any domain name incorporating the words "British Airways";

- the Respondent has no relationship with the Complainant, or permission from it to use its trade marks;

- there is no evidence of the Respondent`s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services;

- the Respondent (as an individual, business, or part or whole of any other organization) has not been commonly known by the Disputed Domain Name;

- the Respondent has acquired no trade mark or service mark rights in the words "British Airways";

- the Respondent has registered no trade or service mark in the words "British Airways", or uses those words as part of a mark, at UKIPO, OHIM or USPTO; and

- there is no evidence of the Respondent using the Disputed Domain Name for any purpose whatsoever, despite the fact that the Respondent registered the Disputed Domain Name on September 26, 2006.

A3. The domain name was registered and is being used in bad faith;

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraphs 3(b)(ix)(3))

The Complainant relies on the above-mentioned contentions.

And, furthermore, adds that the Disputed Domain Name was registered in bad faith since:

Beroca Holdings B.V.I. Limited has been the subject of nine previous transfer orders by the WIPO Arbitration and Mediation Center in relation to .mobi domain names which are identical to trade marks owned by third parties, namely:

(A) Akbank Turk A.S. v. Beroca Holdings B.V.I Limited, WIPO Case No. D2008-0572 (concerning the domain name <akbank.mobi>);

(B) Société Anonyme des Eaux Minerales d`Evian and Société des Eaux de Volvic v. Beroca Holdings B.V.I Limited, WIPO Case No. D2008-0416 (concerning the domain names <evian.mobi> and <volvic.mobi>);

(C) Dr. August Oetker Nahrungsmittel KG v. Beroca Holdings B.V.I Limited, WIPO Case No. D2007-1664 (concerning the domain name <oetker.mobi>);

(D) N.M Rothschild & Sons Limited, Baron Philippe de Rothschild SA, Societe Civile de Chateau Lafite Rothschild v. Beroca Holdings B.V.I Limited, WIPO Case No. D2007-1055 (concerning the domain names <nmrothschild.mobi> and <rothschild.mobi>);

(E) Spearmint Rhino Companies Worldwide, Inc. v. Beroca Holdings B.V.I Limited, WIPO Case No. D2007-1051 (concerning the domain name <spearmintrhino.mobi>);

(F) Clifford Chance LLP v. Beroca Holdings B.V.I Limited, WIPO Case No. D2007-0693 (concerning the domain name <cliffordchance.mobi>);

(G) Kuoni Reisen Holding AG v. Beroca Holdings B.V.I Limited, WIPO Case No. D2007-0216 (concerning the domain name <kuoni.mobi>);

(H) Kurt Geiger Limited v. Beroca Holdings B.V.I Limited, WIPO Case No. D2007-0195 (concerning the domain name <kurtgeiger.mobi>); and

(I) Advance Magazine Publishers Inc. v. Beroca Holdings B.V.I Limited, WIPO Case No. D2007-0026 (concerning the domain name <condenast.mobi>).

Copies of all of which Decisions have been provided to the Panel.

At least five of the previous transfer orders (relating to the domain names <oetker.mobi>, <nmrothschild.mobi> and <rothschild.mobi>, <spearmintrhino.mobi>, <kurtgeiger.mobi> and <condenast.mobi>) related to .mobi registrations which were registered on September 26, 2006, the same day on which the Disputed Domain Name was registered, and the first day on which .mobi domain names were made available for public registration.

In at least four of the previous transfer orders (relating to the domain names <nmrothschild.mobi> and <rothschild.mobi>, <condenast.mobi>, <cliffordchance.mobi> and <kuoni.mobi>), the WIPO Arbitration and Mediation Centre made express findings that requests were made for sums of money in excess of the documented out-of-pocket costs directly related to the domain name.

The Disputed Domain Name has been passively held since it was registered on September 26, 2006.

The Complainant has had registered trade mark rights over a trade mark which contains the Disputed Domain Name since at least October 1, 1986, a copy of a printout of the UKIPO registry relating to Registered Trade Mark number 1281389, which has now expired, has been provided to the Panel, and which is over 19 years before the Disputed Domain Name was registered.

The Complainant`s trade mark, company name and company is so well known that it is highly unlikely, if not impossible, that the Complainant, whose business address is in London, is not aware of it.

As was stated at paragraph 6.C, page 4 of WIPO Case No. D2008-0572, supra, relating to the domain name <akbank.mobi>:

"Various Panels acting under the Policy have ruled that passive holding of a domain name, coupled with a complainant having valid trademark rights commencing prior to the date on which the domain name was registered, and where the registrant has actual or imputed knowledge of these rights, may constitute sufficient evidence of bad faith (both registration in bad faith and use in bad faith). See, e.g., Jones Apparel Group Inc. v. Robin Sousa, WIPO Case No. D2001-1308 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003."

With regard to the actual or imputed knowledge of the rights required to establish bad faith, the Complainant believes it is impossible that the Respondent could not know of the Complainant`s rights since the Complainant is:

- a full service global airline;

- the national airline and flag carrier of the United Kingdom;

- a FTSE 100 listed company; and

- one of the largest airlines in the world.

Given the above, the only reasons which it can be imagined that the Respondent might have had in registering the Disputed Domain Name are:

- to sell, rent or otherwise transfer the Disputed Domain Name to the Complainant, who is the owner of trade marks identical to the Disputed Domain Name, for valuable consideration in excess of the Respondent`s documented out-of-pocket costs directly related to the Disputed Domain Name, which is evidence of bad faith under paragraph 4(b)(i) of the Policy; or

- to register the Disputed Domain Name in order to prevent the Complainant from reflecting its trade mark in a corresponding domain name, in circumstances where it is clear that the Respondent has engaged in a pattern of such conduct, which is evidence of bad faith under paragraph 4(b)(ii) of the Policy.

B. Respondent

The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant`s contentions or take any part in them.

6. Discussion and Findings

To qualify for cancellation or transfer of the Disputed Domain Name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed 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 disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondent failed to file a response, the panel`s decisions were based upon the complainant`s assertions and evidence, as well as inferences drawn from the respondent`s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936.

Nevertheless, the panel must not decide in the complainant`s favor solely based on the respondent`s default. See Cortefiel S.A. v. Miguel GarcГ­a Quintas, WIPO Case No. D2000-0140. The panel must decide whether the complainant has introduced elements of proof, which allow the panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is well established in previous UDRP cases that, where a domain name incorporates a complainant`s registered mark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

In the present case, the Disputed Domain Name incorporates in its entirety the Complainant`s well-known, well-established and widely-used trademark BRITISH AIRWAYS, which is also the Complainant`s corporate/business name.

The addition of the suffix ".mobi" to the Disputed Domain Name does not affect the position for trademark distinguishing purposes, as its presence in the Disputed Domain Name is for Internet registration purposes only. See Samsung Electronics Col. Ltd. v. Selim Civelek, WIPO Case No. DRO2008-0005 and the other UDRP cases cited therein.

In view of all this, the Panel finds that the Disputed Domain Name registered by the Respondent is identical to the Complainant`s well-known trademark BRITISH AIRWAYS, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established rights and substantial goodwill through widespread commercial use of the same prior to the registration of the Disputed Domain Name by the Respondent.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the Disputed Domain Name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

– whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent`s 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;

– whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

– whether the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the Disputed Domain Name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint. See 1-800-Flowers.com, Inc, Fresh Intellectual Properties, Inc., Fannie May Confections, Inc. v. G Design, WIPO Case No. D2006-0977.

Neither is there any evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant`s well-known trademark BRITISH AIRWAYS. Indeed, the adoption by the Respondent of a domain name identical to the Complainant`s well-known trademark BRITISH AIRWAYS inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its activities and services (see further on this point below) and the consequential tarnishing of the Complainant`s well-known trademark BRITISH AIRWAYS and also the valuable goodwill that the Complainant has established in this trademark through its commercial use of the same, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.

Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. Likewise, no evidence has been adduced that the Respondent has commonly been known by the Disputed Domain Name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name.

Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

"(iv) by using the domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to its 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 [the Respondent`s] web site or location or of a product or service on its web site or location."

Based on the record in the case file, the Panel agrees with the Complainant`s contention that the Respondent, by registering the Disputed Domain Name, is trading on the Complainant`s valuable goodwill established in its well-known trademark BRITISH AIRWAYS.

Again, by registering and using the Disputed Domain Name incorporating the Complainant`s well-known trademark BRITISH AIRWAYS, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent`s activities are approved or endorsed by the Complainant. None of which, on the basis of the record in the case file, is, in fact, the situation. Such misleading consequences, in the view of the Panel, constitute bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.

Furthermore, the fact that the disputed Domain Name includes without any modification the well-known trademark BRITISH AIRWAYS of the Complainant, held and used by the Complainant prior to the date the Respondent registered the disputed Domain Name, is a further factor supporting a conclusion of bad faith. See Segway LLC v. Chris Hoffman, WIPO Case No. D2005-0023; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. For a domain name would typically be used in good faith by the owner of the respective right or by a licensee, neither of which is the situation in the present case.

In addition, the particular circumstances in which the Respondent registered and is using the Disputed Domain Name, as stated above by the Complainant, also indicate bad faith on the part of the Respondent. See the panel`s findings on this point in Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094.

Furthermore, the Respondent, as mentioned and evidenced above by the Complainant, has been the subject of nine previous transfer orders by the WIPO Arbitration and Mediation Center in relation to its registration of .mobi domain names, which are identical to trade marks owned by third parties, and the Panel agrees with the Complainant`s contention that such previous history and pattern of behavior by the Respondent is a further indication supporting a finding of bad faith on the part of the Respondent in the present case. See Tom Cruise v. Network Operations C/Alberta Hot Rods, WIPO Case No. D2006-0560.

Also, the Panel further agrees with the Complainant`s contention, for the reasons stated and argued above, that the passive holding of the Disputed Domain Name by the Respondent, coupled with the Complainant`s valid trademark rights subsisting prior to the date on which the Disputed Domain Name was registered, and also in view of the Respondent`s actual or imputed knowledge of such rights, is also a basis for establishing the existence of bad faith on the part of the Respondent. See Akbank Turk A.S. v. Beroca Holdings B.V.I Limited, WIPO Case No. D2008-0572. Also, the timing, as pointed out above, of the registration of the Disputed Domain Name in the .mobi domain names category also raises doubts about the bona fide intentions of the Respondent.

Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings are, again in the view of the Panel, further indications of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

Therefore, taking all these particular circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith.

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 <britishairways.mobi> be transferred to the Complainant.

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Ian Blackshaw
Sole Panelist

Dated: March 6, 2009