[Indexed as: Croatia Airlines v. Kwen Kijong]
[Indexed as: CROATIAAIRLINES.com; CROATIAAIR.com]
eRESOLUTION
Administrative Panel Decision
eResolution Case Numbers: AF-0302a and AF-0302b
Commenced: August 1, 2000
Judgement: September 25, 2000
Presiding Panelist: Julian D M Lew
Domain name-Domain name dispute resolution policy-Confusingly Similar-Legitimate Interest-Bad Faith Registrations- Web Site Not Developed-Collection of Well Known Domain Names-Croatian Trademark.
Complainant was international air carrier who registered the Croatian trademark and service mark Croatian Airlines. Complainant uses its trademark & service mark in connection with air transportation, tourism, printed products, and cutlery. Respondent registered the domain names croatiaairlines.com and croatiaair.com.
HELD, Names Transferred to Complainant.
Respondent's domain names are confusingly similar to the Complainants trademark and service marks. Furthermore, Respondent has no legitimate interest in the use of the domain name in that neither name has any connection with Respondent's intended use and Respondent has demonstrated no preparations to use the domain names in connection with a bona fide business.
Finally, Respondent is using the domain names in bad faith in that Respondent has collected a number of domain names which are well known trade or generic names. Respondent used the domain names in an attempt to attract users to his web site by creating confusion with Complainants mark.
Policies referred to
Uniform Domain Name Dispute Resolution Policy.
Cases Referred to
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Panel Decisions Referred to
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1. Parties and Contested Domain Name
The Complainant is Croatia Airlines d.d., a corporation with address
at Savska 41 / Pravna sluñba, Zagreb, 10 000, Croatia.
The Respondent is Kwen Kijong, with address at 102/605 Namyoung-apt,
542-1 Taejun-dong, Bukgu, Taegu, 702-260, Korea.
The domain names in dispute are "croatiaairlines.com" and "croatiaair.com".
2. Procedural History
The electronic version of the Complaint form was filed on-line through
eResolution's Website on 1 August 2000. The hardcopy of the Complaint Form
was received on 3 August 2000. The choice of jurisdiction was received
on 4 August 2000. Payment was received on 11 August 2000.
Upon receiving all the required information, eResolution's clerk proceeded
to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the required
contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
The inquiry led the Clerk's Office of eResolution to the following
conclusions: the Registrars are Hangang Systems, Inc. and Network Solutions,
Inc., the Whois database contains all the required contact information,
the contested Domain Name resolves to an inactive Web page and the Complaint
is administratively compliant.
An email was sent to Network Solutions by the Clerk's Office of eResolution
to obtain a copy of the Registration Agreement for croatiaair.com on 2
August 2000. The requested information was received on 3 August 2000. An
email was sent to Hangang Systems, Inc. by eResolution Clerk's Office to
obtain a copy of the Registration Agreement for croatiaairlines.com on
10 August 2000. The requested information was received on 15 August 2000.
The Clerk's Office proceeded to send a copy of the Complaint Form and
the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's
Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules").
The Clerk's Office fulfilled all its responsibilities under paragraph
2(a) of the Rules in connection with forwarding the Complaint to the Respondent
on 14 August 2000. That date is the commencement date of the administrative
proceeding.
On 14 August 2000, the Clerk's Office of eResolution notified the Complainant,
the Respondent, the concerned Registrar, and ICANN of the date of commencement
of the administrative proceeding.
On 22 August 2000, the Respondent submitted, via the eResolution internet
site, his Response. The signed version of the Response was received on
1 September 2000.
On 5 September 2000, the Clerk's Office contacted me, and requested
that I act as panelist in this case.
On 12 September 2000, I accepted to act as panelist in this case and
filed the necessary Declaration of Independence and Impartiality.
On 12 September 2000, the Clerk's Office forwarded a user name and
a password to me, allowing me to access the Complaint Form, the Response
Form, and the evidence through eResolution's Automated Docket Management
System.
On 12 September 2000, the parties were notified that I had been appointed
and that a decision was to be, save exceptional circumstances, handed down
on 25 September 2000.
3. Factual Background
The Complainant is an air carrier and a member of the International
Air Transport Association (IATA) since 1991. It has been registered at
the Commercial Court Register in Zagreb, where it has its principal place
of business, since 1989.
The Complainant is the owner of the trademark "Croatia Airlines" for
the classes "8. (knives forks and spoons), 16. (paper, cardboard, printed
products), 21. (flatware and cutlery not of precious metal)". The Complainant
applied to the State Intellectual Property Office in Croatia for registration
of that trademark on 18 July 2000. It has also registered with the State
Intellectual Property Office in Croatia, the service mark "Croatia Airlines"
for the classes "35. (advertising and marketing, business management),
39. (air transportation), 42. (tourism)".
The Respondent is an individual who has registered the domain name
"croatiaairlines.com" with the registrar Hangang Systems Inc and the domain
name "croatiaair.com" with the registrar Network Solutions Inc.
In June 2000, the Complainant contacted the Respondent by e-mail and
requested the Respondent to transfer the domain name "croatiaairlines.com"
to the Complainant. Further correspondence followed in July when the Complainant
made a further request for the transfer of "croatiaairlines.com". There
is no evidence that the Repondent agreed to make this transfer.
4. Parties' Contentions
The Complainant contends the following:
· It is the owner of both the trademark and service mark "Croatia
Airlines", and the domain name "croatiaairlines.com" is identical and the
domain name "croatiaair.com" is confusingly similar to the registered trademark/service
mark.
· The Respondent has no rights or legal interest in the use
of the domain names in the bona fide offering of goods and services, being
known
by the domain names or in using the domain names for legitimate non-commercial
or fair use.
· The Respondent has registered or used the domain name in bad
faith in that (1) the Respondent refused to transfer the domain name "croatiaairlines.com"
to the Complainant without a payment in excess of the registration expense,
(2) the Respondent has not used the domain name since registering it, and
(3) the Respondent has also registered numerous other domain names, suggesting
a pattern of speculative activity.
The Respondent contends the following:
· The person who registered a domain name first has rights on
a "first come first served" basis.
· The Respondent searched for the terms "croatia / airlines"
and "croatia / air" on the sites: http://www.kipo.go.kr, http://trademarks.uspto.gov
and http://oami.eu.int/search/trademark/la/en_tm_search.cfm and found no
results for Korea, North America and Europe. A trademark registered in
Croatia it is not effective in Korea or in "Cyber World, Internet".
· Domain disputes have been well known since 1996 and therefore
the Complainant should have ensured its registration of "croatiaairlines.com"
and "croatiaair.com". In failing to do so, the Complainant has accepted
it has no right of use of the trademark.
· The Respondent will not use the domains for the purposes of
monetary profit though business identical or similar to that of the Complainant.
He plans to use the homepages "croatiaairlines.com" and "croatiaair.com"
to help people suffering from infectious diseases, deserted children and
the poor from war and disasters all over the world.
· The Respondent has never tried to sell, rent or transfer for
profit the domain names to anyone, including the Complainant, nor tried
to disturb the business of the Complainant or gain the benefit of its name.
· There is no regulation obliging domain name holders to operate
their homepage immediately after registration.
· The other domain names he has registered and which have been
referred to by the Complainant are not registered trademarks. He has not
tried to sell, rent or transfer these domain names for profit and has not
tried to disturb business or gain benefit from these domain names.
5. Discussion and Findings
The Rules state that "A Panel shall decide a complaint on the basis
of the statements and documents submitted and in accordance with the Policy,
these Rules and any rules and principles of law that it deems applicable"
(Rule 15 (a)).
Under paragraph 4(a) of the Uniform Domain Name Dispute Resolution
Policy ("the Policy"), a complainant in a domain name dispute must prove:
· that the 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.
The domain names are identical or confusingly similar to the Complainant's
trademark / service mark
In my view the domain name "croatiaairlines.com" is identical to the
Complainant's trademark and service mark and the domain name "croatiaair.com"
is confusingly similar to the same marks. These two domain names are clearly
confusing with the name the Complainant, i.e. "Croatia Airlines d.d."
The Respondent has no legitimate interests in respect of the domain
name
Paragraph 4(c) of the Policy sets out the following, non-exhaustive,
circumstances which will be evidence demonstrating legitimate interests
to the domain name:
· Before notice to the respondent of the dispute, the respondent's
use of, or demonstrable preparations to use, the domain name or a name
corresponding to the domain name was in connection with a bona fide offering
of goods and services; or
· the respondent has been commonly known by the domain name,
even if he has acquired no trademark or service mark rights; or
· the respondent is 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 trademark or service mark at issue.
In my view the Respondent has not, by demonstrating these or any other
circumstances, shown any rights or legitimate interests in respect of either
domain name. He contends that he intends to use the homepages to help the
poor and those suffering from infectious diseases. However, this shows
no right in the names "croatiaairlines" or "croatiaair". Neither name has
any connection with the Respondent's intended use, and the Respondent has
given no explanation as to why either name could be relevant for its claimed
purpose.
The Respondent seeks to use the names "croatiaairlines and "croatiaair"
to attract visitors to his website. This is not a legitimate use.
Furthermore, as confirmed by the Clerk's Office of eResolution, before
notice of this dispute to the Respondent, the contested domain names resolved
to inactive webpages. Therefore there was no use of, or demonstrable preparations
to use, the domain name in connection with the bona fide offering of goods
and services.
The domain name has been registered and is being used in bad faith
Para. 4(b) of the Policy sets out the following circumstances that
shall be, without limitation, evidence that domain name has been registered
and used in bad faith:
· The primary purpose of registering or acquiring the domain
name is to sell, rent or otherwise transfer the registration to the complainant
who is the owner of a trademark or service mark or to a competitor of the
complainant for valuable consideration in excess of the documented out-of-pocket
costs directly related to the domain name; or
· The respondent has registered the domain name in order to
prevent the owner of the trademark or service mark from reflecting the
mark in the corresponding domain name, provided that respondent has engaged
in such conduct; or
· The respondent has registered the domain name primarily for
the purpose of disrupting the business of a competitor; or
· By using the domain name, the respondent has intentionally
attempted to attract, for commercial gain, internet users to the respondent's
website 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 website or of a product or service on
that website.
I find that the second and fourth circumstances arise in this case
as proof of bad faith on the part of the Respondent.
In respect of the second circumstance, the Respondent has collected
a number of domain names which are well known trade or generic names. In
particular, the domain names "izuzumotors.com", "isuzumotors.com" and "ansettnewzeland.com"
are the same or similar to well known motor car and airline trade names.
The Respondent argues that searches did not reveal registered trademarks
for these names or for the names "croatiaairlines.com" or "croatiaair.com".
This is not sufficient and fails to consider the unregistered rights of
the owners and regular users of those names.
Furthermore, no good business reason nor evidence of coincidence in
the choice of the domain names has been given by the Respondent. One must
question why the Respondent chose to register not only "croatiaarlines.com"
and "croatiaair.com", but also a number of other domain names, including
the names of Isuzu Motors and Ansett Airlines of New Zealand.
In respect of the fourth circumstance, Respondent has used the domain
names in an attempt to attract users to his website by the confusion with
the Complainant's mark. At the time of the Complaint, the domain names
resolved to inactive websites. However, on my accessing both "croatiaairlines.com"
and "croatiaair.com", this led to the same website showing images of starving
people and animals. In my view there is a high likelihood that visitors
to this site, having searched for "croatiaairlines.com" or "croatiaair.com"
would be led to think that this site was one endorsed or even promoted
by the Complainant.
Furthermore, the successful raising of money for whatever purpose on
these sites, would invariably be due, at least in part, to the use of the
domain names "croatiaairlines.com" and "croatiaair.com".
I do not consider the first circumstance of evidence of bad faith to
apply. Although it is unclear why the Respondent would have registered
the two domain names including the trademark and service mark of "Croatia
Airlines", there is no evidence that he has sought payment in excess of
the out-of-pocket costs directly relating to the domain name.
I reject the remainder of the contentions put forward by the Respondent
as failing to rebut the Complainant's contentions in respect of the three
conditions set out in paragraph 4(a) of the Policy.
6. Conclusions
For all of the reasons set out above, I have concluded that:
(i) the domain names "croatiaairlines.com" and "croatiaair.com" are
identical in the first case and confusingly similar in the second case
to the name, trademark and servicemark of the Complainant;
(ii) there is no legitimate reason for the Respondent to have registered
or to wish to use these two domain names; and
(iii) the registration of these two domain names by the Respondent
was in bad faith.
Accordingly, the domain names "croatiaairlines.com" and "croatiaair.com"
shall be transferred from the Respondent to the Complainant and shall not
be further used by the Respondent.
7. Signature
September 2000
(s) Julian D M Lewis
Presiding Panelist
Domain Names Transferred