v.
P&P Servicios de Communicacion S.L.
[Indexed as:
Singapore Airlines v. P&P]
[Indexed as:
Singaporeairlines.com]
WIPO Arbitration
and Mediation Center
Administrative
Panel Decision
Case No. D2000-0643
Commenced:
6 July 2000
Judgment:
29 August 2000
Presiding Panelist: Ian Barker
Domain name - Domain name dispute resolution policy - Legitimate interest - Bad faith registration - Bad faith use - Identical - Confusingly similar - Trademark - U.S. Trademark - Judicial notice - Cybersquatting - Cease and desist letter - Precedent - Singapore airlines.
Complainant operates a high-profile airline, owning trademark and service mark rights to the mark SINGAPORE AIRLINES in numerous countries, including the United States, and has registered various country-specific domain names incorporating the name SINGAPOREAIR. Respondent registered the domain name Singaporeairlines.com.
HELD, Name Transferred to Complainant
The Panel is able to take judicial notice of the fact that Complainant's mark is distinctive and universally associated with Complainant's airline.
The domain name Singaporeairlines.com is obviously identical or confusingly similar to Complainant's mark. The addition of .com is of no importance in arriving at this conclusion.
Respondent has no rights or legitimate interests in the domain name. Complainant has granted no rights to Respondent. Respondent has never suggested to the contrary, nor that Respondent is known by the words contained in the mark.
Respondent registered and used the domain name in bad faith. The domain name is so obviously connected with Complainant's well-known airline that its very registration and use by someone with no connection with the airline suggests opportunistic bad faith. This is a blatant exercise in cybersquatting.
Although normally a cease and desist letter from Complainant to Respondent is to be encouraged, the absence of such a letter is not material here because of the stark blatancy of Respondent's registration. Registration of a domain name obviously relating to the widely known Complainant is in itself a pointer to Respondent's bad faith. A desire by Respondent to cash in on Complainant's reputation is the only possible inference.
Although entitled to consider principles of law deemed applicable, the Panel finds it unnecessary to do so. The jurisprudence being developed by WIPO Panelists under the Policy provides a fruitful source of precedent. Attempts by cybersquatters to capitalize on well-known marks have to date been thwarted fairly summarily by many WIPO Panelists.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Panel decisions referred to
Educational
Tertiary Service v. TOEFL (WIPO Case D2000-0044)
Barker, Panelist:
-
1. The Parties
The Complainant
is Singapore Airlines Limited, a corporation under the laws of the Republic
of Singapore with its address at Airline House, 25 Airline Road, Singapore
819829. It
is represented by Mr. Roy Goldbert of Schnader Harrison Segal & Lewis
LLP, Attorneys of Washington DC, U.S.A.
The Respondent
is P&P Servicios de Communicacion S.L., Av. Hospital Militar, 56 Barcelona,
BCN 08023, Spain. The Administrative, Technical, Zone and Billing contact
is Juan Manuel
Burgueno Romero, of Alderete 8, 1-2 Malaga, Spain, Tel: 95 225 2949, Fax:
95 224 1557. The Respondent is not represented by counsel and has filed
no
Response.
2. The Domain Name and Registrar
The domain
name at issue is "Singaporeairlines.com". The domain name is registered
with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia
20170,
United States
of America ("NSI").
3. Procedural History
The Complaint,
submitted by Singapore Airlines Limited was received on June 20, 2000,
(electronic version) and June 22, 2000, (hard copy) by the World Intellectual
Property Organization
Arbitration and Mediation Center ("WIPO Center").
On or about June 22, 2000, a request for Registrar verification was transmitted by the WIPO Center to NSI, requesting it to:
- Confirm that
a copy of the Complaint had been sent to it by the Complainant as required
by the WIPO Supplemental Rules for Uniform Dispute Resolution Policy
("Supplemental
Rules"), paragraph 4(b).
- Confirm that the domain name at issue is registered with NSI.
- Confirm that the person identified as the Respondent is the current registrant of the domain name.
- Provide full
contact details, i.e., postal address(es), telephone number(s), facsimile
number(s), email address(es), available in the Registrars WHOIS database
for the
registrant
of the disputed domain name, the technical contact, the administrative
contact and the billing contact for the domain name.
- Confirm that the Uniform Domain Name Dispute Resolution Policy was in effect.
- Indicate the current status of the domain name.
By email dated June 30, 2000, NSI advised WIPO Center as follows:
- NSI had received a copy of the Complaint from the Complainant.
- NSI is the Registrar of the domain name registrations "Singaporeairlines.com".
- P&P Servicios de Communicacion S.L. is shown as the "current registrant" of the domain name "Singaporeairlines.com".
- Juan Manuel Burgueno Romero is shown as the administrative, technical, zone and billing contact. His telephone and facsimile numbers are as indicated above.
- NSIs 5.0 Service Agreement is in effect.
- The domain name registration "Singaporeairlines.com" is in "Active" status.
NSI has currently
incorporated in its agreements the policy for Uniform Domain Name Dispute
Resolution adopted by the Internet Corporation for Assigned Names and
Numbers ("ICANN").
The advice
from NSI that the domain name in question is still "active", indicates
the Respondent has not requested that the domain name at issue be deleted
from the
domain name
database. The Respondent has not sought to terminate the agreement with
NSI. Accordingly, the Respondent is bound by the provisions of NSIs Domain
Name Dispute
Resolution Policy, i.e., the ICANN policy. The Respondent has not challenged
the jurisdiction of the Panel.
Having verified
that the Complaint satisfied the formal requirements of the Uniform Policy
and the Uniform Rules, the WIPO Center on July 6, 2000, transmitted by
post/courier
and by email a notification of Complaint and Commencement of Administrative
Proceedings to the Respondent. A copy of the Complaint was also emailed
to NSI and ICANN.
The Complainant elected to have its Complaint resolved by a single panel member: it has duly paid the amount required of it to the WIPO Center.
The Respondent
was advised that a Response to the Complaint was required within 20 calendar
days (i.e., by July 25, 2000). The Respondent was also advised that any
Response should
be communicated, in accordance with the Rules, by four sets of hard copy
and by email. The Respondent has filed no Response. A Notice of Default
was
sent by WIPO
Center to the Respondent on July 26, 2000.
On August 17,
2000, the WIPO Center invited the Honorable Sir Ian Barker QC of Auckland,
New Zealand, to serve as Sole Panelist in the case. It transmitted to him
a
statement
of acceptance and requested a declaration of impartiality and independence.
On August 17,
2000, the Honorable Sir Ian Barker QC advised his acceptance and forwarded
to the WIPO Center his statement of impartiality and independence. The
Panelist finds
that the Administrative Panel was properly constituted in accordance with
the Rules and the Supplemental Rules.
On August 21,
2000, WIPO Center forwarded to the Honorable Sir Ian Barker QC by courier
the relevant submissions and the record. These were received by him on
August 25,
2000. In terms of Rule 5(b), in the absence of exceptional circumstances,
the Panel is required to forward its decision by September 4, 2000.
The Panel has
independently determined and agrees with the assessment of WIPO Center
that the Complaint meets the formal requirements of the Rules for Uniform
Domain Name
Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the
Rules") and the Supplemental Rules.
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The Complainant
owns and operates Singapore Airlines, a leading international air carrier,
which operates in 70 cities and 35 countries in Asia, Europe, North America,
Africa and
Australasia. The Complainant has operated its international air services
since 1972, and prides itself on the quality of those services.
The Complainant
owns registered trademark and service mark rights to the mark "Singapore
Airlines" in numerous countries throughout the world, including the United
States and
Spain.
The Complainant
has registered the domain name "singaporeair.com" with NSI as well as domain
names containing "singaporeair" in country codes throughout the world,
e.g., "singaporeair.com.sg"
and "singaporeair.com.de".
The Complainant
uses the "Singapore Airlines" mark to promote and market its aviation services
worldwide through various marketing channels, including websites. The
Panel is able
to take judicial notice of the fact that the mark is distinctive and is
universally associated with the Complainants airline.
The Complainant has not granted any license or other authority to the Respondent to use the mark.
5. Parties Contentions
The Complainant
submits that the only possible conclusion must be that the Respondent registered
a domain name, which is identical to its world-famous registered mark,
"Singapore
Airlines" and is using it in bad faith. The Respondent must have known
of the Complainants mark and the Complainants place in international
aviation. The
Respondent
has no rights or legitimate interest in the disputed domain name. There
can be no plausible explanation for the encapture of the mark by the Respondent.
The Respondent has made no submissions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a complaint
on the basis of the statements and documents submitted in accordance with
the policy, these rules and any rules and principles of law that it deems
applicable".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
h That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
h That the Respondent has no rights or legitimate interests in respect of the domain name; and
h That the domain name has been registered and is being used by the Respondent in bad faith.
The domain
name "Singaporeairlines.com" is obviously identical or confusingly similar
to the Complainants mark. The Panel so decides. The addition of the ".com"
is of no
importance
in arriving at this conclusion.
Likewise, the
Panel decides that the Respondent has no rights or legitimate interests
in the domain name at issue. The Complainant has granted no rights to the
Respondent.
The Respondent has never suggested to the contrary. Nor is there any suggestion
that the Respondent is known by the words contained in the mark.
Paragraph 4(b) of the ICANN Policy 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 complainants 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."
It should be noted that the circumstances of bad faith are not limited to the above.
The Panel considers that the Respondent has registered and used the domain name "Singaporeairlines.com" in bad faith for the following reasons:
(a) The domain
name "Singaporeairlines.com" is so obviously connected with a well-known
airline that its very registration and use by someone with no connection
with the
airline suggests
opportunistic bad faith. Indeed, it is hard to imagine a more blatant exercise
in "cybersquatting".
(b) The present situation is similar to that in Educational Tertiary Service v. TOEFL (WIPO Case D2000-0044) where the learned Panelist said:
"The value
which Respondents seeks to secure from sale of the domain name is based
on the underlying value of Complainants trademark. This value is grounded
in the
right of Complainant
to use its mark to identify itself as a source of goods or services. Respondents
have failed to establish any legitimate domain name-related use for
Complainants
trademark, in a context in which such legitimization might be possible.
The Respondents having failed to present any such justification, the Panel
may
reasonably
infer that Respondents neither intended to make nor has made any legitimate
use of Complainants trademark in connection with the domain name at issue."
Normally, in
cases such as this, there is a "cease and desist" letter from the Complainant
seeking an explanation from the Respondent for the use of the mark.
Sometimes,
a Respondent offers some excuse for the "cybersquatting". Although such
a letter is normally to be encouraged, its absence here is not material
because of
the stark
blatancy of the Respondents registration. The registration of a domain
name obviously relating to the Complainant which is known worldwide is
in itself a pointer
to the Respondents
bad faith. A desire by the Respondent to "cash in" on the Complainants
reputation is the only possible inference.
Accordingly,
for the reasons discussed above, the Panel finds that the domain name "Singaporeairlines.com"
has been registered and is being used by the Respondent in
bad faith.
7. Legal Considerations
Although entitled
to consider principles of law deemed applicable, the Panel finds it unnecessary
to do so. The jurisprudence which is being rapidly developed by a variety
of WIPO Panelists
worldwide under the ICANN Policy provides a fruitful source of precedent.
Cheeky attempts by "cybersquatters" to capitalize on universally known
brands or
trademarks have to date been thwarted fairly summarily by many WIPO Panelists.
8. Decision
For the foregoing reasons, the Panel decides:
(a) that the domain name registered by the Respondent is identical or confusingly similar to the trademark to which the Complainant has rights;
(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the Respondents domain name has been registered and is being used in bad faith.
Accordingly,
pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration
of the domain name "Singaporeairlines.com" be transferred to the Complainant.
Hon
Sir Ian Barker QC
Panelist
Dated:
August 29, 2000