Air Mauritius Ltd v. Anne c/o Anne
Claim Number: FA1107001398938
Complainant is Air Mauritius Ltd (“Complainant”), represented by Alias Encore, Inc., California, USA. Respondent is Anne c/o Anne (“Respondent”), represented by Anne Courtin, Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <airmauritius.mobi> and <air-mauritius.mobi>, registered with Melbourne IT Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Héctor A. Manoff as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 15, 2011; the National Arbitration Forum received payment on July 15, 2011.
On July 25, 2011, Melbourne IT Ltd confirmed by e-mail to the National Arbitration Forum that the <airmauritius.mobi> and <air-mauritius.mobi> domain names are registered with Melbourne IT Ltd and that Respondent is the current registrant of the names. Melbourne IT Ltd has verified that Respondent is bound by the Melbourne IT Ltd registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 17, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@airmauritius.mobi, and postmaster@air-mauritius.mobi. Also on July 28, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on August 1, 2011.
Moreover, a timely Additional Submission from Complainant was received on August 8, 2011.
On August 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Héctor A. Manoff as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is an international airline carrier incorporated in 1967, which
flies direct to more than 25 European, Asian, Australian, African and regional destinations.
2. Complainant argues that it has rights in the AIR MAURITIUS mark based upon trademark registrations in the U.S., U.K. and France, dating back to 1995.
3. Complainant also argues that Respondent’s disputed domain names are confusingly similar to its AIR MAURITIUS mark, since they include the entire mark while merely adding the generic top-level domain (“gTLD”) “.mobi” to both disputed domain names and a hyphen to the <air-mauritius.mobi> domain name.
4. Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because it has not been commonly known by them, nor is it sponsored by or affiliated with Complainant in any way. Moreover, it has no permission to use Complainant’s mark in a domain name and has failed to make an active use of the Disputed Domain Names.
5. Respondent registered the Disputed Domain Names no earlier than November of 2006, which is significantly after Complainant’s registration of AIRMAURITIUS.COM on November 28, 1996, and significantly after Complainant filed for registration of their relevant Mark with the USPTO and also significantly after Complainant’s first use in commerce of the AIR MAURITIUS Mark in 1967.
6. The domain name should be considered as having been registered and being used in bad faith because: a) Complainant and the AIR MAURITIUS brand are known internationally; b) Respondent’s use of the Disputed Domain Names does not resolve to an active website.
B. Respondent
1. Respondent alleges trademark rights on the name airmauritius.mobi.
2. Respondent further contends that it is known in Australia under the trading name of airmauritius.mobi and possesses an ABN (Australian Business Number).
3. Respondent suggests that Complainant’s alleged marks only cover the logo, since “air” is generic and “Mauritius” is a geodomain.
4. Respondent contends that it has advertised its domain name airmauritius.mobi with Google, Yahoo etc. in 2009, but ceased development until 2012/2013, when smart phones will be widely available.
5. Respondent denies that Complainant have rights on the disputed domain names since they are identical to its trademark.
6. <airmauritius.mobi> was purchased for the sole purpose of advertising the Respondent’s website indianoceantourism.com, which caters totally to the Mauritius Tourism market. Airmauritius.mobi is to guide tourists to areas of interest giving directions using GPS, Maps (Google) and KML files via internet enabled mobile phones.
7. Respondent denies bad faith because it purchased the domain name at an auction and, when Complainant made an offer for the disputed domain name, it refused to counter offer.
8. Respondent requests the Panel to make a finding of reverse Domain Name hijacking since, in Respondent’s opinion, Air Mauritius Ltd was fully aware of its Trademark of airmauritius.mobi as well as its Trading Name/ABN.
C. Additional Submissions
Complainant
1. Respondent’s trademark registration does not make the disputed domain names less confusingly similar to Complainant’s registered mark AIR MAURITIUS.
2. Respondent claims that it engaged in demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, but provided insufficient proof.
3. Respondent will use the disputed domain names for the same services that Complainant offers under the AIR MAURITIUS mark. The registration and use of the disputed domain names to interrupt Complainant’s business and essentially cause confusion among internet users, does not constitute a legitimate and fair use under the Policy.
4. Respondent has not been commonly known as AIR MAURITIUS and no proof has been provided that Respondent has conducted business under the name “airmauritius.mobi.”.
5. The disputed domain names were registered in bad faith, since Respondent filed for a trademark on the 18th of April, 2011, after being in contact with Complainant and after Complainant’s inquiry on the status of a solution for the Disputed Domain Name.
6. Since Respondent did not provide a certificate of registration, Complainant contends that the Trademark has not been issued and therefore carries no rights.
7. Respondent was aware of Complainant and registered the Disputed Domain Names in order to capitalize on Complainant’s Mark and increase traffic for Respondent’s own site <IndianOceanTourism.com>.
8. Complainant quotes blog entries from Respondent’s website and contends that the blog entries indicate a great distain for the man charged with running Air Mauritius.
9. Respondent’s attempt to avoid evidence of bad faith by declining to sell the domain names is overshadowed by the Respondent’s behavior.
Complainant is the national carrier of the island Mauritius and flies direct to more than 25 European, Asian, Australian, African and regional destinations. It was incorporated in 1967 and holds trademark registrations for the mark AIR MAURITIUS in the US, UK and France, the oldest dating back to 1995.
Respondent resides in Australia and provides tourism services through the website indianoceantourism.com. She registered the disputed domain names <airmauritius.mobi> and <air-mauritius.mobi> in 2006 to offer tourist information to those traveling to Mauritius, although she is not presently using them.
Paragraph 15(a) of the Rules instructs this 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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds Complainant’s registrations of the AIR MAURITIUS mark with the USPTO, UKIPO (UK) and INPI (FR) sufficient under Policy ¶ 4(a)(i) to establish rights in the mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s <airmauritius.mobi> and <air-mauritius.mobi> domain names are confusingly similar to Complainant’s AIR MAURITIUS mark. The disputed domain names include the entire mark while merely adding the generic top-level domain (“gTLD”) “.mobi” to both disputed domain names and a hyphen to the <air-mauritius.mobi> domain name. The Panel finds that the addition of a gTLD, both alone and in conjunction with a hyphen, fail to differentiate the disputed domain names from Complainant’s mark, making them identical under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”); see also Starkey v. Bradley, FA 874575 (Nat. Arb. Forum Feb. 12, 2007) (“The suffix .mobi should be treated the same way as .com and should be ignored when comparing the mark and the disputed domain name.”).
While Respondent contends that the <airmauritius.mobi> and <air-mauritius.mobi> domain names are comprised of common and descriptive terms and as such cannot be found to be identical to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the marks and whether the disputed domain names are identical or confusingly similar to Complainant’s mark. See Precious Puppies of Plorida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). Here, the Panel finds that Complainant has made a prima facie case.
Complainant contends that Respondent is not commonly known by the disputed domain names. The WHOIS information identifies the registrant of the disputed domain names as “Anne c/o Anne.”
Respondent maintains that it is commonly known by the disputed domain names and submits a screen print from the Australian Business Register (“ABR”) indicating that “airmauritius.mobi” was accepted by the ABR as the trading name for the entity of Jean J. Courtin since July 1, 2000.
As regards Respondent’s trade name airmauritius.mobi, this Panel notes that it does not prove that Respondent was awarded the airmauritius.mobi trade name in 2000, but only that Mr. Jean Courtin obtained an Australian Business Number in 2000. Furthermore, no proof has been provided that Respondent has conducted business under the name “airmauritius.mobi.”.
Therefore, the Panel finds that that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant also contends that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain names. Complainant states that the disputed domain names resolve to inactive websites offering no content whatsoever.
Respondent argues that it has piloted the disputed domain names in 2009, but ceased to use them shortly after because they were not successful at that time. She further contends that she will resume its use by 2012/2013, since she was advised that, by that time, smart phones will be widely available, thus, making it more likely that the sites will be successful. However, as Complainant points out, Respondent has barely provided evidence of the alleged use.
Therefore, this Panel finds that failing to make an active use of the disputed domain names does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Under Policy ¶ 4(a)(i), Complainant argues that it is not required to follow the examples set forth in Policy ¶ 4(b) to prove bad faith on the part of Respondent, but rather that it can utilize the entire situation surrounding the registration and use of the disputed domain name to prove bad faith. The Panel concurs with Complainant and will allow it to prove bad faith using the totality of the circumstances, if it is able to do so under Policy ¶ 4(a)(iii). See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Air transportation requires a costly infrastructure and maintenance. Thus, there are few airlines in the world. Moreover, even fewer airlines fly internationally.
According to Respondent, it registered the disputed domain names to offer tourist information to those traveling to Mauritius, and it contends that it is a non-competitive use in relation to Complainant. The Panel disagrees, since air transportation service is related to tourism and both parties focus their service on Mauritius. Besides, Respondent provides no evidence of the actual use of the disputed domain names.
Moreover, by the time Respondent registered the disputed domain names, Complainant had been using the mark for almost four decades (which was not contested by Respondent), and it had already registered its AIR MAURITIUS mark in the U.S., UK and France. Conversely, Respondent filed for its trademark application for airmauritius.mobi in April 2011, after having been contacted by Complainant.
According to the copies of Respondent’s blog entries submitted by Complainant, there is evidence that Respondent was fully aware of the existence of Complaint’s company and trademark. Although these entries are dated in 2009, Respondent could not have ignored the existence of Complainant’s company and trademark when it registered the domain names since they both are in the same business.
This Panel finds that the selection of domain names which entirely incorporate the name of an airline could not have been done in good faith. See Singapore Airlines Limited v. P & P Servicios de Communicacion, D2000-0643 (WIPO August 29, 2000) (holding that "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….).
Complainant also maintains that Respondent’s failure to make an active use of the disputed domain names constitutes bad faith registration and use. Previous panels have determined that failing to use a disputed domain name can satisfy the requirement of bad faith registration and use under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use). Therefore, the Panel finds that Respondent’s failure to make an active use constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <airmauritius.mobi> and <air-mauritius.mobi> domain names, of its rights to use the disputed domain names.
Since Complainant has satisfied all of the elements of Policy ¶ 4(a), the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <airmauritius.mobi> and <air-mauritius.mobi> domain names be TRANSFERRED from Respondent to Complainant.
Héctor A. Manoff, Panelist
Dated: August 17, 2011
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