International Air Transport Association v. ASB (Schweiz) a/k/a Park Lane Travel Related Services; Traverse Too a/k/a Park Lane Travel Related Services

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

International Air Transport Association (IATA) v. Traverse Too

and ASB (Schweiz)

Case No. 2000-0192

1. The Parties

A. The Complainant is the International Air Transport Association (hereafter

IATA or Complainant).

IATA is incorporated under Canada law as a not-for-profit corporation, and

its executive offices are located in Geneva, Switzerland with branch offices

in approximately 60 countries around the world.

B. The Respondents are:

(1) for the domain name "iata.com" "Traverse Too", and

(2) for the domain name "iata.net" ASB (Schweiz).

Both are said by Complainant to be affiliated with or closely linked to Park

Lane Travel Related Service.

2. The Domain Names and Registrar

A. The domain names at issue are "iata.com" and "iata.net". IATA already has

the registered domain name "iata.org".

B. The Registrar with which the domain names are registered is Network Solutions,

Inc.

3. Procedural History

A. The complaint was received by the WIPO Arbitration and Mediation Center

(hereafter : the "Center") on March 21, 2000, and e-mail acknowledgment of the

receipt of complaint was sent on March 24, 2000. The same day, a request for

registrar verification was issued and answered by Network Solutions, Inc.

B. On March 27, 2000, the complaint was notified to Respondents and the administrative

proceedings commenced.

C. Respondents did not answer, although the Panel is satisfied that the Center

served notice of the complaint per fax, courier and e-mail. Therefore, on April

21, 2000, Respondents were found to be defaulting.

D. On April 21, 2000, the Center appointed as Sole Panelist Professor François

Dessemontet, who had submitted a Statement of Acceptance and Declaration of

Impartiality and Independence to the Center.

E. The present decision is rendered within the time limit fixed on May 5, 2000.

4. Factual Background

A. IATA is the principal trade association for the world's international airlines.

While already active before the second world war, it was limited to European

airlines until 1939, when Pan-American joined. Its Articles of Association date

from 1945. It owns a U.S. trade mark N° 73-470 320 registered in 1985, comprising

a design of a globe with two wings, the letters IATA and a rounded delineation,

for the international class 42, as well as similar trade marks in various other

countries. IATA also registered the Internet domain name "iata.org" with Network

Solutions, Inc. and operates a fully developed web site under that domain name.

B. Respondents and Park Lane Travel Related Services are defaulting. The only

information available to the Panel has been supplied by Complainant, according

to which Park Lane offers to sell to travel agents e-mail addresses ending in

"@iata.com" or "@iata.net" in exchange for payment of a monthly fee to Park

Lane. This offer is apparent on the home page http://www.iata.com/terms.htm.

The administrative contact for both domain name is Mr. Andrew M. Reichmuth in

Rotkreuz, Canton of Zug, Switzerland, who may be known also as Mr. Andreas Reichmuth

according to Dun & Bradstreet reports.

C. Respondents are bound by the dispute resolution policies adopted by Network

Solutions, Inc. as they requested or maintained the registration of their domain

names once the registrar adopted the ICANN Policy Rules.

5. Parties Contentions

A. Complainant maintains that the domain names "iata.com" and "iata.net" are

identical or confusingly similar to the IATA trade mark, that neither of the

Respondents has a right or a legitimate interest to use such a domain name,

and that they registered the domain names in bad faith and are using them in

bad faith to exploit commercially the IATA trade mark. Respondents further create

a false impression of an affiliation with IATA by stating that IATA official

travel agent may indicate their registration number with IATA and mentioning

in that connection "our" number.

Complainant requests therefore that the domain names be transferred to it.

B. Respondents are defaulting.

6. Discussion and Findings

A. The IATA trademark and logo is certainly a well-known trade mark within

the meaning of Article 16 of the Agreement on Trade Related Aspects of Intellectual

Property (TRIPs). TRIPs extends the Paris Convention provision on the protection

of well-known marks to service marks (such as the complainant's mark) and further

extends the protection of well-known trademarks to cases of dilution by use

for different goods and services where that use is damaging[1].

B. The similarity between the verbal part of the IATA trade marks and the distinctive

part of Respondents' domain names is confusing, the only possible difference

being the top-level domain name. For research engines as well as for individuals

viewing them on the screen, those domain names are identical to the trade mark

and official domain name of Complainant.

C. Respondents do not appear to have any rights or in fact bona fide interests

in the use of a domain name which includes the acronym "iata".

On the contrary, it is a violation of the Swiss Law Against Unfair Competition

of 1986 (Art. 3 [b]) to give false or misleading information on oneself, one's

enterprise, one's trade name, one's wares, works, services, prices, inventories,

sales methods or business.

Thus, to imply a sponsorship or official relation, such e.g. as an authorized

dealership[2], as is implied here with IATA

when no relationship exists, is prohibited by law in the Respondent's country.

Respondents are to be found also lacking in good faith in fact, since IATA is

world-renowned in the field of air travel and its better rights could not possibly

be ignored by Respondents.

D. Respondents appear to have registered the domain names in bad faith and

to use them now in bad faith with the sole purpose of financial gain. They try

to reap profits through the offering to travel agents of subscriptions purporting

to enable them to enjoy the benefit of an "iata.com" or "iata.net" domain name.

In view of the better rights of Complainant, the contentions of Respondents'

web sites in this regard are misleading.

Further, confusion is raised by the use of the domain names "iata.com" and

"iata.net" on the home page. Although the web site mentions that it is "not

the homepage of IATA, the International Air Transport Association", this disclaimer

does not dispel the false impression that there exists a connection with or

a sponsorship by Complainant. Such impression is rooted in the use of the IATA

well known acronym, and in the hyperlink that is proposed to the site "iata.org"

for "IATA training programs, rules and regulations", as well as in the invitation

extended to "Official Travel Agent(s)", which is a well-known category with

air ticketing agencies.

Finally as has been seen, it is also misleading under the Swiss Unfair Competition

Law of 1986 [Art. 3 (b)] to give false information on oneself and one's activities.

This is what Respondents do most generally when creating the false impression

that they are sponsored or endorsed by Complainant, for example when writing

that customers may obtain an "iata.net" e-mail address by using "our

assigned

8-digit IATA-Numbers" (emphasis added), although only IATA is assigning those

numbers.

Therefore, not only the choice of domain names, but the text of the home page

to be reached under those names is proof enough that bad faith presided over

the choice and the use of the IATA element of the domain names, with the intent

to mislead and to divert travel agents and the general public from the truly

authorized IATA site.

7. Decision

The Registrar is hereby required to transfer the domain names "iata.com" and

"iata.net" to the Complainant.

François Dessemontet

Sole Panelist

May 4, 2000

Footnotes:

1. See W.R. Cornish, Intellectual Property,

4th ed. London 1999, p. 606.

2. See Federal Tribunal Decision of 24 March

1988, Arrêts du Tribunal fédéral / Bundesgerichtsentscheide 114 II 104.