Croatia Airlines d.d. v. Modern Empire Internet Ltd.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Croatia Airlines d.d. v. Modern Empire Internet Ltd.

Case No. D2003-0455

1. The Parties

The Complainant is Croatia Airlines d.d. of Zagreb, Croatia, represented by Hrvoje Miladin of Croatia.

The Respondent is Modern Empire Internet Ltd. of Hong Kong, SAR of China.

2. The Domain Name and Registrar

The disputed domain name <croatiaairlines.com> is registered with NamesDirect.com.

3. Procedural History

The Complaint

was filed

with the

WIPO Arbitration

and Mediation

Center (the

"Center")

on June 13, 2003.

On June 16, 2003,

the Center

transmitted

by email

to NamesDirect.com

a request

for registrar

verification

in connection

with the

domain name

at issue.

On June 16, 2003,

NamesDirect.com

transmitted

by email

to the Center

its verification

response

confirming

that the

Respondent

is listed

as the registrant

and providing

the contact

details

for the

administrative,

billing,

and technical

contact.

In response

to a notification

by the Center

that the

Complaint

was administratively

deficient,

the Complainant

filed an

amendment

to the Complaint

on June 24, 2003.

The Center

verified

that the

Complaint

together

with the

amendment

to the Complaint

satisfied

the formal

requirements

of the Uniform

Domain Name

Dispute

Resolution

Policy (the

"Policy"),

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 June 25, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2003.

The Center appointed Hub J. Harmeling as the sole panelist in this matter on August 6, 2003. 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

Given the absence of a response, the following facts are undisputed:

The Complainant, Croatia Airlines d.d., is the Croatian national air carrier with ten years experience in the air carriage business and has been a member of the International Air Transport Association since 1992. The company has been registered in the Commercial court register of Zagreb, Croatia, since 1989 and has its principal place of business in Zagreb.

The Complainant is the owner of the trademark "CROATIA AIRLINES" for classes 8 (knives, forks and spoons), 16 (paper, cardboard, printed products) and 21 (flatware and cutlery not of precious metal). Complainant has also registered the service mark "CROATIA AIRLINES" with the State Intellectual Property Office in Croatia for classes 35 (advertising and marketing, business management) 39 (air transportation) and 42 (tourism) of the International Classification of Goods and Services.

The only information available about the Respondent Modern Empire Internet Ltd. is that this company is based in Hong Kong. Respondent’s website, which can be accessed at "www.croatiaairlines.com" offers various goods and services including airline tickets.

The disputed domain name has previously been registered and used by the Complainant, but this registration expired. The Complainant points out this was not its intention. On May 12, 2003, the Respondent registered the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant relies on the above factual background and contends the following:

• Complainant is the Croatian national air carrier operating for ten years and owner of both the trade and service mark "CROATIA AIRLINES". The disputed domain name <croatiaairlines.com> is identical to Complainant’s registered marks and hence constitutes a ground for confusion amongst (potential) customers.

• The Respondent has no rights or legitimate interests in respect of the disputed domain name since Respondent knowingly registered the disputed domain violating Complainant’s rights as a legitimate owner of the trade and service mark "CROATIA AIRLINES".

• The Respondent has registered and is using the disputed domain name in bad faith as it must have known or at least should have known that the disputed domain name was intended to be used by Complainant, which is the airline company known by this name. This is supported by the fact that Respondent is involved in the sale of airline tickets itself and must have known about Complainant’s business activities and scope of services. By using this domain name the Respondent tries to attract Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s trade and service mark, with intent for commercial gain. The deliberate deception of consumers tarnishes Complainant’s trade and service mark.

Based on the above the Complainant contends that the three elements of the Paragraph 4(a) of the Policy have been met and requests the transfer of the disputed domain name <croatiaairlines.com>.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Panel

notes that

the Respondent

has not

filed a

response.

However,

the Panel

finds that

this does

not mean

that the

remedies

requested

should automatically

be awarded.

The Panel

will have

to establish

whether

the Complainant’s

prima

facie

case meets

the requirements

of paragraph

4 of the

Policy (Creative

Hairdressers,

Inc. v.

Dynamic

Progressive

Technologies,

Inc.,

NAF Case

No. FA00114772.

Also:

VeriSign

Inc. v.

VeneSign

C.A.,

WIPO

Case No.

D2000-0303).

Paragraph 4(a) of the ICANN Policy requires the Complainant to prove each of the following elements in order to obtain relief.

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

(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and

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

These elements will be examined in turn below.

A. Identical or Confusingly Similar

The only

difference

between

the disputed

domain name

<croatiaairlines.com>

and Complainant’s

trade and

service

mark "CROATIA

AIRLINES"

lies in

the addition

of ".com".

The Panel

points out

that it

is generally

accepted

that the

addition

of ".com"

does not

take away

the identicality

or confusing

similarity.

See amongst

others:

VAT Holdings

v. Vat.com,

WIPO

Case No.

D2000-0607;

Western

Bonded Products

dba Flex

Foam v.

Webmaster,

Case No.

FA0095286.

The Panel therefore concludes that the disputed domain name is confusingly similar to Complainant’s "CROATIA AIRLINES" trade and service mark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that can be brought forward by the Respondent in order to demonstrate its rights or legitimate interests. Such circumstances can be:

• (demonstrable preparations to) use the domain name in connection with a bona fide offering of goods or services prior to the dispute;

• an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or

• legitimate non-commercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

The Panel

notes that

Complainant

bears the

"general

burden of

proof"

under paragraph

4(a)(ii)

of the Policy,

which burden

shifts to

the Respondent

once Complainant

makes a

prima

facie

showing

that the

Respondent

lacks rights

or legitimate

interests.

See:

Neusiedler

Aktiengesellschaft

v. Kulkarni,

WIPO

Case No.

D2000-1769;

see also

Dow Jones

& Company

and Dow

Jones LP

v. The Hephzibah

Intro-Net

Project

Limited,

WIPO

Case No.

D2000-0704.

Since it

is difficult

to prove

a negative

(i.e. that

Respondent

lacks any

rights or

legitimate

interests

in the mark)

– especially

where the

Respondent,

rather than

the Complainant,

would be

best placed

to have

specific

knowledge

of such

rights or

interests

– and since

Paragraph

4(c) describes

how a Respondent

can demonstrate

rights and

legitimate

interests,

a Complainant’s

burden of

proof on

this element

is light

(See e.g.:

De Agostini

S.p.A. v.

Marco Cialone,

WIPO

Case No.

DTV2002-0005

<deagostini.tv>).

Hence, Complainant

must make

at least

a prima

facie

showing

that Respondent

has no rights

or legitimate

interests

in the mark.

After Complainant

has met

its initial

burden of

proof, if

Respondent

fails to

submit a

response

Complainant

will be

deemed to

have satisfied

Paragraph

4 (a) ii

of the Policy.

In this case the Panel finds that Complainant has indeed made a prima facie showing that Respondent does not have rights or legitimate interests in the domain name within the meaning of Paragraph 4(a) of the Policy.

This finding is based on the following, non-disputed, circumstances brought forward by Complainant.

• Complainant has no relationship whatsoever with Respondent and has never authorized Respondent to use the domain name <croatiaairlines.com> or any other domain name.

• It can be assumed that Complainant’s trade and service mark are known, as Complainant is the Croatian national air carrier and has been in the business for a considerable number of years.

• There is no indication in the file that Respondent is known under the disputed domain name.

•

Use of a

domain name

that is

identical

or confusingly

similar

to a trademark

that applies

to goods

sold by

a Respondent

is not a

bona fide

use if the

domain name

serves as

a "bait"

to attract

customers

to Respondent’s

website,

rather than

merely as

a descriptor

of the Respondent’s

products

(see e.g.

Adobe

Systems

Incorporated

v. Domains

OZ,

WIPO

Case No

D2000-0057,

<adobeacrobat.com>

and <acrobatreader.com>).

•

The disputed

domain name

is primarily

descriptive

of Complainant’s

services

as it incorporates

Complainant’s

trade and

service

mark. The

Panel finds

that the

fact that

the domain

name <croatiaairlines.com>

directs

to a site

through

which among

others airline

tickets

can be purchased,

does not

mean that

the domain

name is

descriptive

of Respondent’s

products.

This is

especially

so as the

file mentions

that Respondent’s

website

offers other

products

and services

as well

(see e.g.

Koppers

Chocolate

Specialty

Co. Inc.

v. Seymour

Leonard,

WIPO

Case No

D2001-0822,

<kopperschocolates.com>).

Hence, Respondent’s

use of the

disputed

domain name

appears

to be merely

intended

to divert

(potential)

customers

to Respondent’s

website

and cannot

be considered

a bona fide

offering

of goods

and services.

Given these circumstances the Panel finds that Paragraph 4(a)(ii) of the Policy has prima facie been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. It states among others that sufficient to support a finding of bad faith is the circumstance that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 website or location or of a product or service on the website or location. See also G.D. Searle & Co. v. Celebrex Drugstore, NAF Case No. FA00123933.

The Panel is of the opinion that Respondent must have been aware of Complainant’s trademark rights at the time of registration of the disputed domain name, the more since Respondent appears to have developed activities in the same field as Complainant.

Accordingly, the Panel considers it prima facie established, in the absence of proof otherwise, that Respondent has in fact knowingly incorporated Complainant’s trade and service mark to attract Internet users by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website with the intent of commercial gain. Moreover, the fact that Respondent also sells airline tickets and is thus likely to benefit of diverting (potential) customers of Complainant to its own website supports the Panel in this opinion.

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 <croatiaairlines.com> be transferred to the Complainant.

Hub J. Harmeling

Sole Panelist

Dated: August 21, 2003