ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution


 
Complainant: CROATIA AIRLINES D.D.
Respondent: KWEN KIJONG
Cases Numbers: AF-0302a;
AF-0302b
Contested Domain Name: AF-0302a: croatiaairlines.com;
AF-0302b: croatiaair.com
Panel Member: Julian D M Lew
 

 

1. Parties and Contested Domain Name

The Complainant is Croatia Airlines d.d., a corporation with address at Savska 41 / Pravna služba, 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

London

25 September 2000

(s) Julian D M Lew

Presiding Panelist