Air New Zealand, Ltd. v. Christand Co., Ltd.
[Indexed as: Air New Zealand v. Christand]
[Indexed as: AIRNEWZEALAND.COM]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No.: D2000-0360
Commenced: 1 May 2000
Judgment: 14 June 2000
Presiding Panelist: D.J. Ryan
Domain name - Domain name dispute resolution policy - Trademark -
Identical - Confusingly similar - Bad faith registration - Bad faith use
- Transfer.
Complainant is a registrant of the trademark, AIR NEW ZEALAND.
Complainant is an international airline carrier having an extensive network
throughout Asia and the Pacific. The mark is registered and known throughout
the world. Respondent registered the domain name, AIRNEWZEALAND.COM.
Respondent appears to be a corporation registered to do business in Hong
Kong, although no evidence was obtained to support this assertion.
In correspondence with Complainant, Respondent claims to be a company that
specializes in domain name registration.
Held, Name Transferred to Complainant.
It is clear that Complainant's mark, AIR NEW ZEALAND and the domain,
AIRNEWZEALAND.COM are identical and at the very least confusingly similar.
Respondent by its own assertion stated that it had no intention of
creating a website that corresponded to the registration of the domain
name at issue. Also, no other evidence existed as to Respondent's
legitimate interest in the domain name. Therefore, it was held that
Respondent had no right or legitimate interest in the domain name.
The domain name was originally registered by First Defense International
("FDI"). Complainant failed to obtain the domain name from FDI having
offered $US 300 for its transfer. Subsequently, FDI transferred the
domain name to Respondent even though it had agreed to transfer the name
to Complainant. This transfer was held to be bad faith registration.
Upon learning of Complainant's intention to acquire the domain name,
Respondent offered to transfer the name to Complainant for valuable consideration
in excess of out of pocket expenses directly related to the registration
of the domain name. This offer to sell the domain name was held to
be bad faith use.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Decision referred to
--
Ryan, Panelist:-
1. The Parties
The Complainants is:
Air New Zealand, Ltd., of Level 21 Quay Tower, 29 Customs Street West,
Auckland, New Zealand. Represented by Breon Gravatt, of Baldwin Shelston
Waters.
The Respondent is:
Christand Co. Ltd, of Greenland Garden 3D, 69 Lyttelton Road, Mid Levels,
Hong Kong Respondent's Administrative Contact is Christine Li.
2. The Domain Name and Registrar
The domain name with which this dispute is concerned is: "airnewzealand.com".
The Registrar with which the domain name is registered is: Network Solutions
Inc., of 505 Huntmar Park Drive, Herndon, Virginia 20170, United States
of America.
3. Procedural History
3.1. The Complaint was submitted electronically and in hard copy to
the World Intellectual Property Organization Arbitration and Mediation
Center (the "WIPO Center") on May 1 and May 4, 2000 respectively.
3.2. On May 3, 2000 the Registrar verified that the current registrant
of the domain name is the Respondent and that Respondent's administrative
contact is:
Christine, Li (LC2218) christine@RESOLINK.COM
Christand Co Ltd
Greenland Garden 3D
69 Lyttelton Rd
Mid Levels
Hong Kong
HK
852-25461942
3.3 On May 4, 2000 all formal requirements for the establishment of
the Complaint were checked by the WIPO Center and found to be in compliance
with the applicable ICANN Rules ("the Rules") for Uniform Domain Name Dispute
Resolution Policy ("the Policy"), and WIPO Supplemental Rules. The Panel
has checked the file and confirms the WIPO Center's finding of proper compliance
with the Rules and establishment of the Complaint.
3.4 Notification of Complainant and Commencement of Administrative Proceeding
was sent to Respondent electronically on May 4, 2000 and by courier on
May 5, 2000.
3.5 The Administrative Proceeding commenced on May 4, 2000.
3.6 The last day for filing a Response by Respondent was May 23, 2000.
No response was filed and Notification of Respondent's Default was sent
to Respondent and Complainant electronically on May 24, 2000 and to Respondent
by courier on May 31, 2000.
3.7 The Panel was appointed on May 31, 2000.
3.8 The Panel proceeds to its determination in accordance with the Uniform
Domain Name Dispute Resolution Policy ("the Policy"), the Rules and the
applicable rules and principles of law on the basis of the Complaint.
4. Factual Background
4.1 Complainant is Air New Zealand, Ltd., an airline operator.
4.2 Complainant is the registered proprietor of a large number of trade
marks in New Zealand and elsewhere, including trade marks consisting of
the words "Air New Zealand" and the device of a koru. A koru is a Maori
totemic symbol. These registrations include the following:
Country Trade Mark
Argentina 2191872
2191873
Australia 727854
Brazil 821222031
821241648
Canada 522336
Chile 546888
China 1193933
European Community 000464628
Hong Kong 1088/96
B8413/1999
14925/1999
Indonesia 407019
407030
Japan 4233868
4245541
Malaysia 98/05396
98/05394
97/04000
98/05395
Mexico 600079
606966
New Zealand 105486
105487
272653
272654
272655
Republic of South Africa 9820971
9820972
Singapore 2007/97
Taiwan 101177
Thailand 329435
Bor8861
The Republic of Korea 46216
49412
46217
United States of America 1722528
75/273395
4.3 Complainant is the registrant of the domain name "airnz.co.nz"
4.4. Complainant is an international airline carrier having an extensive
network throughout Asia and the Pacific, including Hong Kong. It spends
substantial sums promoting its services. Included in its promotions have
been the sponsorship of sporting and cultural events and other publicity
in Hong Kong where it has operated a branch office since 1984.
4.5. Respondent appears, from its name, to be a corporation having an
address in Hong Kong. Searches carried out by Complainant's solicitors
show that Complainant is not registered in Hong Kong either as a Hong Kong
corporation or as a foreign corporation carrying on business in Hong Kong.
4.6. Pursuant to Respondent's service agreement with Registrar, Respondent
is bound to abide by Registrar's current dispute resolution policy. That
policy is currently the Policy.
4.7. Complainant asserts that:
a) the domain name was registered by First Defense International ("FDI").
No information is given as to the legal status of FDI;
b) on becoming aware of the registration of the domain name Complainant
wrote to FDI requesting transfer of the name to it in consideration of
the payment of $US 300;
c) following discussion between Complainant and FDI, FDI agreed to the
transfer but shortly thereafter the name was transferred to Respondent.
No information is given as to the dates or the nature of these discussions
with FDI;
4.8 On 29, 1997 Complainant wrote by e-mail to Respondent demanding
transfer of the domain name to it.
4.9 On September 26, 1997 Respondent replied to Complainant stating
that:
a) it specialized in domain name listing/hosting;
b) the domain name is one which it has registered recently for market
research purposes;
c) it has no present intention to bring up a site under the domain name;
d) it would offer to transfer the domain name for $US 20,000;
4.10 There is no evidence of any further communication between Complainant
and Respondent until March 18, 2000, when Complainant's solicitors wrote
to Respondent demanding transfer of the domain name and offering to pay
Respondent's reasonable costs incurred in registering and maintaining the
domain name.
4.11 Absent reply from Respondent, Complainant's solicitors sent follow
up e-mail on March 28 and March 31 including in the letter a without prejudice
offer to pay $US 1,000 for the transfer. This offer was repeated in a letter
dated April 7, 2000.
4.12 No reply has been received to Complainant's solicitor's letters.
4.13 No reply has been received to communication addressed to Respondent
by the Center by e-mail and by courier and no Response has been filed.
5. Applicable Dispute
5.1 To succeed in their complaint, Complainant must show that each
of the conditions of paragraph 4(a) of the Policy are satisfied, namely
that:
(i) the domain name is identical or confusingly similar to a trade mark
or service mark in which Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the domain
name;
(iii) the domain name has been registered and is being used in bad faith.
Identical or Confusingly Similar Marks
Complainant asserts that the domain name is identical with or confusingly
similar to one or more of the trade marks set out in paragraph 4.2.
5.2.1 The identifying part of the domain name is "airnewzealand".
5.2.2 Complainant's trade mark comprises the words "Air New Zealand"
plus the koru device. The dominant identifying part of Complainant's trade
mark is "Air New Zealand". It is by those words that Complainant and its
trade mark is known and the domain name is formed by running those same
words together.
5.2.3 The Panel finds that the domain name is confusingly similar to
the domain name.
Respondent's Rights or Legitimate Interests
Complainant asserts that Respondent has no right or legitimate interest
in the domain name.
Respondents have not asserted any legitimate right or interest in the
domain name and the file does not suggest that any such right or interest
exists.
5.3.2 The Panel therefore concludes that Respondent has no legitimate
rights or interests.
6. Registration and Use in Bad Faith
6.1 Complainant asserts that Respondent has registered and used the
domain name in bad faith.
6.1.1. The original registration was not made by Respondent but by FDI.
The record fails to show the circumstances of the original registration
of the domain name by FDI or the connection, if any, between FDI and Respondent.
The question arises therefore whether FDI's registration was made in bad
faith and, if so, whether it is necessary to show this.
6.1.2. All that is shown on the record is that FDI registered the domain
name, that it agreed to transfer it to Complainant and that instead it
transferred the same to Respondent. Nevertheless certain facts speak for
themselves. The fact that FDI, without apparent legitimate interest, registered
as its domain name the name of a well known international airline, itself
suggests bad faith. The fact that it subsequently agreed to transfer the
registration to Complainant but transferred to Respondent instead further
suggests a lack of bone fides on the part of FDI in relation to the registration.
The Panel therefore concludes that the registration by FDI was in bad faith.
6.1.3. Irrespective of the original registration by FDI, the transfer
to Respondent required the Registrar to make an entry in its register to
register Complainant as the owner of the domain name. The circumstances
of the transfer and the subsequent conduct of Complainant clearly indicate
that their registration was made in bad faith. The Panel considers, were
it necessary to so decide, that the Policy includes, under registration,
the registration of the transfer.
6.1.4. The Panel therefore finds that the domain name was registered
in bad faith.
6.1.5. Paragraph 4(a)(iii) of the Policy requires not only that the
domain name be registered in bad faith but also that it is being used in
bad faith. Examples of conduct deemed to be evidence of bad faith include,
in paragraph 4(b)(i) of the Policy, circumstances indicating that Respondent
registered or acquired the domain name for the purpose of renting selling
or otherwise transferring the domain name registration to Complainant for
consideration in excess of Respondent's documented out-of-pocket expenses.
6.1.6. Respondent's e-mail to Complainant of September 26, 2000 clearly
indicates that Respondent acquired the domain name for the purpose of selling
it to the Complainant.
6.1.7. The Panel therefore concludes that the domain name is being used
in bad faith.
7. Decision
The Panel therefore concludes and decides that:
(i) the domain name of Respondent is confusingly similar to trade marks
in which Complainant has rights;
(ii) Respondent has no rights or legitimate interest in respect of the
domain name;
(iii) the domain name has been registered and is being used in bad faith;
(iv) the domain name should be transferred to Complainant.
Domain
Name Transferred
