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Air Deccan v. Premium Domain [2005] GENDND 1941 (15 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Air Deccan v. Premium Domain

Case No. D2005-0895

1. The Parties

The Complainant is Air Deccan, Bangalore, India, represented by Meghna Mishra, India.

The Respondent is Premium Domain, London, represented by Intellisys India Ltd, India.

2. The Domain Name and Registrar

The disputed domain name <airdeccan.com> is registered with BulkRegister.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2005. On August 22, 2005, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On August 23, 2005, BulkRegister.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. A further request was sent by the Center for details as the Registrant was shown as “Unlisted- Whois.com Protection service”, for which the Registrar sent the details of the Registrant’s contact address.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 13, 2005. 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 September 20, 2005. An extension of time for filing the Response was sought for by the Respondent, the Center set the due date for Response on October 20, 2005. The Response was filed with the Center on October 20, 2005.

The Center appointed Harini Narayanswamy as the Sole Panelist in this matter on November 1, 2005. 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

The Complainant, Air Deccan is India’s first low cost airline, which presently operates several flights connecting various destinations in India.

The Complainant uses “AIR DECCAN” as its company name and as its trademark. An extensive assortment of letters, correspondence, literature, promotions, advertisements, flight schedules and other documents annexed to the Complaint feature this name and bears testimony to this fact.

The Respondent is Premium Domain of London, United Kingdom and has mentioned its contact address is in Mumbai, India, in the Response. The Respondent is the registrant of the disputed domain name <airdeccan.com>, which was registered on November 21, 2002.

5. Parties’ Contentions

A. Complainant

It is the contention of the Complainant, that being India’s first low fare, no frill airline which pioneered the concept of e-ticketing in India, it seeks to make air travel “affordable, reliable and accessible to the common man”.

The Complainant submits that the domain name <airdeccan.com> is identical to its trademark in which it has common law rights, that the Respondent has no right or legitimate interests in the domain name and that the domain name was registered and used in bad faith.

The following contentions made by the Complainant are supported by documents.

The Complainant is a unit of Deccan Aviation Limited, which was incorporated in 1995. The certificate of Incorporation along with the Memorandum and Articles of Association of its Parent Company Deccan Aviation has been filed with the Complaint.

The Complainant clearly mentions that although its services were started only from August 2003, the name AIR DECCAN was conceptualized sometime in October 2002. A letter written on its letterhead to this effect, along with cuttings of newspaper coverage of the launch of the airline in the months of November 2002 and December 2002, has been adduced as evidence.

Trademark applications filed by the Complainant under class 39, dated February 22, 2005, states that the mark has been used by the Complainant for the past sixteen months.

The Complainant’s Annual Report in the year 2003-2004, shows a turnover of Rupees (INR) 314 million. Its expenditure in advertising and promotion is shown as Rupees (INR) 29.42 Lakhs (One hundred thousand) for the period 2003-2004 and Rupees (INR) 95.20 Lakhs, for the period 2004-2005. A significant collection of advertisements and media reports are filed, covering the period November 2002 to March 2005.

The Complainant claims it is widely known and identified by its trade name ‘AIR DECCAN’, and has filed copies of correspondence with government agencies, banks and IATA showing use of this name.

The Complainant states it has hosted a website “www.airdeccan.net” to facilitate worldwide online purchase of its tickets round the clock. These facilities maintained by the Complainant and its low fares have attracted overseas consumers and the Complainant claims international awareness of its services.

It is the contention of the Complainant that, its customers are being diverted, the people who visit the website of the Respondent are actually looking for the Complainant’s online facilities. The public assumes that the domain name and website at “www.airdeccan.com” is that of the Complainants. As the Respondent is not a licensee of the Complainant or authorized by the Complainant to use its mark, such confusion constitutes bad faith registration and use of the disputed domain name.

The disputed Domain Name has been offered for sale, states the Complainant and furnishes as proof, a print out of the webpage. In November 2004, the Complainant states, it was contacted by an entity called Brand Protect Services and was informed that the domain name <airdeccan.com> is available for sale at a price of 10,000 United States dollars. When the Complainant contacted “Brand Protect” recently, Brand Protect replied to the Complainant stating that the domain name owner was asking for a sum of 250,000 United States dollars for the domain name.

The Complainant further states that the Respondent’s name is not Air Deccan, neither does the Respondent use the trademark AIR DECCAN in commerce in relation to goods and services, but uses the domain name only to link to various other competitors travel websites, which misleads and diverts consumers looking for the Complainant’s website. The web traffic ranking from “Alexa.com” showing the traffic statistics for <airdeccan.com> is filed along with the Complaint.

The Complainant claims long, consistent use of the name Air Deccan in commerce which has giving it exclusive proprietary rights in the trade name and the trademark AIR DECCAN, and rights to the identical domain name. The Complainant relies on two UDRP decisions, Gateway Inc v. Bellgr, Inc.,WIPO Case No. D2000-0129 and Gallerina v. Mark Wilmhurst, WIPO Case No. D2000–0730, and requests for transfer of domain name.

B. Respondent

The Respondent asserts that it has registered the domain name on November 21, 2002 which is prior to the launch of the services of the Complainant in August 2003. A copy of the Whois printout of the disputed domain name has been annexed to the Response. The Respondent repudiates the contention of the Complainant that the publicity during the Complainants launch in India has relevance as the Respondent is based in United Kingdom.

The Respondent further states that the Complainant has registered its domain name in the ‘.net’ TLD only on April 10, 2003, five months after the Respondents domain name registration, a print out of the Whois report for the Complainant’s domain name <airdeccan.net> and the Internet archive for the domain name reveals that it was launched in August 2003, both documents are furnished along with the Response to demonstrate that the Respondent’s domain name was registered prior to that of the Complainant’s domain name.

The Respondent states that there never was and does not exist even today a trademark for the term “Air Deccan”, for the reason that the Complainants adoption of the mark began only from August 2003 and the trademark application were filed as an ‘intent to use’ application on February 22, 2005, and moreover the filings are in India and not the United Kingdom. The Respondent relies on UDRP case Front Range Internet v. David Murphy, NAF Claim No FA 0302000145231.

The Response focuses on the fact that the Complainant’s trademarks are not yet registered and contends that trademark applications in India in 2005 has no relevance to a domain name registered in the United Kingdom two and a half years ago and that filing for trademark registration in February 2005 does not tantamount to owning a registered trademark.

The Respondent states that “conceptualization of a business name / trademark holds no legal basis unless it is substantiated by documentary evidence”. The Respondent states that a letter given by the Complainant on its own letter head, that it has coined and adopted the name “Air Deccan”, has no legal standing, as the letter has been issued on the basis of records, unless those records are produced.

The Respondent disputes the Complainant’s claim of long and consistent use of the mark AIR DECCAN and states that the turnover of the Complainant, its media expenditure, advertisements and correspondence with government authorities have no bearing on this case. Further the Certificate of Incorporation and the Memorandum and Articles of Association of Deccan Aviation do not mention the words “Air Deccan” even once.

The Respondent further states that the Complainant has no right in the name “Air Deccan” as it is coined by using two generic words. To demonstrate that his domain name is derived from a generic term “Deccan”, a copy of Dictionary.com results is furnished. The dictionary meaning for “Deccan” is given as “a plateau of south central India between the Eastern Ghats and the Western Ghats. The name is also used for the entire Indian peninsula south of the Narmada River”.

The Respondent further claims that its use of the term Air Deccan in the disputed domain name is a combination of two generic words and not a proprietary term as claimed by the Complainant. Many corporate entities in India use the term “Deccan” in their corporate names, examples cited are ‘Deccan Herald’ and ‘Deccan Chronicle’. A Googol search for the word ‘Deccan’ according to the Respondent, returns 3.7 million hits.

The Respondent refutes the Complainant’s claim of long and consistent use, and the Complainant’s claim of exclusive proprietary rights as “absolutely baseless”, as the Complainant’s do not possess a trademark registration certificate, the application for which was filed only in February 2005.

The Respondent’s explanation for registering the domain name, is that he planned to start a website in November 2002 for selling travel services on the Internet. Due to financial difficulties, the Respondent states he has been unable to invest the money required to start such a website. He uses the free domain parking provided by Sedo, and refers to the disclaimer posted by Sedo. Which states “Reference to any specific service or trademark is not controlled by Sedo or domain owner and does not constitute or imply its association, endorsement or recommendation”.

The Respondent adds that the domain name was not deliberately offered for sale or auction. The domain name is parked at Sedo which has a “For sale” box that comes with the Sedo parking page. This enables any visitor to make an offer on any parked domain. The Respondent explains that it wished to keep all its options open with regards to the domain name till such time that it could gather the funds required for creating a website on the said domain.

The Respondent denies that it contacted the Complainant directly or having demanded any sum of money at any time for the domain name. The correspondence mentioned in the Complaint has been made with an independent third party broker. The Respondent states that it is not liable for the correspondence which it has not authorized or carried out. “The Complainant’s (sic) being contacted by any other entity other than the Respondent is of no relevance to this case” and further adds “Buying a domain name and not using it does not necessarily amount to cybersquatting”.

The Respondent states he has ‘no intention of disrupting anybody’s business’, and refers to the provisions under paragraph 4(a) of the Policy reiterating the same arguments mentioned above.

The Respondent claims that the Complainant is attempting a reverse hijack of the Respondents domain name and requests that the Complaint should be denied.

6. Discussion and Findings

On the basis of the submissions made and evidence adduced by the Parties under the provisions of the Policy, the Panel’s detailed findings are as follows:

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The term ‘rights’ in Paragraph 4(a)(i) refers to rights acquired by usage and reputation or by registration.

The Complainant has demonstrated substantial use of the name “AIR DECCAN” showing that it has an extensive recognition and that it is a well known airline. It has demonstrated considerable use of its trade name in commerce, indicating that the name has acquired secondary meaning which entitles the Complainant to claim a common law right in the mark. On the basis of all the evidence adduced by the Complainant, the Panel finds that the Complainant has Common law rights in the mark.

Several UDRP decisions have held that the Policy does not require a trademark to be registered for a Complainant to make a claim under the Policy. See, Consitex S.A. v. Mr. Hugo Bazzo, WIPO Case No. D2003-0520, Savino Del Bene Inc. v. Graziano Innocenti Gennari, WIPO Case No. D2000-1133, Adobe Systems v. Domain OZ, WIPO Case No. D2000-0057, Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset.

In a recent UDRP case involving an Indian Company, SBI Cards and Payment Services Private Limited v. Domain Active Pty Ltd., WIPO Case No. D2005-0271 it was observed.

“The name SBI CARD should be regarded as protected by common law in India following the approach of other common law countries. The first criteria for a common law trademark may be identified as goodwill or reputation attached to the goods or services, which is associated in the mind of the purchasing public with a particular business.1 See W.R. Cornish. Intellectual Property: Patents, Copyright, Trademarks and Allied Rights. Fourth Edition, Sweet and Maxwell, 1999, p. 619-651.”

The Panel finds that the domain name <airdeccan.com> is identical to the mark AIR DECCAN in which the Complainant has rights.

B. Rights or Legitimate Interests

Under Paragraph 4(c) of the Policy, the Respondent can demonstrate its rights or legitimate interests in the domain name for the purposes of Paragraph 4(a)(ii), if any of the following, among other circumstances are found by the Panel to be proved, based on an evaluation of all evidence:

(i) Showing that, before any notice of the dispute, the Respondent’s use or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, or

(ii) The Respondent as an individual or business has been commonly known by the domain name, or

(iii) Demonstrate legitimate non commercial or fair use of the domain name, which does not misleadingly divert consumers or tarnish the trademark or service mark at issue.

The Respondent has not demonstrated either in the Response or any documents filed along with the Response that it satisfies any of these criteria or establish any bona fide use of the domain name.

On viewing the webpage put up by Respondent which uses the disputed domain name <airdeccan.com>, the Panel finds that it consists of sponsored links to other pages. The heading mentions;

“For Tour India Travel Air India Tickets Cheap Flights try these sponsored links:”

There is another box on the page which reads “Related Links”, which consists of several links with misleading topics such as “Jobs in Air Deccan”, “Cabin Crew”, “Flight bookings”, “Flight Schedules”. The choice of these topics, may deceive or mislead Internet users to believe that the domain name is affiliated or in some way connected to the Complainant.

Clicking on the link “Jobs in Air Deccan” are displayed links to other sites like “hot IT Jobs” at “www.Jobs ahead.com” or “www.naukri.com”. The Respondent has parked the domain name at a parking page called Sedo. Prior WIPO UDRP cases have found that using pay per click sites to park domain names that are misleading and similar to a trademark to promote competing products or services cannot be considered a bona fide offering of goods and services within the meaning of paragraph 4(c)(i) of the Policy. Other airlines, have encountered similar misuse of their trade names. See Southwest Airlines Co. v. Cattitude a/k/a LJ Gehman, WIPO Case No. D2005-0410 and Société Air France v. Richard J., WIPO Case No. D2005-0821.

Regarding the Respondents assertion that he has a legitimate right to register a domain name using generic terms, the Panels observations in Libro AG v. NA Global Link Limited, WIPO Case No. D2000-0186 are pertinent and quoted here:

“The question to be answered by the Panelist is whether the mere registration of a generic name without making preparations to use the domain name for the bona fide offering of goods or services is sufficient to demonstrate the rights or legitimate interests required by Paragraph 4(a).

Respondent has not provided any evidence of facts that indicate that it has made preparations to use the domain name for the alleged purpose. It is clear from the record that the domain name is currently used to redirect visitors to a website at ‘restaurant.com’. There is no evidence such as business plans, correspondence, reports or other forms of evidence before the Panelist that show that Respondent is engaged in any activities to use the domain name “libro.com” for the bona fide offering of goods or services.

The Panel finds that the mere speculative idea for a bona fide business application of a generic domain name does not fall within any of the circumstances listed under Paragraph 4(a) UDRP as evidence of rights or legitimate interests.

While in principle the registrations of descriptive names are perfectly legal in most countries and may constitute considerable value, the mere speculation in generic domain names without showing any demonstrable evidence of plans for the bona fide use is not sufficient to prove legitimate interest in a domain name. Speculation itself is not recognized under the UDRP as a legitimate interest and the UDRP should not be interpreted to hold that mere speculation in domain names is a legitimate interest.”

The Respondent has not shown any documents of bona fide use predating the Complainants adoption and use of the name, indeed the Respondent has shown no bona fide use of the domain name. The Respondent is not known by the name Air Deccan, nor has the Respondent demonstrated that it has made legitimate non commercial use which does not mislead or divert Internet users from the trademark at issue. The Respondent in the Response provides no information or details regarding the Respondent or its business activities.

The Panel accordingly finds that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

It is clear that the “www.airdeccan.com” website put up by the Respondent is largely dedicated to Indian Air travel and the airline business pertaining to Indian travels. The obvious inference is that the Respondent is aware of developments in the Airline Industry in India and keeps track of any developments in this area of commerce. It is reasonable to infer that the Respondent was aware of the Complainant and its activities, particularly when it was launched.

The contention made by the Respondent in the Response is that the launch of the Complainants airline in India has no relevance to the Respondent who claims to be in the United Kingdom. The Respondents use of “Unlisted- Whois.com Protection service”, appears to be made to suppress the location and contact details of the Respondent. There is a mere bald assertion in the Response, that due to financial difficulties the Respondent has not been able to invest money to start the website, no documents have been filed to substantiate these statements.

Given the timing of the registration of the domain name, the media coverage regarding the launch of the airline in the months of November 2002 and December 2002, and the Respondent registering an identical domain name around the time the trademark was adopted by the Complainant, the choice of terms and the manner in which the web page has been put up, and the fact that airlines companies generally use their company name as their trade names, the credibility of the Respondents assertions are dubious.

Further, there is no evidence provided by the Respondent to support the inference the domain name registration was made for some bona fide business. The Respondent has not demonstrated or filed any documents showing preparation or any investment to use the domain name for a bona fide offering of goods. The webpage put up by the Respondent at “www.airdeccan.com” does not have any original content, and only offers links to other websites, as discussed above.

Paragraph 4(b)(iv) of the Policy provides that one of the circumstances indicative of bad faith registration and use is:

“(iv) 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 its website or location or of a product or service on its website or location”.

The Complainant contends that the Respondent has violated the bad faith provisions of the Policy as the disputed domain name was registered and used primarily for the purpose of diverting public attention to the Respondent’s website for commercial gain and in doing so is tarnishing the reputation of the Complainant’s trademark.

While trademark jurisprudence and the UDRP, recognizes concurrent rights of bona fide users of identical or similar marks, in commerce, it is a well established principle, that it is imperative that both the users have to demonstrate sufficient bona fide use of the mark in trade and commerce. The bona fide user of the mark can make an application for rectification of register for misuse or even disuse of the mark.

The Panel finds no evidence that the Respondent is a bona fide concurrent user of the mark AIR DECCAN. The entire set of circumstances of registration and use of the domain name indicate that the domain name had been registered to target the Complainant and free ride on the good will of the Complainant. All these circumstances taken together indicate bad faith registration and use.

The Panel further observes from Internet Searches, that the disputed domain name has reaped large unchallenged profits for the Respondent. One such domain name brokerage site which reveals this is reproduced below:

“Domain Brokerage - Dnforum -The place to talk, buy and sell domains “This is where resellers can act as go between to sell a domain they do not own but have authorization to sell. One thread per 24 hours is permitted. ... 0. 103. airdeccan.com making 1400 Euros/month ... 3. 510. airdeccan.com making 1400 Euros/month ...www.dnforum.com/forumdisplay.php?f”

The Panel finds there is sufficient circumstantial evidence that the website of the Respondent has attracted considerable attention from the public, due to it being mistaken as the website hosted by the Complainant, and indeed the Respondent has built the webpage to be misleading in this manner. This, according to the Panel constitutes bad faith registration and use of the domain name. Despite the disclaimer posted by Sedo, the Panel finds that the use of the domain name in this manner does create a likelihood of confusion with the Complainant’s trademark as to the source of sponsorship, affiliation or endorsement of its website.

The fact that the Respondent claims to be located in United Kingdom cannot be interpreted as absolving the Respondent or eliminate bad faith.

The Panel finds from all that has been discussed above that the Respondent has registered and used the disputed domain name in bad faith, particularly as mentioned in Paragraph 4(b)(iv) of the Policy.

7. Decision

In the light of all that has been discussed above, the Respondents claim of reverse domain name hijacking is denied.

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 <airdeccan.com> be transferred to the Complainant.

Harini Narayanswamy
Sole Panelist

Dated: November 15, 2005