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Aer Lingus Limited v. Aeroplane Enthusiasts [2005] GENDND 1945 (14 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aer Lingus Limited v. Aeroplane Enthusiasts

Case No. D2005-0951

1. The Parties

The Complainant is Aer Lingus Limited, County Dublin, Ireland, represented by F.R. Kelly & Co., Ireland.

The Respondent is Aeroplane Enthusiasts, Dublin, Ireland.

2. The Domain Name and Registrar

The disputed domain name <aerlingus.net> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2005. On September 7, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On September 7, 2005, Tucows 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. The Center verified that 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 29, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 24, 2005.

The Center appointed Adam Taylor as the Sole Panelist in this matter on October 31, 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 is Ireland’s national airline and was established in 1936. The Complainant provides the usual range of services associated with a national airline such as transportation of persons, cargo and freight, provision of flight information, booking and reservation services and repair and maintenance of aircraft.

The Complainant owns a number of registered trademarks including Community Trademark No. 119032 for the stylized word AER LINGUS plus shamrock device dated April 1, 1996.

The Respondent registered the disputed domain name on May 8, 2002.

5. Parties’ Contentions

A. Complainant

The disputed domain name is closely similar to the Complainant’s registered trademarks.

The Complainant has acquired substantial reputation and common law rights in its name and mark AER LINGUS in Ireland and internationally. The name is an English form of the Irish term “Aer Loingeas” meaning “air fleet”. The term is unique, has no descriptive connotation in English and is exclusively associated with the Complainant. The disputed domain name includes the whole of the Complainant’s name and mark. Relevant consumers would assume that the Respondent’s domain name / website was directly connected with the Complainant.

The disputed domain name is registered to “Aeroplane Enthusiasts” which has no known connection or association with the Complainant. The Respondent has never been known by the disputed domain name. The Respondent is not making any legitimate non-commercial or fair use of the domain name. On the contrary, the Respondent is using the domain name to point to the website of Ryanair, a competitor of the Complainant in Ireland.

Around April 2003, the Complainant advised the Respondent of its objection to registration of the disputed domain name and its fears about confusion amongst its customers. The Respondent said that it planned to develop a website for aircraft enthusiasts from Ireland under the disputed domain name. The Respondent also stated that he had included a specific disclaimer on his then home page.

The Complainant has monitored use of the disputed domain name for two years. The site for aeroplane enthusiasts never materialized. The Complainant has recently become aware that the domain name is directing to its competitor Ryanair. The Complainant has tried to contact with the Respondent on a number of occasions by email and telephone but neither address functioned correctly.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel accepts the Complainant’s contention that it has generated substantial common law rights in term AER LINGUS deriving from its extensive use of that name since 1936. The disputed domain name is identical to the trademark AER LINGUS. It is well-established that domain suffixes are disregarded for the purpose of this comparison.

The disputed domain name is also confusingly similar to the Complainant’s registered device trademarks. The term AER LINGUS is by far the most prominent feature of those trademarks.

The Panel concludes that the disputed domain name is identical and confusingly similar to trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name: (i) use of, or preparations to use, a domain name in connection with a bona fide offering of goods or services; (ii) the fact that a respondent has commonly been known by a domain name; and (iii) legitimate non-commercial or fair use of a domain name, without intent for commercial gain to mislead consumers or tarnish the trademark.

The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070.

The Complainant has not licensed or otherwise authorized the Respondent to use its trademarks.

As to paragraph 4(c)(i) of the Policy, automatic redirection of the website to a competitor of the Complainant is the only use of the disputed domain name which has been brought to the Panel’s attention. The Respondent has not submitted a response to deny the Complainant’s assertions concerning the inappropriate nature of such use of the Complainant’s trademarks or to explain its conduct. Indeed, the Panel has concluded below that the Respondent used the disputed domain name to profit by creating a likelihood of confusion with the Complainant’s trademark. In these circumstances the Respondent’s offering could not be said to be bona fide.

There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.

The Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant refers to communications starting in about April 2003, whereby the Respondent allegedly claimed that it planned to develop a website for aircraft enthusiasts. The Complainant says that such a site never materialized. This correspondence has not, however, been exhibited and the Panel declines to draw any conclusions from it.

What is clear is that at some point the Respondent started redirecting the disputed domain name to the website of Ryanair. On the face, such behaviour was designed to generate profit for the Respondent by diverting the Complainant’s customers to a competitor of the Complainant. The Panel infers that such was the Respondent’s purpose in registering the disputed domain name. Indeed the Respondent has not come forward to suggest otherwise.

The Panel is of the view that the Respondent intentionally attracted for commercial gain internet users to its website by trading on the goodwill associated with the AER LINGUS trademark and creating a likelihood of confusion with that trademark (paragraph 4(b)(iv) of the Policy). The likelihood of confusion is not diminished by the fact that users arriving at the Ryanair website via the disputed domain name will realize that they have reached the wrong destination. Paragraph 4(b)(iv) of the Policy is concerned with the intentional attracting of Internet users. Here, the Respondent used the disputed domain name to create “initial interest confusion” on the part of internet users seeking the Complainant and in order to profit from the possibility that some of that traffic would ultimately be lost to the Complainant’s competitor. See, e.g., National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118 and Jardine Motors Group Holdings Limited v. Zung Fu Kuen, WIPO Case No. D2004-0168.

The Panel concludes that the disputed domain name was registered and has been used in bad faith.

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 <aerlingus.net> be transferred to the Complainant.

Adam Taylor
Sole Panelist

Dated: November 14, 2005