Swiss International Air Lines AG v. Yu WANG
Claim Number: FA1902001830131
Complainant is Swiss International Air Lines AG (“Complainant”), represented by Hajo Rauschhofer of Rauschhofer Rechtsanwälte, Germany. Respondent is Yu WANG (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <swiss-airlines.com>, registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Eugene I. Low as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 18, 2019; the Forum received payment on February 18, 2019.
On February 18, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <swiss-airlines.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 21, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on February 21, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on February 26, 2019.
Complainant submitted an Additional Submission on March 1, 2019, and in response Respondent submitted an Additional Submission on March 2, 2019. Both Additional Submissions are in compliance of Rule 7 of the Forum's Supplemental Rules to the Policy.
On March 4, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eugene I. Low as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The parties' contentions in their submissions and additional submissions are summarized below.
Complainant is the Airline of Switzerland, serving over 100 destinations in 43 countries and carrying some 17 million passengers every year. Complainant is the legal successor to "Swissair".
The "Swissair" (official name Swissair Swiss air traffic joint-stock company) with seat in Kloten was the national airline of Switzerland from 1931 until its liquidation starting from March 2002. In the period between the Swissair Grounding on 2 October 2001 and the launch of Swiss on 1 March 2002, Swissair was supported by the Swiss government with the necessary liquid funds to maintain its operations and to enable Swiss to be founded. As a result of the collapse of its parent company SAirGroup, the new Swiss airline, Swiss, was founded on the basis of the regional airline Crossair. Swiss, now part of Lufthansa, uses part of the aircraft and serves a large number of the routes of the former Swissair.
Complainant is the legal successor to Swissair and its trademark rights. Complainant has rights in the SWISS and SWISSAIR marks through its trademark registrations around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., SWISS - Reg. No. 4,326,384, registered Apr. 30, 2013; SWISSAIR – Reg. No. 717,686, registered June 27, 1961), the European Intellectual Property Office (“EUIPO”) (e.g., SWISSAIR – Reg. No. 0625988, registered Sept. 23, 1994), and the Swiss Federal Institute of Intellectual Property (“IGE”) (e.g., Reg. No. 2P-412474, registered Sept. 23, 1994). Complainant contends that its SWISS and SWISSAIR marks are well-known marks operating worldwide. Respondent’s <swiss-airlines.com> domain name is confusingly similar to Complainant’s SWISS and SWISSAIR marks as it includes the SWISS mark in its entirety, while adding the generic/descriptive term “airlines.”
Respondent has no rights or legitimate interests in the <swiss-airlines.com> domain name. Respondent is not licensed, permitted, or otherwise authorized to use Complainant’s SWISS or SWISSAIR marks and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s disputed domain name resolves to a parked website where Respondent generates revenue through a pay-per-click scheme.
Respondent registered and uses the <swiss-airlines.com> domain name in bad faith. Respondent has listed the disputed domain name for sale. Respondent also attempts to attract, for commercial gain, uses to the disputed domain name to generate click-through revenue. Further, Respondent’s passive holding of the disputed domain name indicates bad faith. Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the SWISS and SWISSAIR mark prior to registering and subsequent use of the disputed domain name.
Respondent purchased the <swiss-airlines.com> domain name on September 24, 2001, before Complainant’s existence. Respondent’s purpose of buying the disputed domain name was to use or sell it at a later date. Complainant has not attempted to contact Respondent about the disputed domain name in the past seventeen (17) years Respondent’s has owned it. Further, the disputed domain name incorporates the term “SWISS,” which is a common adjective to describe a citizen from Switzerland and “airlines,” a generic term.
Respondent did not use the <swiss-airlines.com> domain name for commercial purposes or profit from domain parking. Domain names can be used or sold by its registrants. Respondent further submits that at the time of registration of the domain name, it was common practice for new domain names to be parked as soon as they were registered, as it allowed domain names not to have to be hosted on a paid server.
Further, the disputed domain name predates Complainant’s existence. There is no evidence for bad faith. The <swiss-airlines.com> domain name was registered in 2001 before the name “SWISS” was used for Complainant's new airlines in 2002
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel considers that Complainant has satisfied this element.
Complainant claims rights in the SWISS and SWISSAIR mark based upon its trademark registrations around the world, including with the USPTO (e.g., SWISS - Reg. No. 4,326,384, registered Apr. 30, 2013; SWISSAIR – Reg. No. 717,686, registered June 27, 1961), the EUIPO (e.g., SWISSAIR – Reg. No. 0625988, registered Sept. 23, 1994), and the IGE (e.g., Reg. No. 2P-412474, registered Sept. 23, 1994). Registration of a mark with multiple trademark agencies is sufficient to establish rights in that mark.
Complainant next argues Respondent’s <swiss-airlines.com> domain name is confusingly similar to Complainant’s SWISS and SWISSAIR marks as it includes the SWISS mark in its entirety, while adding the generic/descriptive term “airlines.”
While Complainant does not specifically assert this, the disputed domain name also contains a hyphen and a “com” generic top-level domain (“gTLD”). Such additional elements are generally not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis.
Complainant contends that its SWISS and SWISSAIR trademarks are well-known trademarks operating worldwide. While not necessary for the Panel to make a determination on this contention, the Panel accepts that Complainant's SWISS and SWISSAIR trademarks at least have achieved a high degree of recognition and distinctiveness in their relevant field. The strength of Complainant's trademarks go against Respondent's argument that the domain name, with “AIRLINES” in plural, "may refer to a group of airlines or to any airlines based in Switzerland without specifics". While the Panel accepts that the phrase "Swiss airlines" is capable of being used in such a descriptive way, the Panel nonetheless considers that in the current context there exists a likelihood of confusion, especially given the distinctiveness of Complainant's trademarks and the actual contents of the website (as elaborated below).
The Panel considers that Complainant has satisfied this element.
Complainant argues that Respondent has no rights or legitimate interests in the <swiss-airlines.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the SWISS or SWISSAIR mark in any way. The WHOIS information of record identifies the registrant of the at-issue domain name as “Yu WANG,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s marks. Respondent does not argue otherwise.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <swiss-airlines.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant produces evidence to show that the domain name resolves to a website which is being used to obtain click-through revenue by linking to third-party websites. Mere use of a domain name featuring pay-per-click links, or passive holding of a domain name, is generally not a use indicative of rights or legitimate interests under the Policy.
Respondent contends that the disputed domain name is comprised of the term “Swiss” which alludes to the adjective form of someone who is from Switzerland, and the term “airlines,” a common or generic phrase. However, based on the evidence, the Panel does not accept Respondent's contention that it is making use of the domain name as a generic reference to Swiss-based airlines. On the contrary, the evidence shows that the website displays links and references to "SWISS AIR" and "SWISS AIRLINE" which are highly suggestive of Complainant and Complainant's trademarks.
The Panel therefore concludes that Complainant has made out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under the Policy, and Respondent fails to show it does have rights or legitimate interests.
The Panel considers that Complainant has satisfied this element.
Complainant contends that in light of the fame and notoriety of Complainant's SWISS and SWISSAIR trademarks, it is inconceivable that Respondent could have registered the <swiss-airlines.com> domain name without actual or constructive knowledge of Complainant's rights in the trademarks. Respondent argues that it purchased the domain name before Complainant was founded.
The Panel has taken into account evidence of how the website has been used by Respondent. In particular, the Panel notes that the evidence shows that the website displays links to "SWISS AIR" and "SWISS AIRLINE" (among other third party links and apparently unrelated links) which are highly suggestive of Complainant and Complainant's trademarks. This goes against Respondent's arguments that it purchased the domain name without having Complainant or the trademarks "SWISS" or "SWISSAIR" in mind. At the time of the registration of the domain name, those trademark rights might have vested in Complainant's predecessors, but the Panel accepts Complainant's submissions that Complainant is the legal successor to those rights which already existed at the time of the registration of the domain name.
The Panel also finds that the above website contents are liable to create confusion as to whether the domain name and/or the website are associated or authorized by Complainant.
Considering the above, and in addition to the evidence that Respondent has put up the domain name for sale and used it as a parking site, the Panel concludes that Respondent has registered and used the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <swiss-airlines.com> domain name be TRANSFERRED from Respondent to Complainant.
Eugene I. Low, Panelist
Dated: March 6, 2019
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