ADMINISTRATIVE PANEL DECISION
SAirgroup v. Amaltea Impex SRL and Evergreen SRL
Case No. DRO 2001-0002
1. The Parties
The Complainant in this administrative proceeding is SAirgroup based at Zurich Flughafen, Switzerland represented by Mrs. Gabriela Taugwalder, P.O. Box 6940, 8023 Zurich, Switzerland.
The Respondents are Amaltea SRL (first Respondent) with offices at Spatarului 31, Sector 2, Bucharest 70242, Romania and Evergreen SRL (second Respondent) with offices at Str. Dobrota nr. 4, Sector 2, Bucharest, Romania.
2. The Domain Name and Registrar
The domain name at issue is <swissair.ro> ("the Domain Name"). The Domain Name is registered with the Romanian National R&D Computer Network (RNC.ro), B.d.Averescu 8-10, Sector 1, Bucharest 71316, Romania.
3. Procedural History
The Complainant filed a complaint ("the Complaint") with the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") electronically on April 11, 2001, and by hard copy on April 12, 2001.
On April 24, 2001, the Center acknowledged receipt of the Complaint.
On April 25, 2001, the Center transmitted to the registrar a request for registrar verification in connection with this case so as to:
- confirm that the Domain Name at issue is registered with the Romanian registrar;
- confirm who is the current registrant of the Domain Name;
- provide full contact details, i.e. postal address(es), telephone number(s), facsimile number(s), e-mail address(es) available in the Registrar’s Who is database for the registrants of the disputed Domain Name, the technical contact, the administrative contact, and the billing contact for the Domain Name.
On April 26, 2001 the Registrar responded to the Center’s request for registrar verification and confirmed that Amaltea Impex SRL is the registrar of the Domain Name <swissair.ro>. It was indicated that the administrative and technical contacts are Mr. Cristian Popescu and Cristian Carstoiu at Amaltea’s seat.
On April 27, 2001 an amendment of the claim was received in electronic form and on April 30, 2001 in hard copy amending the claim so that the name of the first Respondent should read Amaltea Impex SRL.
On May 2, 2001, the Center verified that the Complaint met the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
The panel has reviewed the documentary evidence provided by the Parties and the Center and agrees with the Center’s assessment that the Complaint complies with the formal requirements of the aforementioned Rules.
The administrative proceeding commenced on May 2, 2001. The same day, the Complaint was notified to Respondents by email as well as by courier. The emails sent to all known email addresses were sent and the courier packages were delivered
No response was received from the Respondents before the deadline of May 21, 2001. Therefore on May 22, 2001 a Notification of Respondent Default was sent to the Respondents.
Upon receipt of the necessary declaration of independence and impartiality from the undersigned, the Center appointed on June 5, 2001, Prof. Dr. Charles Gielen as sole member of the administrative panel.
4. Factual Background
The Complainant is owner of a number of registrations around the world of the trademark Swissair, registered for several goods and services and used for amongst others, in air transportation services. The Complainant filed as an example in Annex 5 a copy of the International Registration nr. 625988.
First Respondent registered the Domain Name on a date that could not be assessed by the Panel, but from the email correspondence it becomes clear that the Domain Name was registered in January 2000. After having been contacted by the representative of the Complainant an email was sent by Mr. Cartoiu on behalf of Amaltea Group saying that the Domain Name was reserved by the Amaltea Group at the order of second Respondent, that paid the registration costs and furthermore outlining that they could not intervene with the business plans of their clients. On December 6, 2000, the Complainant received an email from Catalin Mogoseanu on behalf of second Respondent saying that they are ready to sign a contract to turn the ownership right over to the Complainant after finalizing an agreement on the creation of a website: <swissair.com> apparently against payment of free tickets.
5. Parties’ Contentions
The Complainant alleges that the Domain Name is identical to the trademarks registered and used by Complainant. Furthermore the Complainant points out that the Respondents have no rights or legitimate interests in respect of the Domain Name, since it is not, or has not been, commonly known by the Domain Name, nor has it, to the Complainants’ knowledge, acquired any trademark or service rights in the Domain Name. According to the Complainant second Respondent approached Complainant and informed Complainant as follows: "The domain name swissair.ro is our property. It will generate huge benefits for Swissair, from marketing, advertising, online reservations etc. In exchange for the right to use the domain name, we request for the next five years, twice/year two ID00B1 tickets on any Swissair destination world-wide. After this period of five years, the domain name automatically becomes the property of Swissair Romania". Furthermore, second Respondent requested to get the job to create and host a website under the Domain Name <swissair.ro> against consideration (see annex 6). With e-mail of December 7, 2000, Complainant informed second Respondent about Complainants trademark rights and entitlement to SWISSAIR. Complainant mentioned that a cooperation regarding the creation of a website was only negotiable once the Domain Names <swissair.ro> and <sabena.ro> (sign of another well-known airline) has been transferred free of charge to the rightful owners (see annex 7). On the same date, second Respondent replied that if Complainant was not prepared to grant the requested free tickets for the next five years, the parties involved would be locked in legal disputes for the next couple of years (see annex 8). One day later, second Respondent sent another e-mail to Complainant mentioning that there was no law in Romania against cyber-squatting (see annex 9).
With telefax and e-mail of February 13, 2001, Complainant’s representative informed first Respondent about Complainant’s prior rights and set a term until February 20, 2001, to transfer the Domain Name <swissair.ro> to Complainant against reimbursement of the out-of-pocket expenses for a Domain Name registration under ccTLD .ro. Furthermore, Complainant’s representative mentioned that he learnt that second Respondent was also involved in a law suit with AirFrance since he registered the domain name <airfrance.ro> without the legitimate owner’s consent (see annex 10). On the same date first Respondent sent an e-mail to Complainant’s representative admitting that they were involved in a trial with AirFrance and mentioning that since they were acting only as an internet service provider for second Respondent, they could not act against their client’s interests (see annex 2). On February 14, 2001, Complainant’s representative replied that first Respondent must have known that, neither first nor second Respondent were entitled to a registered third party’s well-known signs as Domain Names. Again, a term was set for the transfer of the said Domain Name until February 20, 2001, against reimbursement of the costs in connection with the registration of the Domain Name (see annex 11). With e-mail of February 15, 2001, second Respondent invited Complainant’s representative to come to Bucharest to discuss an amicable settlement of the dispute without omitting to mention "I am sure that Swissair will be happy to provide you with free tickets Zurich – Bucharest – Zurich.". In spite of Complainant’s representative’s reply that the only way to settle the matter amicably was to transfer the Domain Name <swissair.ro> to its rightful owner against payment of the cost for the registration of the Domain Name, Respondents still were not prepared to transfer the Domain Name (see annex 12). According to a search in the Whois database of the Registry first Respondent is still the registered owner of Domain Name <swissair.ro>
The Complainant finally is of the opinion that the trademark Swissair is well-known
The Respondents did not file a response within the time limit set by the Center.
6. Discussion and Findings
To succeed in the Complaint, it must be shown that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that
1. the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
2. the Respondents have no rights or legitimate interests in the domain name, and
3. the domain name has been registered and used in bad faith.
These three elements will be considered below.
Identity or confusing similarity
There is no doubt that the Domain Name is identical with Complainants’ trademark.
Rights or legitimate interests
The Complainant has registered the trademark Swissair in many countries since at least 1994, but probably earlier for several goods and services. There can also be no doubt that this mark is very well-known in major part of the world. Respondent did not show any right or legitimate interest in the name Swissair. There is no prior use and no prior registration. Therefore this condition of the Policy is met.
According to paragraph 4(a)(iii) of the ICANN Policy, it is incumbent on the Complainant to prove that the Respondents have registered and are using the Domain Name in bad faith. The panel is of the opinion that the circumstances indicate clearly that the Respondents registered the Domain Name primarily for the purpose of selling its registration to the Complainant for valuable consideration in excess of out-of-pocket costs directly related to the Domain Name. This is shown by the factual course of things as outlined above. The Respondents offered the assignment of the Domain Name against the granting of the job to create a website and furthermore against payment of several free tickets for a period of 5 years. Above that, the Respondents apparently also registered other well-known marks of airlines such as Sabena and Air France, which shows a typical behavior of hijacking domain names.
For the foregoing reasons, the panel concludes and decides that the Domain Name <swissair.ro> shall be transferred to the Complainant.
Dated: June 12, 2001