WIPO Arbitration and Mediation
Center
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
(i) Complainant
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
(ii) Respondents
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.
Bad Faith
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.
7. Decision
For the foregoing reasons, the panel concludes
and decides that the Domain Name <swissair.ro> shall
be transferred to the Complainant.
Charles Gielen
Sole Panelist
Dated: June 12, 2001