1109
Nominet Dispute Resolution Service
DRS 01109
Aer Lingus Limited –v- Disability UK
Decision of Independent Expert
1. The Parties
The Complainant
1.1 The Complainant is Aer Lingus Limited, represented by Messrs FR Kelly & Co.
The Respondent
1.2 The Respondent is Disability UK.
2. The Domain Names
2.1 The domain names in dispute are <airlingus.co.uk> (“the First Domain Name”) and <aerlingus.co.uk> (“the Second Domain Name”) (together, “the Domain Names”).
3. Procedural Background
3.1 This Complaint falls to be determined under the Nominet UK Dispute Resolution Service Procedure (“the Procedure”) and the Nominet UK Dispute Resolution Service Policy (“the Policy”).
3.2 The Complaint entered Nominet’s system on 11th July 2003 and was validated and sent to the Respondent on 17th July 2003. A Response was filed by the Respondent on 6th August 2003 and a Reply by the Complainant on 13th August 2003. Mediation not being possible and the Complainant having paid the relevant fee, the Complaint was referred to me with an effective date of 19th September 2003 for a Decision. On 22nd September 2003, I confirmed that I was not aware of any reason why I could not act as Independent Expert in this case nor of any matters which ought to be drawn to the attention of the parties which might appear to call my independence or impartiality into question.
4. Outstanding Formal/Procedural Issues
4.1 The Respondent has made additional submissions to Nominet by letters dated 25th August and 31st August 2003. The letters were copied to the Complainant’s representative but the Complainant has made no further reply to them. Paragraph 13 of the Procedure provides:
“In addition to the Complaint, the Response and if applicable the Reply and any appeal, the Expert may request further statements or documents from the Parties. The Expert will not be obliged to consider any statements or documents from the Parties which he or she has not received according to the Policy or this Procedure or which he or she has not requested.”
4.2 The further letters were not requested by me and I therefore have no obligation to consider them. However, bearing in mind that the Respondent does not have legal representation, I am of the view that the further submissions contained in the letters should be considered unless the lateness of those submissions would be likely to cause unfair prejudice to the Complainant. As I do not believe any such unfair prejudice would be caused, I have considered the submissions.
5. The Facts
5.1 The Complainant is a company registered in the Republic of Ireland with a foreign company branch registration in England & Wales. It is the operator of Ireland’s national airline.
5.2 The legal status of the Respondent is unclear. Its contact registered with Nominet is Mr Eduardo C-Vanci, who is also the author of its submissions and correspondence in this matter. The Respondent operates a website at www.disabilityuk.com.
5.3 The First Domain Name was registered by the Respondent on 16th December 1999. The Second Domain Name was registered by the Respondent on 20th December 1999.
6. The Parties’ Contentions
The Complaint
6.1 In summary, the Complainant makes the following submissions in the Complaint and the documents annexed thereto.
Rights
6.2 The Complainant is Ireland’s national airline and was established in 1936. The name “Aer Lingus” is an anglicisation of the Irish term “Aer Loingeas” which translates as “Air Fleet”. The airline flies 15,000 passengers on 180 flights per day to and from more than 30 destinations in Europe and the USA.
6.3 The name “Aer Lingus” has no descriptive meaning or any connotation other than in connection with the Complainant. As a result of its history and its activities, the Complainant has substantial common law rights in the name.
6.4 In addition, the Complainant is the owner of various registered trade marks, including the following:
6.4.1 A series of Republic of Ireland trade marks comprising a figurative mark AER LINGUS with shamrock device, registered in various classes between (at least) July 1997 and May 1998. (The date of the earlier registrations is not clear from the information supplied by the Complainant.)
6.4.2 A Community Trade Mark, number 119032, comprising a figurative mark AER LINGUS with shamrock device, registered in various classes on 29th January 1999.
6.5 (The Complainant claims a further Community Trade Mark comprising a figurative mark AERLINGUS.COM. However, this appears to be a pending application only and not a registered mark.)
6.6 The Complainant conducts much of its business online and is the owner of the domain names <aerlingus.com>, <aerlingus.ie> and others. It takes an increasing number of its bookings online and over 40% of such bookings are currently estimated to be made through its websites.
6.7 It would be the perception and expectation of the public that the Domain Names would be owned by the Complainant and that any websites linked to the Domain Names would be the Complainant’s.
Abusive Registration
6.8 The Respondent’s full website address is at http://xfilms.org/disability. It appears to be closely related to the pornographic website xfilms.org with which the Respondent is therefore believed to be associated. The association is “worrying to the Complainant” in view of the Respondent’s ownership of the Domain Names.
6.9 The Complainant has made enquiries concerning the Respondent with charities in the disability sector but none is aware of its activities. The Respondent has no “official status” and is not a registered charity.
6.10 The Complainant became aware of the Respondent’s registration of the First Domain Name in April 2002. It wrote to the Respondent in April 2002 requesting cancellation of the name and undertakings. The Respondent’s reply was unsatisfactory. (In fact, the Complainant’s letter refers to the Second, not the First, Domain Name. The Respondent’s reply appears to refer to both Domain Names.)
6.11 The Respondent stated in its reply that the Domain Names had been registered for the purpose of an internet radio station site, and in particular:
“Radio Aer Lingus & Radio Air Lingus were set up some time ago for the purpose of an Irish themed Internet Radio Station, which has been clearly advertised as Radio Air Lingus on our parent site since 1999. The site is to contain not only the radio station but also Eire interests in general and aim to promote the country.”
6.12 The Respondent further stated:
“The name was originally devised from a similar operation Radio Air Linha, in Portugal (where I resided for six years). Linha translating to straight line and used in describing coastline, radio wave, communications, etc. Roughly translated, we reasoned Lingus as being the equivalent to this in Irish. Hence the ‘air’ & ‘aer’ to cover English and Irish members.”
6.13 The Respondent’s explanation for adopting the Domain Names is not credible. The word “lingus” does not translate into “line” in any language and the Respondent’s letter provided no reasonable or legitimate reason for choosing the Complainant’s name and mark to refer either to an Irish radio station or to “Eire interests in general”.
6.14 In around March 2003, the Complainant became aware of the Respondent’s use of the First Domain Name to point to a pornographic website. It wrote to the Respondent requesting the transfer of both of the Domain Names and offering E300 to cover registration costs. It also requested that the link to the pornographic site be cancelled immediately. The Respondent replied, contending that the names had been purchased for genuine and legitimate reasons and that:
“the ‘adult’ site to which you refer is nothing more than an extremely moderate ‘page three’ content of a ‘site in construction for a client’”.
6.15 The Complainant cannot tolerate the risk that the Domain Names will, from time to time, be used to point to pornographic websites and such use amounts to abusive registration.
6.16 Neither Domain Name has been used for the purpose of a properly functioning website. The fact that the Domain Names were registered approximately four years ago without having been actively used is also indicative of abusive registration.
6.17 The Complainant wrote to the Respondent in July 2003 increasing its offer for the transfer of the Domain Names to E500. The Respondent repeated that the names were being used in connection with the planning of an internet radio station, but has failed to provide any tangible evidence of such preparations.
The Response
6.18 In summary, the Respondent makes the following contentions in the Response and the documents referred to therein.
Rights
6.19 The date of registration of the Complainant’s trade marks is proximate to the date of registration of the Domain Names. Many of the marks were “activated” only around and after the time of the registration of the Domain Names.
6.20 All the Respondent’s trade marks appear to be registered in Eire and not in Great Britain and the Respondent believes there may be an attempt to mislead on the part of the Complainant.
6.21 The Complainant’s trade marks are registered in “vertical sectors” covering a multitude of activities relating to the air transport business. None of the registrations covers radio, music entertainment or transmission or any similar activity.
Abusive Registration
6.22 The Complainant’s allegation of non-use is disputed. Introduction pages and a website have been active on one of the domains for several years.
6.23 The Respondent affirms the contents of its letters to the Complainant dated April 2002, May 2003 and July 2003. Namely:
6.23.1 As at April 2002, considerable work had been done in preparing the Respondent’s website for operation. 160 internet radio stations had been evaluated for inclusion on the site and pages designed to incorporate them. 2,500 song titles with Irish themes had been selected for inclusion.
6.23.2 The link to the pornographic website was:
“a normal internal exercise of period testing the new site and search engine URL linking. With over a hundred registered domains and many sites, the use of one particular hyperlink for testing would be a 1:100 chance. The hyperlink now [in May 2003] re-functions to its previous default”.
6.23.3 The fact that the Complainant did not respond (until April 2003) to the Respondent’s letter of April 2002 is indicative that the Complainant had accepted the Respondent’s legal right to the Domain Names.
6.23.4 The Complainant’s financial offers were totally unacceptable and amounted to “trying to steal someone’s cherished car for a quid”. The planning of the internet radio site had become a cherished project.
6.23.5 There is no existence of confusion among internet users, since the Complainant flies airplanes and the Respondent is an internet music station. The parties’ businesses fall within entirely different categories on search engines.
6.24 The Domain Names were “purchased prior to any knowledge of the Claimants for a legitimate reason of use”.
6.25 The Domain Names were, prior to the Complaint, maintained and renewed and operated in connection with a non-commercial website.
6.26 With regard to xfilms.org:
“Our main host for many years featureprice.com, without warning went under two months ago, along with disabilityuk.com, all it’s data, the IP, domains and the lot. The nearly prepared xfilms server saved the day, by a redirect to a new sub-domain under it. This was our only option involving the least downtime of three days. It was only last week, that a new IP address, email and proper hosting for disabilityuk.com and most of our other domains could be finalised. Unfortunately, during this period and even now, there are still many pages, mini sites and domain web hyperlinks not yet resolved.
May I finally add, the fact that we own an adult site, does not imply by association our intent on skulduggery.”
6.27 The Respondent organisation started in 1997 as a four-page information site for those with disabilities. The site has grown to many hundreds of pages embracing a variety of themes, not all to do with disability. The Respondent advertises as “a portal maintained by disabled people for everyone”. The site receives approximately 25,000 visitors per day and is linked to by hundreds of other organisations. The Respondent is a self-funded, not-for-profit organisation run by a committee.
6.28 The Respondent operates several other websites including the newly launched xfilms.org. A list of other domain names owned by the Respondent is annexed to the Response.
The Reply
6.29 In summary, the Complainant makes the following contentions in its Reply.
Rights
6.30 The Respondent’s submission with regard to Eire trade marks is not understood. The Complainant has, inter alia, a Community Trade Mark which is effective in the UK. Further, it has substantial common law rights in the name Aer Lingus as a result of longstanding and extensive use in the UK.
6.31 It is not a requirement of the Policy and Procedure that the Complainant’s trade marks must cover the same classes as the Respondent’s business. Notwithstanding, the Complainant provides in-flight entertainment services including the broadcasting of recorded music.
Abusive Registration
6.32 The Second Domain Name has never been used. With regard to the First Domain Name, there is no active radio station under that name and, if any such station did exist, widespread confusion would result. The reputation of the Complainant’s mark is such that the public would assume that any radio station operated under the Aer Lingus name, or any similar name, was that of the Complainant.
6.33 The Respondent’s ownership of adult sites is not an issue. However, the Complainant objects to being associated with such sites by virtue of the Respondent’s use of the Domain Names.
The Respondent’s Letters
6.34 In its letter of 25th August 2003, the Respondent lists 15 reported decisions under the Policy in which registration was found not to be abusive. It states that, similarly, there is no proof of abusive registration in this case. The Respondent also refers to Air China –v- Starlight Vacations DRS 00480 in which it states the registration was obviously abusive and the complaint rightly upheld.
6.35 In its letter of 31st August 2003, the Respondent states that:
“with respect to our Radio Airlingus site, our website logs show a total of 3,569 visits for this month August (copy enclosed). Much to the delight of the Irish radio hams. Not exactly a dormant or abusive site is it?
6.36 The enclosure with the letter is a report from the Respondent’s host, uk2.net, showing hits against each of 12 of the Respondent’s domain names, including the First Domain Name. There is no report for the Second Domain Name which the Respondent states has been “hijacked by persons unknown”.
7. Discussion and Findings
7.1 Under paragraph 2 of the Policy:
“(a) A Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts to [Nominet], according to the Procedure, that:
(i) the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
(ii) the Domain Name, in the hands of the Respondent, is an Abusive Registration.
(b) The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities.”
7.2 Under paragraph 1 of the Policy the term “Rights”:
“includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant’s business”.
7.3 The term “Abusive Registration” is defined in paragraph 1 of the Policy as referring to a Domain Name which either:
“(i) was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; or
(ii) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.”
7.4 Paragraph 3 of the Policy sets out a non-exhaustive list of factors that may be evidence that a Domain Name is an Abusive Registration. Paragraph 4 sets out a non-exhaustive list of factors that may be evidence that it is not. However, all these factors are merely indicative of, and subject to, the overriding test of an Abusive Registration as set out above.
Rights
7.5 I accept the Complainant’s evidence that it has traded under the mark AER LINGUS for many years and that it has established common law rights in that mark in the Republic of Ireland, the United Kingdom and elsewhere. The mark is distinctive of the Complainant and is not merely descriptive of its business.
7.6 Further, the Complainant is the owner of registered trade marks including numerous Republic of Ireland trade marks and a Community Trade Mark which, although they are figurative marks, include the term AER LINGUS. (The trade marks contain no restrictions upon the Complainant’s exclusivity in that term.)
7.7 In considering the question of Rights under the Policy, there is no requirement that trade marks be registered in the same classes as any business for which the Respondent may be using the Domain Names. In many cases, the disputed domain names are not used at all. While the question of actual use could be relevant to the issue of Abusive Registration, it is not relevant to the issue of Rights.
7.8 Further, there is no merit in the Respondent’s observations as to the date of registration of the marks. All the trade marks referred to above were registered prior to the Respondent’s registration of the Domain Names. The Community Trade Mark was registered over 10 months before the registration of the Domain Names. (The Respondent’s reference to “activation” of the marks is unexplained and is not understood.)
7.9 In the circumstances, I find that the Complainant has Rights in respect of a name or mark which (ignoring the space between “AER” and “LINGUS”) is identical to the Second Domain Name and similar to the First Domain Name. The mark would be identical to the First Domain Name but for the alteration of the letter “e” to an “i” in that name.
Abusive Registration
7.10 The principal ground relied on by the Complainant is that the Respondent’s use of the Domain Names is likely to cause confusion. Specifically, the Complainant submits that, given the nature of the Domain Names, an internet user would expect them to be owned by the Complainant and that any linked websites would be those of the Complainant’s. The Complainant disputes the Respondent’s stated intention of operating an internet radio station linked to the Domain Names, but argues that if any such station did exist an internet user would expect it to be connected with the Complainant.
7.11 The Respondent submits that there is no possibility of confusion as a result of its use of the Domain Names, because it operates an internet radio site and the Complainant operates an airline.
7.12 Under paragraph 3(a)(ii) of the Policy, the factors which may point to an abusive registration include:
“circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.”
7.13 The formulation set out above does not require the Complainant to go so far as to prove that people or businesses have been confused into believing that any business or activity conducted on the Respondent’s site is in fact that of the Complainant. As is clear from the wording of the sub-paragraph, the test is wide enough to encompass the concept of “initial interest confusion”. This arises when an internet user accesses one party’s website under the mistaken belief that the domain name comprising the relevant URL must be that of another party.
7.14 Under the Policy, it is for the Complainant to prove that the registration complained of is abusive and not for the Respondent to prove that it is not abusive. However, in a case where the Complainant is the owner of a well known mark, which the Respondent has simply adopted together with a formal suffix, the Complainant is likely to find it relatively straightforward to establish a prima facie case. In British Telecommunication plc and Others –v- One in a Million Limited and Others, [1998] 4 All ER 476, the Court of Appeal observed that, where a well known name had no public connotation other than in connection with the claimant, it would be difficult for the defendant to make any realistic use of the name other than by way of “passing off”. In that case the mere registration of such a domain name, without further use, was deemed to constitute an “instrument of fraud”.
7.15 In this case, the Second Domain Name, <aerlingus.co.uk>, is a simple adoption of the Complainant’s well known name together with a formal suffix. The First Domain Name, <airlingus.co.uk>, is an obvious misspelling of the Complainant’s name together with a formal suffix. In these circumstances, there is in my view a strong presumption that a significant number of individuals would mistakenly believe that any website linked to either of the Domain Names would be a website “operated or authorised by, or otherwise connected with, the Complainant” and would seek to access the website for that reason.
7.16 This presumption is not, however, conclusive of an Abusive Registration and the other circumstances of the case, and in particular the Respondent’s submissions under paragraph 4 of the Policy, must also be examined.
7.17 The Complainant also relies on the use of the First Domain Name, at one time, to link to a pornographic website. While it concedes that the Respondent is entitled to operate pornographic websites, it argues that the use of the Domain Names to link to sites of that nature is likely to be damaging to the Complainant.
7.18 The Respondent has made various submissions with regard to the pornographic website which are neither wholly clear nor necessarily consistent with one another. With regard to the content, the Respondent alleges that this was “an extremely moderate ‘page three’ content of a ‘site in construction for a client’”. As to the reason for the linkage, the initial explanation offered was that this was used for “a normal internal exercise of period testing the new site and search engine URL linking”. It was also implied (as I understand it) that there had been 1:100 chance of the First Domain Name being used for this purpose. The explanation given in the Response, however, is that the Respondent had been forced to use the xfilms.org server owing to the sudden demise of its previous hosting company. However, the Respondent also states that “we operate several other websites on various themes including the major xfilms.org only just launched on our new 60gig server”.
7.19 Whatever the true explanation, the issue is whether the linkage of the First Domain Name to a pornographic website, for a period, is relevant to the issue of Abusive Registration. In view of my findings on “initial interest confusion” above, I consider that it is relevant and that the use of either of the Domain Names to link to a distasteful website is liable to have the effect of tarnishing the Complainant’s mark. This, in my view, would constitute use which “took unfair advantage of or was unfairly detrimental to the Complainant’s Rights” for the purposes of the definition of an Abusive Registration. It therefore bolsters the Complainant’s case in respect of the First Domain Name.
7.20 Turning to the Respondent’s own submissions on Abusive Registration, it alleges first that the Domain Names were “purchased prior to any knowledge of the Claimants”. Leaving aside the fact that registration of the Domain Names took place after registration of the Complainant’s registered trade marks, I consider it highly improbable that the Respondent had no actual knowledge of the Complainant or its marks in November/December 1999. This claimed lack of knowledge of Ireland’s national airline is all the more improbable in view of the fact that the Respondent’s stated intention was to operate a website covering Eire interests in general and promoting the country.
7.21 The Respondent’s central ground of opposition to the Complaint is that the Domain Names were legitimately registered for the purpose of an internet radio site under the names “Radio Air Lingus” and/or “Radio Aer Lingus”. The term “Lingus” is said to be an approximate Irish translation of “line”, in the sense of “a coastline, radio wave, communications etc.” The reason for the alternative names “Air” and “Aer” is said to be “to cover English and Irish members”. Considering these contentions in conjunction with the Respondent’s claim not to have been aware of the Complainant, it is sufficient to say that I accept the Complainant’s submission that the contentions lack credibility.
7.22 Paragraph 4(a) of the Policy provides that a respondent may rely on the following as evidence that a registration is not an Abusive Registration:
“(i) Before being informed of the Complainant’s dispute, the Respondent has:
A used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services…
C made legitimate non-commercial or fair use of the Domain Name…”
7.23 The Respondent contends that it had made preparations to use the Domain Names in connection with its proposed internet radio site. It relies on submissions that the First Domain Name has been active for some time with a website and introduction pages linked to it. However, it has provided no physical evidence demonstrating how the Domain Name was used prior to the Respondent being informed of the dispute. As currently configured (to the extent that it is relevant), the Respondent’s site at www.airlingus.co.uk makes a cursory reference to “Radio Air Lingus Radio” which is stated to be “Another Disability UK Euro Site Opening Soon” and contains a link to the Irish Radio Transmitters Society.
7.24 The Respondent further submits that it has evaluated 160 radio stations for inclusion in the site and had designed pages to incorporate them and that it has earmarked 2,500 song titles with Irish themes for inclusion. However, the Respondent once again provides no physical evidence of these preparations.
7.25 In the light of the above matters, I have difficulty in accepting that, prior to being informed of the Complainant’s dispute (or at any time), the Respondent used, or made demonstrable preparations to use, either of the Domain Names in connection with a genuine offering of goods or services.
7.26 The Respondent also submits that the Domain Names have “prior to the Claimant’s complaint and since been maintained, renewed and used in the operation of a non-commercial website”. No further explanation is given of this (save possibly for the submission that the Respondent is a not-for-profit organisation.) In respect of the Second Domain Name, however, it does not appear to be disputed that no use has been made of the name. In respect of the First Domain Name, I do not accept that the Respondent’s evidence as to the content of the www.airlingus.co.uk website amounts to “legitimate non-commercial use” for the purposes of the Policy.
7.27 Finally, the Respondent relies on the report from its hosting company to the effect that 3,569 hits were received on the www.airlingus.co.uk site for August 2003. While the Respondent appears to interpret this as evidencing public awareness of “Radio Air Lingus”, I am unable to accept that this is the case. The Respondent has provided no material evidence of public awareness of “Radio Air Lingus”, which is not operational in any event, and there is therefore no convincing reason why anyone should have visited the relevant site for purposes connected with it. In my view, it is far more likely that the majority of the 3,569 hits were by individuals who were, in fact, seeking to access a site operated by the Complainant.
7.28 Under paragraph 2(b) of the Policy, it is for the Complainant to prove to the Expert on the balance of probabilities that the registrations of the Domain Names are Abusive Registrations. The Complainant has established a clear prima facie case to this effect, and while the Respondent has advanced submissions as to why the registrations of the Domain Names are not abusive, I find on the balance of probabilities that the registrations are Abusive Registrations for the reasons set out above. In particular, I find that both Domain Names were registered in a manner which, at the time when registration took place, took unfair advantage of or was prejudicial to the Complainant’s rights and that the First Domain Name has also been used in such a manner.
8. Decision
8.1 The Complainant has established on the balance of probabilities that it has Rights in a name or mark that is identical or similar to the Domain Names. It has also established on the balance of probabilities that the Domain Names are, in the hands of the Respondent, Abusive Registrations. Accordingly, the Complaint succeeds and I direct that both the First Domain Name and the Second Domain Name be transferred to the Complainant.
Steven A. Maier
Date: 29 September 2003