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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

AIDA Cruises German Branch of SocietГЎ di Crociere Mercurio S.r.L. v. Mustafa Kaya and Aida Turizm Seyahat AcenteliДџi LTD. Ећti.

Case No. D2008-1130

 

1. The Parties

1.1 The Complainant is AIDA Cruises German Branch of SocietГЎ di Crociere Mercurio S.r.L., Rostock, Germany, represented by Selting und Baldermann, Germany.

1.2 The Respondents are Mustafa Kaya, and Aida Turizm Seyahat AcenteliДџi LTD. Ећtaddesi, of Istanbul Turkey, represented by Avukat Ceyda Akaydin, LLm, Turkey.

 

2. The Domain Name and Registrar

2.1 The disputed domain name <aidatours.net> (the “Domain Name”) is registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com (the “Registrar”).

 

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2008. On July 28, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 28, 2008 the Registrar transmitted by email to the Center its verification response confirming that the Respondent i.e. Mustafa Kaya was listed as the registrant and providing the contact details.

3.2 On August 13, 2008 the Center sent an email to the Registrar stating that whilst the Registrar had confirmed the name of the Domain Name registrant to be “Mustafa Kaya”, the WhoIs information in relation to the Domain Name identified the registrant as “mustafa kaya mustafa kaya”. It therefore sought clarification as to who was the registrant. The Registrar responded by email the same day stating as follows:

“The Registrant has listed the name “mustafa kaya mustafa kaya” on the domain record, which appears to be a duplicate, but we cannot determine that for sure”.

3.3 The Center on receipt of this email forwarded it to the Complainant’s lawyers stating that the Registrant was listed as “mustafa kaya mustafa kaya”. It then went on to state:

“For an effective implementation of the decision in the event of an eventual transfer of the domain name, please submit in only one page (.PDF) duly signed the corresponding Amendment to the Complainant.”

3.4 The Complainant filed a one page Complaint amendment in these terms on August 18, 2008.

3.5 The Registrar’s verification response also identified that the Domain Name was due to expire on September 27, 2008. Accordingly, on July 28, 2008 the Center sent an email to the Registrar referring to paragraph 3.7.5.7. of the ICANN Expired Domain Deletion Policy and seeking clarification of whether any action was required by the parties to keep the Domain Name under Registrar lock so that the administrative procedure could continue. The Registrar responded the following day quoting the terms of paragraph 3.7.5.7. of the ICANN Expired Domain Deletion Policy in full and then stating:

“Either party may contact me directly to pay the $15.45 renewal fee by credit card or Pay Pal”

3.6 The Complaint responded to this by email on August 18, 2008 stating that it would pay the renewal fee in relation to the Domain Name and the Registrar confirmed in an email to the Center dated August 28, 2008 that the Domain Name was renewed by the Complainant.

3.7 The Center verified that the Complaint as amended 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”).

3.8 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 August 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2008.

3.9 The Response was filed with the Center on September 8, 2008. The Response stated that “Mustafa Kaya” was the “technical advisor of the real domain owner” and that the “true owner” of the Domain Name was Aida Turizm Seyahat Acenteliği LTD. Şti. Therefore, it claimed that Aida Turizm Seyahat Acenteliği LTD. Şti. should be treated as a respondent in these proceedings.

3.10 The Center appointed Matthew S. Harris as the sole panelist in this matter on September 23, 2008. 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

4.1 The Complainant is a cruise line, based in Rostock, Germany. It is one of the market leaders in Germany with an annual turnover of €408 million in 2006. It operates cruises in Europe, the United States of America, the Caribbean and Asia.

4.2 The Complainant is the owner of the following trademarks:

(i) German registered trademark no. 39701328, dated January 15, 1997 in respect of the word “Aida” in classes 12, 16, 25, 28, 39, 41, 42, 43 and 44; and

(ii) Registered¹ community trademark no. 4681987, dated October 12, 2005 in respect of the word “Aida” in classes 3, 12, 16, 18, 25, 25, 28, 30, 32, 33, 39, 41, 43 and 44.

4.3 The exact nature of the Respondents is discussed later on in this decision. However, Mr Mustafa Kaya would appear to be a freelance Internet and technical advisor. Aida Turizm Seyahat Acenteliği LTD. Şti (“Aida Turizm”) would appear to be a company registered in Turkey that provides tourism and travel agency services.

4.4 The Domain Name was registered in the name of the Mustafa Kaya on September 27, 2005. The Domain Name has been, and continues to be used in connection with an English language website that contains a home page that uses the prominent text “aida presents turkey de luxe”. There is a drop down list of links to various hotels but there are also tabs to other pages on the website, such as “Round trips”, “Hotels”, “Cruise”, “AIDA Magazine”, “Service”, “Incentive” and “Contact”. On the “Cruise” page are what appear to be pictures of ten “traditional Turkish gulet[s]” and these gulets or boats appear to be named Aida 1, Aida 2, Aida 3 etc. The “Contact” page on the website provides an email address, fax and telephone numbers and provides the address “Aida Tourism Karina iş merkezi, Göktürk mevkii,Kemerburgaz - İstanbul – TURKEY”.

 

5. Parties’ Contentions

A. Complainant

5.1 The Complainant contends that the Domain Name is identical to the its AIDA trademarks. It states that the “.net” TLD for the Domain Name can be disregarded (citing STX LLC v. Yu nae ho, Jinsu Kim WIPO Case No. D2006-0567) and that the tours element of the Domain Name can also be disregarded, since it is solely descriptive of the services that the Respondent offers and for which the Complainant has protection.

5.2 The Complainant’s contentions in relation to rights or legitimate interests are set out in a single paragraph in the Complaint and therefore it is easiest simply to quote from this in full. It states:

“The Respondent has no rights to use or legitimate interests in respect of the disputed domain name. A legitimate interest would require that the Respondent uses the domain not commercially or the use is connected with a bona fide offering of goods and services. The Respondent has not obtained a right to use the prior registered trademarks at issue. He has obtained neither a license nor permission to use the trademarks from the Complainant. The Respondent uses the domain commercially offering online travel agency services to be paid for... A bona fide offering of services can not be taken from the information of the website of the Respondent.”

5.3 Similarly, the Complainant’s contentions in relation to bad faith registration and use extend to two short paragraphs. It states:

“The Respondent uses the disputed domain name in bad faith. The use of a domain being identical with a trademark for identical goods constitutes a use in bad faith. The services which are offered under the disputed domain are identical, at least close similar to the services the Complainant has protection for. The service of an online travel agency is a part of travel arrangements. Travelers mostly need a place to stay overnight, help for tour arrangements at the destination, etc. where the Respondent wants to be of help.

The Complainant has the right to the trademark through Europe ... and the Respondent offers his online travel agency services in English language ....”

B. Respondent

5.4 The Respondents contends that the name of the true Respondent is “Aida Turizm”, which means “Aida Tourism” in Turkish and, therefore, its name is “more similar to the domain name that is subject to the case”. It exhibits an Istanbul Chamber of Commerce Activity report dated May 7, 2008 that gives as the date of commencement of business of “Aida Turizm” of December 9, 2003. It also exhibits a Ministry of Culture and Tourism certificate for “Aida Tourism”. This records the “First Document Receiving Date” as June 6, 1999, the “Date of Issue” as December 31, 2002, the “Date of Preparation” as June 30, 2006 and the “Preparation Reason” as “Transfer and Address and Title Changing.

5.5 So far as rights or legitimate interests are concerned, the Respondents contend that Mr Kara has provided website development services to Aida Turizm for four years. A website development agreement dated May 10, 2008 and invoices dated September 3, and September 5, 2008 is offered as evidence in this respect. It also refers to the content of the website operating from the Domain Name that is said to support the Respondents’ case.

5.6 The Respondents contend that Aida Turizm has been using the Domain Name for four years. Accordingly, it claims that it has been using the name and had commonly been known by the name and falls within the scope of paragraphs 4(c)(i) and (ii) of the Policy.

5.7 So far as bad faith is concerned, the Respondents assert that the Domain Name was not registered for the purpose of sale, Aida Turizm and the Complainant are not competitors and that Aida Turizm has no intention to disrupt the Complainant’s business.

5.8 The Respondents also assert that:

“the [D]omain [N]ame has not been registered to make profit on the Complainant’s name. The name “aida” is a commonly use word in tourism. For example “www.aidatours.com” is not the website of the complaint.”

 

6. Discussion and Findings

6.1 The Panel has reviewed the parties’ submissions. In the light of this material, the Panel finds as set out below.

6.2 Under the Policy the Complainant must satisfy the requirements set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

(ii) the Respondents have no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and

(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

6.3 The Panel will consider each of these requirements in turn. However, before doing so it is first convenient to address the question of the identity of the Respondents.

A. Identity of the Respondents

6.4 There is a slight complication in this case in that the Respondents contend that although the Domain Name was registered in the name of “mustafa kaya mustafa kaya” this does not represent who actually owned or controlled the Domain Name. First, there seems to be an unintended repetition of the name “Mustafa Kaya”, someone who is said to be an independent information technology consultant. Second, there is the contention that Mr. Kaya registered the Domain Name on behalf of “Aida Turizm”. It is implicit in this contention that the questions of “rights and legitimate interests” and “bad faith” should be judged by reference to the activities of “Aida Turizm” rather than Mr. Kaya.

6.5 The issue of identification of the “correct” respondent for the purposes of proceedings under the Policy was considered in some depth by this Panel in Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886 and Smith & Nephew plc v. Wesley Perkins, Smith and Nephew Trading WIPO Case No. D2008-1029. The Eva Padberg decision questions whether it really is significant who is named as the respondent on the face of a complaint. However, it concluded that ordinarily a complaint can be treated as procedurally compliant if the complaint identifies the entity named in the relevant publicly available WhoIs database as the registrant of the domain name on the date that the complaint is filed (see paragraphs 5.9 and 5.10 of the Eva Padberg decision)².

6.6 Further, whilst ordinarily the starting point of the assessment of who is to be treated as the respondent for the purposes of the assessment of “rights and legitimate interests” and “bad faith”, is the entity recorded on the WhoIs register, this may not be appropriate if there is evidence before the panel that the domain name has been registered on behalf of some other party.

6.7 In this case, the claim is that the registration was on behalf of Aida Turizm. There are some problems with the evidence that the Response provides in support of that assertion. For example, there is a document before the Panel that purports to record a contract between Mr Kaya and Aida Turizm in 2005 and the Turkish language version of these documents do appear to record at two places a date in 2005. However, the certified English translations of these documents record two dates in 2008. If this is an error, it is odd that this error is repeated twice in the document. Then there is a “Certificate of Authority” dated May 10, 2005 and that date is the same in both the Turkish original and Turkish translation. But this is a rather odd document. Whilst it is convenient for these proceedings, the Panel does not quite understand what it was otherwise intended to achieve. It obviously was not used to enable Mr Kaya to register the Domain Name in the name of “Aida Turizm”.

6.8 If the contract and the Certificate of Authority are disregarded, then so far as Internet activity is concerned all that is left is a series of third party invoices all of which would appear to post date the commencement of proceedings. One of these documents purports to have been issued by turkticaret.net and the Respondent contends that this shows that “Aida Turizm” paid the fees in relation to the Domain Name from September 2005 to October 2007. However, why this document is dated September 2008 is not explained. Further, whilst the Turkish language original document expressly refers to <aidatours.net>, this appears to have been written in by hand over obscured type and no mention of the Domain Name is to be found on the certified English translation.

6.9 Next there is the assertion in the Response that Aida Turizm has been using the Domain Name for four years. How this can be the case when the Domain Name would appear only to have been registered three years ago is far from clear. Perhaps this is merely an error and reflects a lack of care on the part of the lawyers representing the Respondent. However, this does not inspire confidence in the other assertions of fact to be found in the Response.

6.10 Next there is the nature of the website operating from the Domain Name itself. From a presentational perspective it appears quite professional. It is not, for example, the sort of web page that looks as if it has been generated by a “domain name parking service” and there appears to be clear disclosure of on whose behalf the website appears to operate. However, there are aspects of the site that are curious. There is what looks like a language selection button but there seems to be no way to set this to any other language than English. Whilst the website is only in English, the language is sometimes poor and contains various typographical errors. For example, the “about us” page on the website reads as follows:

“Aida is a special incomming agency for luxury and life style traveller far From mass tourism and serve always the maximum”

6.11 There is also on the homepage of the website a link that reads “online reservation system is ON!” but the link leads to a non-existent page. When clicked upon a “Not Found page” is displayed on the users browser. Further, parts of the website appear incomplete. For example, under the heading “Round Trips” there are next to appropriate photographs short descriptions of various tourist destinations in Turkey. However, the description for Ephesus is missing and in the place it should be are the words “Ephesus Description”. It is odd that a genuine business would allow these errors to exist in its website, particularly if the Response is to be believed, Aida Turizm as been using the Domain Name for many years.

6.12 All in all the material is such that the panel is somewhat sceptical and wary of the Respondents’ contentions. However, there are a number of things that do seem reasonably clear. A Chamber of Commerce Certificate does appear to evidence there having been a company using the Aida Turizm name since December 2003 (i.e. some time prior to the registration of the Domain Name). Further, a Ministry of Culture and Tourism certificate does suggest that perhaps as early as 1999 there was a travel agency that operated under the name (when translated in to English) “Aida Tourism and Travel Agency”. The Panel has no reason to believe that when the Respondents’ lawyer states that he represents both Mr Kaya and Aida Turizm, that this is not true.

6.13 Further and crucially, the Complainant has not sought to bring a positive case to the effect that somehow the website operating from the Domain Name is a sham and does not promote a genuine tourism business. In fact, it appears to allege precisely the opposite. For example, it refers at one stage in the Complaint to the “online travel agency services of the Respondent being hotel reservation services, travel arrangement and organization of tours as part of the vacation” and at another it asserts that “the Respondent uses the domain commercially offering online travel agency services to be paid for”.

6.14 In the circumstances, the Panel is prepared (albeit with some hesitation) to accept for the purposes of these proceedings that the Domain Name was registered for and on behalf of “Aida Turizm” and that “Aida Turizm” is a genuine tourism business of some sort. In the circumstances, it accepts that Aida Turizm is a proper Respondent for the purposes of these proceedings and this decision proceeds on this basis.

6.15 In doing so the Panel reaches no finding of fact as to how exactly how long the Domain Name has actually been used to promote the Aida Turizm business.

B. Identical or Confusingly Similar

6.16 It is clear that the Complainant is the owner of two registered trademarks that comprise the word AIDA. The Domain Name can only sensibly be understood as a combination of the word “aida” with the English word “tours”. Therefore if one disregards the “.com” TLD suffix, the only difference between the Domain Name and these two marks is the addition of the ordinary word “tours”. Whilst the Panel rejects the Complainant’s contention that the Domain Name is “identical” to the Complainant’s marks, it does accept that the Domain Name is confusingly similar to those marks. The addition of the word “tours” does not prevent the Domain Name from being confusingly similar to the Complainant’s mark. As the Complainant states, “tours” is descriptive of services covered by the Complainant’s marks.

6.17 The Respondents’ contention that the Domain Name is closer to the name it uses for its business than the Complainant’s marks, misunderstands the way in which the Policy operates. The extent to which a respondent has previously used a name incorporated in a domain name may be relevant to the issues of rights or legitimate interests and bad faith. However, it is irrelevant to the assessment under paragraph 4(a)(i) of the Policy. This is not a comparative exercise as to who has the “better rights” in a particular name. It is simply a comparison between the marks relied upon by a complainant and the domain name in issue.

6.18 In the circumstances, the Complainant has made out paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

6.19 The Respondents contends that it has been using the “Aida Turizm” name for several years and that as a consequence it has rights and legitimate interest in the name within the scope of paragraph 4(c)(i) and 4(c)(ii) of the Policy.

6.20 Paragraph 4(c)(i) gives as an example of legitimate rights and interest:

“before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services”

and paragraph 4(c)(ii) provides:

“you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;”

6.21 The Panel is unconvinced that the Respondents can rely upon paragraph 4(c)(ii) of the Policy. The Second Respondent’s name is “Aida Turizm” and according to the Response that translates into English as “Aida Tourism” and not “Aida Tours”. Further, the website refers throughout to “Aida Tourism” and not “Aida Tours”. It is conceivable that by use of the Domain Name alone the “Aida Turizm” has become “commonly known” by the Domain Name, but there is no evidence before the Panel to this effect. Indeed, it is not even clear that the “Aida Turizm” is commonly known by the “Aida” name. There is no evidence before the Panel as to the extent of “Aida Turizm” trading activities that might support such a conclusion.

6.22 Paragraph 4(c)(i) appears to be more relevant. However, the question of whether or not the name has been used in connection with a bona fide offering of services, depends in this case upon whether or not the Domain Name was chosen with the intention of taking advantage of the Complainant’s reputation in the “Aida” mark. Whilst, it is possible in this case that the “Aida” was chosen because “Aida” was part of “Aida Tours” name, it does not necessarily and inevitable follow that the offering is bona fide. If both the choice of company name and the choice of Domain Name were part of a broader scheme to take advantage of the reputation of the Complainant’s mark, it will not assist the Respondent to show that the company name was chosen first. Of course, the longer the period between the choice of company name and the choice of domain name, the harder it may be for a complainant to prove such a scheme. But this is an issue of evidence rather than principle.

6.23 In this case the Panel needs to reach no final finding on this point given its separate determination below on the issue of bad faith registration and use.

D. Registered and Used in Bad Faith

6.24 Unfortunately for the Complainant, the way in which it has constructed its case makes it very difficult for the Panel to reach a finding of bad faith registration or use. It contends that “the use of a domain being identical with a trademark for identical goods constitutes a use in bad faith”. This contention without more suggests a fundamental misunderstanding of the way in which the Policy operates.

6.25 Indeed, even if there is use of an identical mark in relation to identical goods and services in a territory where that trademark is registered³ so that there is prima facie trademark infringement, that is not enough to establish bad faith under the Policy. As the panel stated in Delta Air Transport NV (trading as SN Brussels Airlines) v. Theodule De Souza, WIPO Case No. D2003-0372:

“trademark infringement and abusive registration within the meaning of para 4(a) of the Policy are not the same thing” and “the fact that a particular set of facts may constitute trademark infringement has of itself no bearing on whether it is an abusive registration”⁴

6.26 What is required is something more. There is a non-exhaustive list of examples of bad faith registration and use set out at paragraph 4(b) of the Policy. However, usually it will be necessary for a complainant to show that the domain name was registered with knowledge of the Complainant relevant mark and with the intention of taking in some way advantage of that registration or the mark’s reputation.

6.27 There is very little to support such a finding in this case. The Complainant contends that it is a significant German business. The implication seems to be (although even this is not expressly stated) that the AIDA mark is well known in Germany. However, no attempt is made to describe the extent to which that reputation extends to Turkey, where the Respondents would appear to be located.

6.28 Aida Turizm purports to conduct business in a very similar sector to that of the Complainant. Perhaps therefore, Aida Turizm would be expected to have heard of the Complainant. But this is simply speculation on the part of the Panel. There is no allegation to this effect in the Complaint, and for the Panel to jump to this conclusion would be unwarranted on the material before it. Indeed, it would be particularly dangerous to do so in this case where although the Domain Name was registered in 2005, Aida Turizm (or it predecessors in business) may have used the Aida term from a much earlier date.

6.29 Further, the Complainant does not contend that the Aida name is exclusively referable to the Complainant. The Respondents in contrast contend it is a term that is commonly used in the travel industry (although it puts forward no evidence in this respect)⁵.

6.30 In short, it is the Complainant that bears the burden of proof in showing each of the elements required by the Policy. The way in which the Complainant has chosen to construct its case means that the Complainant has failed to carry that burden on the provided record in this particular case.

6.31 It is a decision that the Panel has reached with some hesitation given that there are aspects of the Respondent’s case that raise concern⁶. However, those concerns are insufficient to justify a finding in favour of the Complainant.

6.32 In the circumstances, the Complainant has not made out the requirements of paragraph 4(a)(iii) of the Policy.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Matthew S. Harris
Sole Panelist

Date: September 26, 2008

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¹ The documents filed in respect of this trademark suggested that the mark was still pending at the OHIM but a search of OHIM's online register reveals that the mark proceeded to registration on January 24, 2008.

² And the Panel would suggest that even this has to be tempered with a degree of common sense. In this case the Center suggested to the Complainant that since the recorded WhoIs registration details were “mustafa kaya mustafa kaya” and not “Mustafa Kaya”, and the Complainant should amend its complaint accordingly.

The Panel questions whether this was really necessary. Although it was no doubt good practice for the Center to have brought this discrepancy to the attention of the Complainant, the Panel would suggest that there was in this case little real doubt that the Complainant identified and was directed to the entity recorded on the register. See also the comments of the Panel at paragraph 5.12 and 5.13 of the Eva Padberg decision.

³ It is unclear whether the Complainant alleges this. It certainly claims no trademark right in Turkey. Of course, the website is in English and it may in part be directed to English speaking Internet users in parts of the European Community. This in turn raises questions of possible infringement of the Complainant's Community Trade Mark. This may be what the Claimant seeks to allege in the last line of its assertions as to bad faith (set out in full in paragraph 5.3 above). However, this is far from certain.

⁴ This statement has been cited with approval in a number of cases including, for example, 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461 and Burger King Corporation v. SC Burger King S.R.L., WIPO Case No. DRO2008-0012.

⁵ The Respondents refer to “www.aidatours.com” but at the date of this decision no tourism related website was operating from this location. However, whilst it does not form part of the reasoning of the Panel in this case, the Respondents' assertion here does not strike the Panel as implausible. Many people will be familiar with “Aida” as the name of an opera by Verdi and of the name of a character in that opera. According to Wikipedia, Aida is an Arabic female name meaning “visitor” or “returning”.

⁶ The Panel has already expressed a number of these concerns earlier on in this decision. There is also something else in this case that the Panel finds puzzling. When the Center brought to the attention of the parties the fact that the Domain Name was about to expire, it was not the Respondents that paid the renewal fee but the Complainant. The Registrar stated on July 29, 2008 that either party could pay the relevant renewal fee, and the Complainant did not offer to pay it until August 18, 2008. If “Aida Turizm” was using the Domain Name in connection with a genuine business offering it seems strange that in that three week period it did not offer to pay the necessary fee itself.