ADNDRC-decisions-summary-HK-0400054

Early Procedures:

A complaint in respect of the Disputed Domain Name was filed with the Hong Kong Office of the Asian Domain Name Dispute Resolution Centre ("ADNDRC") on 2nd November 2004. No Response from the Respondent was filed with the ADNDRC within the prescribed time. Notice of Appointment of Nigel Francis as the Panellist in this matter was issued to the parties on 6th December 2004.

Facts:

The Disputed Domain Name was first registered on 15th October 2003 and owned by the Respondent. The Respondent has failed to provide a Response or evidence to counter the complaint despite being given notice.

Contentions:

1. Identical / Confusingly Similar

The Complainant was founded on 24 September 1946 and is an international airline based in Hong Kong. The average turnover of the Complainant’s Group for the past 5 years is over HK$20,000 million. The Complainant’s Group employs over 35,800 staff in the world.

The Complainant has registrations for the mark “CATHAY PACFIC” (the “Mark”) and other marks incorporating “Cathay Pacific “registered in respect of a variety of goods and services throughout the world. The Complainant has spent considerable sums in advertising and promoting its goods and services under and by reference to the Marks.

The Complainant has registered, inter alia, the domain name “CATHAYPACIFIC.COM” on September 15, 1995. The web-site “www.cathaypacific.com” has been in active use since early 1996.

2. Rights and Legitimate Interests

The Respondent has not set up any dedicated website under the Disputed Domain Name. Internet users seeking to connect to the Disputed Domain Name are (though no longer) directed to the website of an entity known as “FlightReservationsOnline.com”. Instead, the website is further linked to the website of another entity known as “BookAirlineTickets.com” operated under the domain name www.bookairlinetickets.com which apparently provides a flight tickets reservation service. The Respondent’s use in this case therefore does not qualify as a legitimate or bona fide use of the Disputed Domain Name.

After the Complainant contacted the Respondent complaining at the registration of the Disputed Domain Name, the Respondent suspended access to the linked website. However, the operation of the flight ticket reservation service offered by the www.flightreservationsonline.com and/or www.bookairlinetickets.com websites is apparently unaffected. It is said that this further reinforces the argument that the Respondent has made no bona fide use of the Disputed Domain Name to offer any goods or services.

3. Bad Faith

The Respondent has registered the Disputed Domain name incorporating the Mark, with an intention of causing confusion in the minds of the public that the Respondent and/or the Respondent’s website is related to the Complainant.

The name/mark “CATHAY PACIFIC” is an invented mark and is not a term commonly used in the daily English language. It is said that it cannot be a mere co-incidence that the Respondent has chosen the Disputed Domain Name comprising of both the words “CATHAY PACIFIC” and “AIRLINE” as a domain name. Therefore the Respondent is seeking to ride on the name and reputation of the Complainant and uses the Disputed Domain Name, which is substantially similar to the Mark, deliberately in order to attract, for commercial gain, internet users to other two websites by creating a likelihood of confusion with the Mark.

Apart from the Disputed Domain Name, the Respondent appears to have played a part in the registration of another domain name www.cathaypacificairway.com which also includes the entirety of the Mark. Although the Respondent’s name is not expressly denoted as the Registrant, the WHOIS search result shows that the Respondent’s email address “mrtangnguyen@yahoo.com” is used as both the Administrative and Technical contacts, which suggests that the domain name is in fact in some way connected with the Respondent. In respect of the domain name www.cathaypacificairway.com, the Respondent acknowledged the Complainant’s rights and initially agreed to transfer the domain name to the Complainant as requested. The Administrative contact of the domain name has thus been changed to the Complainant’s email address for the purpose of effecting a transfer.

The Respondent failed to respond to a cease and desist letter and a reminder sent to the Respondent on 21 May 2004 and 29 May 2004 respectively by the Complainant’s authorised representative. It is said this is strong evidence showing that the Respondent blatantly ignores the Complainant’s rights in the Mark in respect of the Disputed Domain Name.

The Respondent has failed to provide a Response or evidence to counter the complaint.

Findings

Having considered the evidence provided by the Complainant it is the Panel’s finding that:-

1. Identical / Confusingly Similar

The Disputed Domain Name is confusingly similar to the Mark. The addition of the common word “airline” is not sufficient to remove the very real risk of confusion from the Mark or the Complainant’s own website and indeed in this context adds to it.

2. Rights and Legitimate Interests

Given the weight of evidence in relation to the substantial name and reputation vested in the Complainant’s Mark worldwide, and particularly in Asia, something the Respondent must have been aware of (particular given the linked website), the Panel finds that the Respondent’s prior use of the Disputed Domain Name was not bona fide.

3. Bad Faith

The Panel finds that the Respondent has sought to use the Disputed Domain Name to attract Internet traffic to the linked websites through creating a likelihood of confusion with the Complainant’s Mark.

Decision

The Panel orders that the Disputed Domain Name be transferred to the Complainant.

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