WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BAA plc, Aberdeen Airport Limited v. Mr. H. Hashimi
Case No. D2004-0717
1. The Parties
The Complainants are BAA plc of London, United Kingdom of Great Britain and Northern Ireland, and Aberdeen Airport Limited of, Paisley, Scotland, United Kingdom of Great Britain and Northern Ireland. They are represented by Lovells, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Mr. H. Hashimi, of Abu Dhabi, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <aberdeenairport.com> the “Domain Name”) is registered with Register.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2004. On September 7, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name. On September 7, 2004, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts. The Center verified that the Complaint 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”).
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 September 8, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2004. The Response was filed with the Center on September 18, 2004.
The Center appointed Warwick Smith as the sole panelist in this matter on September 23, 2004. 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.
On September 29, 2004, the Panel requested further evidence from the Complainants directed to the question of their use of the expression “Aberdeen Airport” prior to the date on which the domain name was registered. In response to that request, the Complainants filed a supplementary statement on October 7, 2004. The Respondent was allowed until October 14, 2004, to file a Supplementary Response, and the time for the Panel to give its decision was extended to October 21, 2004.
The Respondent duly filed a Supplementary Response, and both parties’ supplementary filings have been considered.
4. Factual Background
The Complainants
The First Complainant, BAA plc is the largest airport operator in the United Kingdom. Through various subsidiaries it operates the largest airports in the United Kingdom, including the Glasgow, Edinburgh, and Aberdeen Airports in Scotland. The Second Complainant, Aberdeen Airport Limited is a wholly owned subsidiary of Scottish Airports Limited, which is in turn a wholly owned subsidiary of the First Complainant.
The Second Complainant owns and operates an airport situated at Dyce (the “airport”), which is 7 miles from the Scottish city of Aberdeen. In the Complaint, the Complainants say that “together” they operate the airport, which they say trades as “Aberdeen Airport”. In their supplementary filing, the Complainants explain that most operational activities at the airport are managed by the Second Complainant, but a number of activities are managed or supported at a group level, by the First Complainant. These “group” activities include retail marketing and promotion, and some other activities such as procurement and legal services.
It appears from the first annexure to the Complainants’ supplementary filing, that the First Complainant (then known as British Airports Authority) acquired its interest in the airport in or about 1975. The Second Complainant was not incorporated until 1986.
The airport is clearly a substantial operation. It handles 2.5 million commercial passengers each year, and provides facilities for a total of 15 airlines. It is also said to be the world’s busiest commercial heliport.
The Complainants’ Trademarks
First, the Complainants rely on the First Complainant’s United Kingdom registered service mark number 2136624, BAA ABERDEEN (“the device mark”). The device mark was registered in international class 39 with effect from June 20, 1997, and covers a range of services one would normally expect to be provided at an international airport (e.g. airport ground support services, ground and air traffic control services for aircraft, aircraft runway services, aircraft fuelling services, the provision of reception and waiting areas for airport passenger departures and arrivals, airport cargo handling, and the storage, loading, and handling of luggage).
The device mark includes, immediately after “BAA Aberdeen” a device consisting of a small dark square with a diagonal white “stripe” running from the bottom left hand corner of the square to the top right hand corner. The “stripe” narrows as it approaches the top right corner of the box, and a small dark triangle is positioned slightly above and to the right of the box. The effect of the device is to give the impression of an aircraft which has just taken off from the (white stripe) runway contained within the box.
Secondly, the Complainants rely on what they say is a long, well-established use of the name ABERDEEN AIRPORT in relation to the operation of the airport. The Complainants say that the airport first opened in 1935, and that it has a long history of trading under the name ABERDEEN AIRPORT.
The Complainant’s Websites
The Respondent has produced printouts showing that the First Complainant has registered a number of “aberdeenairport” domain names. These include <aberdeenairport.biz> registered in November 2001, <aberdeenairport.info> registered in October 2001, <aberdeenairport.org.uk> registered in October 2002, and <aberdeenairport.net> also registered in October 2002. It appears from the material produced by the Respondent that the First Complainant has not yet developed websites at these domain names.
The Respondent has also produced a WHOIS search showing that <aberdeenairport.co.uk> was registered by Isoact Limited on February 18, 2000.
The Respondent and the Domain Name
The Respondent’s present address is in Abu Dhabi, in the United Arab Emirates. However, one of the WHOIS reports produced by the Complainants shows an address for the Respondent until June of 2004, in County Durham in the United Kingdom.
The domain name was registered on March 23, 2000.
The Complainants have produced downloads from a website to which the domain name resolves (“the Respondent’s website”) dated February 27, 2004, May 26, 2004, July 23, 2004, and September 3, 2004, but there is no evidence of how the Respondent was using the domain name for the period of nearly 4 years before February 2004. Each download consists of 2 pages, and they are in similar format. The first page from each download is prominently headed “Aberdeen Airport”. The February 2004 download commences, underneath that heading, with the words: “Welcome to Dyce Captain … you are cleared to la….” There follows what appears to be a picture of a pilot wearing old-fashioned flying attire (including goggles and oxygen mask). Below the picture, follow the words:
“Landing fees at Dyce are more than those at Dundee …
You still wish to proceed Captain …?
Are they sky high?
Not quite as high as Edinburgh
Alright … Give me vectors for Dundee …
Why Captain?
Because I would rather be flying to Dundee Airp…”
The succeeding downloads from the Respondent’s website (May 25, 2004, July 23, 2004 and September 3, 2004), feature the same text as that just quoted.
The pictures on each of the four downloads from the Respondent’s website are different. The May 26 download contains a picture, underneath “Welcome to Dyce Captain … you are cleared to …”, of a man sitting in what appears to be a child’s toy helicopter, of the kind one might find in a shopping mall. The July 23 download features a picture of someone holding a small bird in the palm of her hand. The text above this picture reads: “Welcome to the lice Captain … you are cleared … land …”
The September 3 download commences with the words:
“Aberdeen Airport”: Welcome to our spice Captain … You are cleare …sand ….”
Beneath that text, there is a photograph of what appears to be some aircraft embarkation steps and a basic aerobridge, leading into the NASA John F Kennedy Space Centre.
All of the downloads from the Respondent’s website contain hyperlinks to other websites, which are accessed by clicking on the words Dundee Airport, Durham Tees Airport, and Isle of Man Airport respectively. Each download also contains a link to what appears to be the Respondent’s hotmail address.
The Respondent says that the domain name is not used for trading or commercial purposes. As he puts it, the domain name is “solely used in the tribute of aviation”. The Respondent explains that he is a private pilot with several decades of experience in non-commercial aviation. He says he has other aviation-related websites, and that he also uses aviation-related emails such as “pilot@”, “pilots@”, “runways@”, “approach@”, etc. He says the Respondent’s website “purely pertains to general aviation”, and has no impact on the Complainants whose main business is commercial. The Respondent says that the domain name is not registered with any search engines on the Internet.
Correspondence between the Parties
The Complainants have produced copies of emails exchanged between Moira Millar (an intermediary acting for the Complainants) and the domain name registrant. The first email from Ms. Millar was dated September 1, 2003, and it was addressed to the email addresses for the Respondent which appeared in the Complainants’ February 2004 and July 2004 WHOIS searches on the domain name. In the September 1, 2003 email, Ms. Millar enquired about the current use of the domain name, and whether the Respondent had transferred the domain name to anyone else. The email expressed interest in acquiring the domain name should the Respondent be willing to dispose of it for a mutually agreeable sum.
Ms. Millar received a reply dated September 7, 2003, from “A Stewart”, apparently on behalf of the Respondent. The response advised that Mr. Hashimi would only consider serious offers. Ms. Millar was invited to “forward your offer if you wish”.
In the emails which followed, Ms. Millar made various offers to acquire the domain name. She started at $750, but that offer was rejected as being “a few decimals out”. A Stewart advised that “only serious offers can be considered”.
Ms. Millar progressively upped her offers to acquire the domain name, starting with £1000 GBP on October 22, 2003, increasing that to £5000 GPB on December 1, 2003, and finally offering £10,000 on March 3, 2004. The final reply from A Stewart, on March 6, 2004, was: “This domain name is not for sale at this price”.
In his Response, the Respondent denies that these emails were in fact communications with him. He says that the email address used by the Complainants or their agents was not the official registered contact email for the domain owner. He submitted that there was nothing in the emails to confirm that the Complainants had actually contacted him.
5. Parties’ Contentions
A. Complainant
1. The domain name is identical to the mark ABERDEEN AIRPORT, in which the Complainants or either of them has rights derived from their long history of operating the airport under the ABERDEEN AIRPORT name.
2. Under United Kingdom and European Union law, there is nothing to prevent a place name being protected as a trademark as long as, before the date of application for registration, the mark has in fact acquired a distinctive character as a result of the use made of it (citing section 3(1)(c) Trademarks Act 1994 (UK)) giving effect to the wording of the trademark Council Director No 89/104/EEC of December 21, 1988, which is operative throughout the European Union).
3. The domain name is confusingly similar to the device mark.
4. The Respondent has no rights or legitimate interests in respect of the domain name, for the following reasons:
(a) The Complainant has not licensed the Respondent to use the domain name or to operate the Respondent’s website.
(b) The Respondent is not known by the name “Aberdeen Airport”, and does not operate a business of that name.
(c) The Respondent is not using the domain name in a legitimate non-commercial or fair way. He is using the domain name (incorporating the Complainant’s mark) to attract internet users to his website to give details regarding businesses that are in no way connected to the Complainants’ business (citing Monty and Pat Roberts v. J Bartel, WIPO Case No. D2000-0300).
(d) The Respondent has not used the domain name in connection with any bona fide offering of services or goods. The site does not offer any services.
(e) There is nothing in the use of the domain name to indicate that the site is devoted to criticism of the Complainants. While the Respondent may be perfectly free to express his views about the quality or characteristics of the Complainants, he is not entitled to identify himself as one of the Complainants.
(f) The Respondent is making an unfair use of the Complainants’ mark – it is being used to mislead consumers (who will assume that the Respondent’s website is that of the Complainants, or is licensed by them), and to tarnish the Complainants’ mark.
5. The domain name was registered and is being used in bad faith, for the following reasons:
(a) The Respondent knew about the Complainants’ ABERDEEN AIRPORT mark when the domain name was registered.
(b) There is no legitimate purpose to which the Respondent could have put the domain name at the time he registered it.
(c) References by the Respondent to airports in the United States which include as part of their names the word “Aberdeen”, are irrelevant. The domain name was not intended to refer to those airports.
(d) Given his knowledge of the Complainants’ business, the Respondent would have expected that a proportion of consumers inputting the domain name would expect to find a website operated or authorized by the Complainants. The Respondent’s use of the domain name is intended to divert Internet users to the Respondent’s website, by creating a likelihood of confusion.
(e) The effect of the Respondent’s registration of the domain name is to block the Complainants from obtaining a domain name which incorporates the trademark of one of their major businesses. When done in the .com gTLD domain, this has the potential to disrupt the Complainants’ business, and the Respondent would have been aware of that in March 2000, when he registered the domain name.
(f) The Respondent’s use of the domain name points to an intention to tarnish the Complainants’ trademarks or dilute their goodwill. The use of the trademark prevents Internet users from reaching the Complainants’ own website, and this impacts on the Complainants’ business.
(g) The email correspondence shows that the Respondent’s intention was to sell the domain name for a sum of money at least several times higher than £5000. His primary intention was to sell the domain name to the Complainants for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name.
(h) The Respondent owns other domain names pertaining to airports, including <dundeeairport.com>, <durhamteesairport.com>, and <iomairport.com>. The Respondent has no legitimate rights in those domain names either, since the airports at those locations are owned and operated by the Government (Dundee Airport and the Isle of Man Airport), or the local councils (Durham Tees Airport). The sites operated at these domain names are not those of the operators of the airports. The Respondent is registering domain names to interrupt the legitimate business interests of other parties. This constitutes evidence of a pattern of registering domain names which prevents the owner of a trademark or service mark from reflecting the mark in a corresponding domain name.
B. Respondent
1. The airport is not known as “Aberdeen Airport”. It is well-known by aviation enthusiasts and airline and tour operators as “Aberdeen Dyce Airport”.
2. “Aberdeen Airport” is the shortest way in the English language to describe any airport in the vicinity of a city, town, or village called “Aberdeen”. That method of nomenclature is commonly adopted worldwide, and it does not confer any trademark rights in the combination of the name of the city or town, and the word “airport”.
3. The device mark is totally different from the domain name. No average member of the public would confuse the device mark with “Aberdeen Airport”.
4. The Complainants’ main business is commercial, whereas the Respondent’s website relates only to general aviation. The contents of the Respondent’s website are humorous and factual, and are not abusive in nature. The Respondent’s website is maintained for no financial gain to the Respondent, and it does not divert traffic from the Complainants’ websites or otherwise disrupt the Complainants’ business.
5. The registration of the domain name was not associated with systematic block registrations, nor with bulk registrations with different extensions. (Compare that with the Complainants, who have systematically registered in excess of 6 “aberdeenairport” domain names, none of which is currently active. The Complainants have no active “aberdeenairport” websites that the public can visit or be diverted from).
6. There is nothing published on the Respondent’s website that purposefully confuses members of the public or leads them to the belief that the domain name is connected to the plaintiffs or their business.
7. The Respondent does not need the Complainants’ authority to own the domain name or operate the “tribute to aviation” on the Respondent’s website. That use is a legitimate, non-commercial and fair use of the domain name, without any intent for commercial gain to misleadingly divert customers or to tarnish the reputation or harm the goodwill or business of the Complainants.
8. The Respondent has kept full contact details for the domain name ownership up to date. No-one would be led to believe that the domain name is connected to the Complainants’ business.
9. The domain name was not registered in bad faith. The domain name was registered after the Complainants registered <aberdeenairport.co.uk>. The Complainants have not proved that the email correspondence reached the actual owner of the domain name. The Complainants were intent, from the outset, on attempting to build a legal case, in order to strip the Respondent from his right to the domain name. The domain name was not acquired for the purpose of selling, renting or otherwise transferring to third parties.
10. The Complainants’ intention has been to instill confusion in an effort to justify their case.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:
(i) That the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.
Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Paragraph 15(a) of the Rules requires the Panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
The Device Mark
The Panel is not persuaded that the domain name is confusingly similar to the device mark. There is clearly no visual similarity, as the only common component of the device mark and the domain name is the name of the city Aberdeen. Also, it is to be remembered that the device mark is not a word mark – in addition to the words BAA ABERDEEN, there is the small box/departing aircraft device, which of course could not be replicated in any domain name but which provides another significant difference when one undertakes a visual comparison of the device mark and the domain name.
Nor in the Panel’s view is there sufficient aural, or phonetic, similarity between the domain name and the device mark to constitute “confusing similarity”.
It is when one considers the “idea” of the mark that the Complainants’ case based on the device mark comes closest to establishing confusing similarity. The Panel is prepared to accept that a significant number of consumers in the United Kingdom would understand that the First Complainant was formerly known as British Airports Authority, and that that body was (and as “BAA plc” is) responsible for the management and operation of major airports in the United Kingdom. While the letters “BAA” are not contained within the domain name, the generic word “airport” is contained within both the “translation” of the initials “BAA” and the domain name.
But in the Panel’s view, any similarities in the respective ideas, or impressions, of the domain name and the device mark, do not come close enough to meet the “confusingly similar” test in paragraph 4(a)(i) of the Policy. The device mark conveys the impression of an Aberdeen branch of the corporation which undertakes the management and operation of major airports in the United Kingdom. In other words, the name of a branch of a trading entity. That seems to the Panel to be a different “idea” from the domain name’s more general reference to the package of services and facilities which Internet users would associate with an “airport” serving the city of Aberdeen.
The other mark relied on by the Complainants, was the alleged common law mark, ABERDEEN AIRPORT. Obviously any ABERDEEN AIRPORT mark would be identical to the domain name. The question is whether the Complainants have provided sufficient evidence to establish trademark or service mark rights in “Aberdeen Airport”.
Common Law Trade Marks and Service Marks – General
What must be proved to establish a common law trademark in the United Kingdom, was discussed by the Panel in WIPO Case No. D2004-0182; Luis Cobos v. West, North. In that case the Panel said that “… a common law trademark is a trademark … the use of which by an unauthorized third party can be restrained in a passing off action. …To succeed, the complainant would have to establish a reputation and goodwill in the United Kingdom under his name …; he would have to prove that the third party’s use of his name would be likely to lead to deception in the marketplace … and he would have to prove a likelihood of consequential damage to his goodwill.”
There have been numerous WIPO Panel decisions which have considered this issue. The Panel has found one of the most helpful statements of principle in WIPO Case No. D2001-0047; Brisbane City Council v. Warren Bolton Consulting Pty Limited, where the Panel had to decide whether the city authority in Brisbane, Australia, had trademark or service mark rights in the expression “brisbanecity”. The Panel referred to Port of Helsinki v. Paragon International Projects Ltd., WIPO Cases No. D2001-0002 and City of Hamina v. Paragon International Projects Ltd., WIPO Case No. D2001-0001, and said:
“In both of the above two cases, the Panel was of the view that the legal authority of a geographical area does not, as a matter of principle, have an exclusive right to the name of that area. This Administrative Panel agrees with that view. In both of the above two cases, the Panel did recognize that, in certain circumstances, the legal authority of a geographical area might, depending on the actual facts, have a trademark right in the name of that area. Again, this administrative Panel agrees with that view. Thus, the important issue in a case such as this one, concerning an unregistered mark that is a geographical location, is whether the facts of the case show that the unregistered mark is indeed performing the function of a trademark – that is to say, whether the unregistered mark is distinguishing the goods or services of the Complainant in trade from the goods or services of any other person in trade”.
That test seems to be generally consistent with the requirement for registration of a place name as a trademark or service mark, in section 3(1)(c) of the Trade Marks Act 1994 (UK) – a “distinctive character”, derived from the applicant’s use of the mark.
The quoted passage from the Brisbane City case provides an adequate statement of general principle – the rest depends on the facts of this case. The question in this case, then, is: has the expression “Aberdeen Airport” been used in trade to distinguish the Complainants’ goods or services from the goods or services of other traders?
Airport Cases
In one respect, this case is different from the Brisbane City case, and other cases dealing with domain names which are also the names of cities or countries. “Aberdeen Airport” is not just the name of a city – the expression refers to a particular facility, the airport, which serves that city. It appears also that the airport is the only commercial airport which serves the city of Aberdeen (neither party has suggested that there is another).
The Panel has therefore considered two “airport” panel decisions. In WIPO Case No. D2000-0638, Manchester Airport plc v. Club Club Limited, the domain name at issue was “<manchesterairport.com>”. The three-member Panel was divided on whether the complainant had established rights in the expression “Manchester Airport”. The presiding Panelist took the view that the complainant had established rights in “Manchester Airport”, being the name under which it trades, and that that expression was an unregistered trademark or service mark of the Complainant. The majority of the Panel took the view that the Complainant had not provided arguments or evidence to establish a common law trademark. The complaint in that case accordingly failed.
The second “airport” decision the Panel has considered, is a decision of an Independent Expert in a case decided under dispute resolution policy of the (United Kingdom) Nominet UK Dispute Resolution Service – Case No DRS01009 – Humberside International Airport Limited v. Lincolnshire Trading Company Limited (date of decision July 10, 2002). While some care is necessary having regard to the different wording of the Nominet Dispute Resolution Service Policy, that policy does require that a complainant must show that it has rights in respect of a name or mark which is identical or similar to the domain name in issue.
The Independent Expert in that case found that the complainant had proved sufficient use of the HUMBERSIDE INTERNATIONAL AIRPORT name to give it unregistered trademark rights.
Evidence of Use of “Aberdeen Airport”
The Complainants did not attach to the Complaint any documents evidencing their use of “Aberdeen Airport” as a service mark. They simply asserted long use of that expression as a service mark, going back as far as 1935. .
In his Response, the Respondent produced a number of documents, including documents from the Civil Aviation Authority and the National Weather Service, showing the airport referred to as “Aberdeen/Dyce”, or “Aberdeen Dyce Airport”. One document produced by the Respondent, being a website dated September 12, 2004, relating to discount airline tickets, referred not only to “Aberdeen Dyce Airport”, but also noted that: “Popular hotels near Aberdeen Dyce include Aberdeen Airport Thistle Hotel ….” This latter reference would appear to be an example of the use of “Aberdeen Airport” as the name of a general location.
In their supplementary filing, the Complainants have produced extracts from the Second Complainant’s 1995/96 handbook. They say that this handbook was distributed to local business people, and to opinion formers such as the press and politicians. They believe that a document in similar terms would have been issued in some other years, but were unable to say when. The front and back covers of this document both show the words “Aberdeen Airport” used in what appears to be a trademark sense. The letters “BAA” and the square box device appear immediately above the words “Aberdeen Airport”, and the document suggests that the Complainants were using both expressions as service marks at that time.
The text of the handbook also contains some evidence of “Aberdeen Airport” being used in a trademark sense. For example, in the section headed “Terminal Facilities”, the statement appears: “Aberdeen Airport takes great care to ensure that the catering facilities provided are of the highest possible standard ….” That appears to be an example of the business of the Second Complainant being conducted under or by reference to the expression “Aberdeen Airport”.
The Complainants also produced copies of some archived web pages taken from the First Complainant’s primary website back in the period 1996/1997. A section headed “Airport Information” provided specific information relating to such matters as carparking, public transport, flight arrivals, and so on, accessed by clicking on “Aberdeen Airport.” The device mark also appeared at the foot of these web pages.
In a November 1999 - March 2000 document produced by the First Complainant and described as “Scheduled Flight Guide and Airport Information”, covering the First Complainant’s three Scottish airports, there is a heading “Airport Telephone Numbers”. Under that heading there is a listing for “Aberdeen Airport” followed by a telephone number. “Aberdeen Airport” in that context is clearly a reference to the party who can be reached at the relevant telephone number, and the document provides some evidence of the Second Complainant trading under the name “Aberdeen Airport”. This Scheduled Flight Guide and Airport Information document was distributed widely from 1990 onwards, with a total annual print run of 120,000 copies. It was distributed to those on the First Complainant’s mailing list, and in bulk to car hire companies and others with a specific interest in the material.
A 1997/1998 document produced by the First Complainant’s Scottish division, entitled “Holiday Flight Guide”, also contains a section headed “Airport Information”, and included a listing “Aberdeen Airport” followed by a telephone number.
In their supplementary filing, the Complainants produced a photograph of a sign which is erected at the road entrance to the airport. The photograph was taken in 1999, and it shows a sign prominently reading: “Welcome to Aberdeen Airport”. In much smaller print near the bottom of the sign, one can see the letters “BAA” followed by the small box/departing aircraft logo.
Finally, the Complainants point to the fact that the Second Complainant’s name is identical to the domain name, save for the word “Limited”. They say that the Second Complainant has used its name on its business papers in the course of operating the business, since 1986.
The Respondent produced one document which might be thought to be helpful to the Complainants. It was a web page downloaded in September 2004, written by one “Joe Curry”, headed “Aberdeen International Airport”. Under a sub-heading “Handling Agents”, two firms were listed. The first listing was “SERVISAIR”, followed by a phone number. The second listing was “ABERDEEN AIRPORT APRON SERVICES,” followed by another telephone number. That same web page referred variously to “Aberdeen Airport” and “Aberdeen Dyce Airport”.
Conclusion on Question of Service Mark Rights in “Aberdeen Airport”
Would the Complainants in this case succeed in a passing off action if an unauthorized third party used the expression “Aberdeen Airport” in respect of services provided by one of the Complainants at the airport? The matter is not easy, but the Panel has come to the view that such a passing off action probably would be successful. The Panel has come to that view for the following reasons:
1. The Complainants say, and the Respondent does not dispute, that the airport first opened in 1935. In 1986, the Second Complainant was incorporated, and the Second Complainant has certified that it has used its name as its corporate name and on business papers in the course of operating its business, since 1986.
2. In this case, there is evidence that for many years the Complainants have referred to the airport as “Aberdeen Airport” (see for example the sign at the approach to the airport). It appears to the Panel that that expression has been used in connection with certain of the Complainants’ services, including the provision of the airport facilities, for many years.
3. The Second Complainant’s 1995/96 handbook does contain examples of the use of “Aberdeen Airport” as an indicator of the source, or origin of the Complainants’ services. The expression “Aberdeen Airport” appears to be used in a trademark sense on the front and back covers of this document, and at one point in the text, the Second Complainant’s managing director says: “Aberdeen Airport takes great care to ensure that the catering facilities provided are of the highest possible standard ….” That appears to be a use of the expression “Aberdeen Airport” in connection with the Second Complainant’s management services at the airport.
4. The use of the expression “Aberdeen Airport”, followed by telephone numbers, in the Scheduled Flight Guide and Airport Information, and Holiday Flight Guide documents, shows that the Second Complainant has been commonly known by the abbreviated expression “Aberdeen Airport”. The use of “Aberdeen Airport” on the First Complainant’s website also shows the use of that expression by the First Complainant in connection with the provision of information about facilities at the airport. The Scheduled Flight Guide and Airport Information, and Holiday Flight Guide documents, appear to have had very wide circulation throughout the 1990s, and it seems likely that the web pages provided by the First Complainant would also have been widely available, at least to the aviation sector and the traveling public in the United Kingdom.
5. It appears from one of the documents produced by the Respondent, that the Complainants operate a handling service at the airport under the name ABERDEEN AIRPORT APRON SERVICES. Another firm, SERVISAIR, appears to operate a competing service at the airport, and the question may be posed whether the Second Complainant could mount a successful passing off action in the (theoretical) event of SERVISAIR marketing its services as “Aberdeen Airport” handling agents, or something similar. In the Panel’s view, the Second Complainant probably would succeed with such an action.
6. In the Panel’s view, the documents produced by the Respondent referring to “Aberdeen/Dyce Airport”, and “Dyce Airport”, are directed not at identifying the Complainants as the providers of services or facilities, but at the precise geographical location of the airport, which serves Aberdeen but is situated at Dyce.
7. In some circumstances, a respondent’s conduct may be viewed as evidence of a complainant’s rights in a mark. A deliberate intent to trade on another’s mark may be considered evidence of a secondary meaning in that mark (see for example, Fort Lee Chamber of Commerce v. Carmine A DeMarco, WIPO Case No. D2002-0291). In this case, the Respondent has created a website which appears to have as its primary focus criticism of the landing fees charged at the airport, and which expresses a preference (presumably on that account) for the airport at Dundee. The provision of landing facilities is of course one of the main services the Second Complainant provides at the airport. In the text of the Respondent’s website, the Respondent refers to the geographical location of the airport as “Dyce” (“Welcome to Dyce Captain …”), but the Respondent did not choose <dyceairport.com> as his domain name. The Panel infers that the Respondent chose the domain name because he regarded the domain name as an appropriate identifier of the Second Complainant’s services, or as an appropriate pointer to a website containing information relating to those services. That tends to support the Complainants’ case that their services at the airport have been provided under or by reference to the expression “Aberdeen Airport”.
8. It is true that the expression “Aberdeen Airport” is descriptive in nature, and the Panel accepts that generally in such cases more evidence is necessary than might otherwise be the case, to establish the necessary “secondary meaning” required as a foundation for reputation and consequential business goodwill. However, the Second Complainant’s services in this case substantially consist of the provision of a facility which is apparently unique to the Aberdeen region, which has been operated for some 18 years by a company known as Aberdeen Airport Limited, and which for many years prior to that appears to have been generally known as “Aberdeen Airport”. In some respects, this case is similar to Sydney Opera House Trust v. Trilynx Pty Limited, WIPO Case No. D2000-1224, where the WIPO Panel had no difficulty in finding that the body corporate charged with the management and administration of the famous centre for the performing arts was entitled to use SYDNEY OPERA HOUSE as a common law trademark and to register the mark (which it did). Sydney is a city, just as Aberdeen is, and “Opera House” is as descriptive of the Sydney facility as “Airport” is of the airport.
For the foregoing reasons, the Panel is of the view that the Complainants have done enough to show that they have a common law service mark right in ABDEREEN AIRPORT.
The evidence shows that, from at least the mid 1990s, the Complainants have also been using the device mark in association with at least some of the services they provide. It appears from the Complainants’ supplementary filing that the device mark has probably been used in respect of those services provided or organized by the First Complainant (ie retail marketing and promotion, procurement and provision of legal services). It appears that the Second Complainant has been the substantial provider of the “airside” services, including apron services, provision of runway, aircraft parking, etc.
In those circumstances, the Panel believes there is nothing to prevent the Complainants using two separate service marks as indicators of the origin of the various services provided by them.
The Panel does not have sufficient evidence to find that the Second Complainant has abandoned, or otherwise lost, its common law right in ABERDEEN AIRPORT. If it had, one would have expected the Respondent (as a general aviation enthusiast who is obviously familiar with the Complainants and their operation of the airport) to produce evidence (e.g. landing fees invoices, letterhead, etc) raising the possibility that the Second Complainant has abandoned the ABERDEEN AIRPORT mark. The Respondent has not done so, and the Panel is not prepared to speculate that the common law rights which the Panel has found the Second Complainant enjoys have been lost or abandoned.
For the foregoing reasons, the Panel finds that the Second Complainant has common law service mark rights in ABERDEEN AIRPORT. The domain name is identical to that service mark, so the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy.
Although the Policy requires that the Complainant must prove each of the elements in paragraph 4(a), it is often observed that difficulties are posed for a complainant in proving a negative, namely that the Respondent does not enjoy some right or legitimate interest in the domain at issue. The wording of paragraph 4(c) of the Policy appears to envisage the Respondent taking steps to demonstrate its right or interest, and it is generally accepted that, once a complainant has proved that the domain name is identical or confusingly similar to its mark and that it has not authorized the Respondent to use the domain name, the evidential onus effectively shifts to the respondent to demonstrate that it has some right or legitimate interest. The Panel agrees with that general approach.
In this case, the Complainants have not authorized the Respondent to use the ABERDEEN AIRPORT mark, or to use the domain name.
The Respondent does not suggest that he has used the domain name in connection with any bona fide offering of goods or services – on the contrary, he is at pains to point out that the Respondent’s website is not-for-profit. The Respondent therefore could not claim any right or legitimate interest based on paragraph 4(c)(i) of the Policy.
Nor has the Respondent (or any individual, business, or other organization with which he may be associated) been commonly known by the domain name. Therefore paragraph 4(c)(ii) of the Policy does not apply.
In the Panel’s view, paragraph 4(c)(iii) does not apply either. The use the Respondent is making of the domain name is neither “legitimate” nor “fair”. The Respondent’s website is quite clearly intended to be critical of the Complainants, and specifically the landing fees charged by the Complainants at the airport and at Edinburgh Airport. It is hard to see any other point in establishing the Respondent’s website. The Respondent suggests that it is a “tribute to aviation”, but does not explain any sense in which the Respondent’s website might be taken as a “tribute” to anyone. The Respondent also suggests that the Respondent’s website was intended to be humorous, but again it is difficult to comprehend that suggestion. Possibly some humour might have been intended with the successive use of words rhyming with “Dyce” in the later versions of the Respondent’s website, but the overall message conveyed on the Respondent’s website is clearly not humorous. Quite simply, the Respondent appears to be intent on encouraging those involved in general aviation in Scotland to use the airport at Dundee rather than the airport or the First Complainant’s Edinburgh Airport.
The Panel is satisfied that a significant number of United Kingdom Internet users inputting the domain name, would expect to find a website operated by the Complainants. In the Panel’s view, the Respondent intended to attract such users to the Respondent’s website, with the ultimate purpose of persuading those internet viewers that the Complainants’ landing charges are too high, and that visitors to the website should consider other airports such as Dundee. In the Panel’s view, it could never be a legitimate or fair use to select a domain name which is identical or confusingly similar to another person’s trade or service mark, with a view to misleadingly attracting visitors to a website linked to that domain name (an example of a WIPO decision where that view was taken, is the three-member Panel decision in Chinmoy Kumar Ghose v. ICDSoft.com, WIPO Case No. D2003-0248, in which this Panelist was the presiding Panelist).
The Respondent has not advanced any other basis on which a right or legitimate interest in the domain name might be claimed. Accordingly, the Panel finds that the Complainants have proved this part of the Complaint.
The Panel also finds this part of the Complaint proved.
The Panel is not satisfied that the circumstances of this case fall within any of the examples set out at subparagraphs 4(b)(ii), (iii), or (iv) of the Policy. With respect to subparagraph 4(b)(ii), the Complainants have not produced sufficient evidence of a pattern of conduct of the type described in that paragraph. Certainly, the Respondent appears to have registered other “airport” domain names (unrelated to the Complainants), but there is no evidence that he has done so in order to prevent the owners of relevant trademarks or service marks from reflecting their marks in those other domain names.
The Respondent is not a competitor of the Complainants, so paragraph 4(b)(iii) cannot apply. Nor can paragraph 4(b)(iv) apply, as there is no evidence that the Respondent has been using the domain name for commercial gain.
The questions are whether the Respondent’s conduct falls within paragraph 4(b)(i) of the Policy, or whether there is other evidence establishing bad faith registration and use (remembering that the four subparagraphs of paragraph 4(b) of the Policy are only examples of bad faith registration and use).
The Panel has no difficulty concluding that there has been bad faith registration and use, notwithstanding that the Complainants might not have proved circumstances falling clearly within paragraph 4(b)(i) of the Policy. A number of factors lead the Panel to that conclusion:
1. The domain name is identical to the Second Complainants’ service mark, and the Respondent has no right or legitimate interest in respect of the domain name.
2. While the Complainants have only produced pages from the Respondent’s website downloaded in 2004, the Respondent has not suggested that his earlier use of the domain name was any different, or that he had any other intention for the domain name. The Panel therefore concludes that, when the domain name was registered in March 2001, the Respondent’s intention was to link the domain name to a website containing material of the same nature which is shown on the web pages downloaded in 2004. For the reasons set out under the “right or legitimate interest” heading above, the misleading choice of a domain name consisting of the Second Complainant’s common law service mark for that purpose, was unfair and illegitimate, and in bad faith.
3. The three-member Panel in the Chinmoy Kumar Ghose case found that:
“In the Panel’s view, the Respondents have deliberately and confusingly used the Complainant’s mark as the dominant part of the domain names, with a view to attracting web browsers to the Respondents’ website and the criticism of the Complainant’s activities which is published on it. That on its own is sufficient, in the Panel’s view, to constitute bad faith registration and use (actual knowledge of a Complainant’s mark at the time of registering a confusingly similar domain name has been held to be evidence of bad faith – see for example WIPO Case D2000-0038, Channel Tunnel Group Ltd v. John Powell, and D2000-0137 Expedia Inc. v. European Travel Network. In this case there was not merely knowledge of the complainant and his mark, but a clear intention to misleadingly direct some web browsers to the Respondents’ website).”
In the Panel’s view, the same can be said of the Respondent’s actions in this case.
4. In addition to those matters, the Panel finds some of the Respondent’s submissions disingenuous. In particular, the Respondent’s suggestion that the domain name might have been taken as a reference to the airports at other cities in the world called Aberdeen (particularly in the United States) is clearly without merit. The Respondent has not claimed any connection with those other airports, and Internet users in the United Kingdom would immediately associate the domain name with the airport. When they visited the Respondent’s website they would immediately learn that their assumptions were correct – the Respondent’s website does relate to the airport. Also, the Respondent’s submission that the Complainants have not proved that their agents’ email communications reached him, was a manifestly inadequate response. At very least if he were genuine, the Respondent might have categorically said that he did not receive or see the emails from the Complainants’ agent, and he could easily have said that he does not have any association with anyone called A. Stewart if that were the case. The Respondent did neither of those things. The Panel has no reason to doubt the authenticity of the emails, and finds as a fact that between September 2003 and March of 2004, the Respondent turned down successive offers of up to £10,000 GPB for the domain name. That despite the Respondent’s disavowal of any commercial interest in the domain name, and his disavowal of any intention to interfere with the Complainants’ business.
5. There is insufficient evidence for a finding that the circumstances come within paragraph 4(b)(i) of the Policy. The domain name was registered over 4 years ago, and there is no evidence of the Complainants having been approached by the Respondent with a view to selling the domain name to them. The period since registration of the domain name is too long for the Panel to safely conclude that, at the time he registered the domain name, the Respondent had the intention to sell the domain name to the Complainants at a figure well in excess of his out-of-pocket expenses associated with the domain name. Nor is there any evidence of the Respondent attempting to sell the domain name to anyone else. However, the email communications appear to show that in late 2003, the Respondent was holding out for a figure of not less than US$75,000 for the domain name, (the Complainants’ agent’s initial offer of $7,500 was rejected as being “a few decimals out”), a figure far in excess of any reasonable out-of-pocket expenses the Respondent might have incurred relating to the domain name. While that is not on its own proof of bad faith registration and use, it does add to the overall impression of bad faith created by the matters listed (1) – (4) above.
The Complaint therefore succeeds, and the domain name must be transferred to the Second Complainant.
Reverse Domain Name Hijacking
There is a suggestion in the Response that the Complaint has been filed by the Complainants in bad faith. The fact that the Complaint has succeeded is answer enough to that. Any allegation of reverse domain name hijacking, or other bad faith use of the Policy by the Complainants, is rejected.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <aberdeenairport.com> be transferred to the Second Complainant.
Warwick Smith
Sole Panelist
Dated: October 21, 2004