The Complainant is Société Internationale de Télécommunications Aéronautiques, Belgium, represented by Deloitte Legal, United Kingdom.
The Respondent is SIVAGANESH SIVAGNANAM, Canada.
The disputed domain name <sita.foundation> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2020. On November 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 6, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 10, 2020 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint.
On November 25, 2020, the Complainant requested to the Center, by email, the suspension of the proceedings to explore settlement options. On November 25, 2020 the Center sent to the Parties the Notification of Suspension before Commencement of Proceedings and suspended the proceedings until December 25, 2020. On December 21, 2020, the Center transmitted by email to the parties the notification of the extension of the Suspension until January 25, 2021. The Proceedings were reinstituted on January 25, 2021.
The Complainant filed an amended Complaint on January 25, 2021.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2021. The Respondent sent informal email communications to the Center on November 10, 2020; November 23, 2020; and February 25, 2021.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on March 19, 2021. 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.
The Complainant Société Internationale de Télécommunications Aéronautiques, known as SITA SC and trading as SITA, is organized as a nonprofit Société Cooperative under the law of Belgium, with corporate offices in Belgium, Switzerland, and the Netherlands. It was created in 1949 when various airlines came together with the aim of sharing a communications infrastructure. The Complainant, employing about 5,000 persons and active in some 200 countries, currently provides telecommunications and computing services to about 400 members and 2,800 customers, representing approximately 90% of the world’s airline business, managing passenger, baggage, and air cargo processing, airport operations, air traffic control, in-flight communications, and ancillary services. The Complainant operates a website at “www.sita.aero” and holds other domain names based on its SITA mark, including <sitavision.aero>, <sitasc.aero>, <sitaplus.aero>, <sitamail.aero>, <sita-ats.com>, and <sita-ats.net>. The Complainant has established a SITA Air Transport Community Foundation under the Mark aimed at providing education to young people in Africa since 2015.
The Complainant holds numerous trademark registrations for SITA as a word mark or as the word element of a figurative mark. These include the following:
|
MARK |
JURISDICTION |
REGISTRATION NUMBER |
REGISTRATION DATE |
|
SITA (stylized letters) |
International Trademark (multiple designations) |
590011 |
July 20, 1992 |
|
SITA (stylized letters) |
European Union |
186577 |
November 18, 1998 |
|
SITA (standard characters) |
Canada |
TMA613802 |
June 29, 2004 |
The Registrar reports that the Domain Name was created on January 17, 2018 and is registered in the name of the Respondent, an individual residing in Ontario, Canada who lists no registrant organization. The Respondent has not developed a website associated with the Domain Name. Instead, the Domain Name has resolved to a parking page hosted by the Registrar, which advertises the Registrar’s services, including the Registrar’s domain brokerage services: “sita.foundation is taken. We might still be able to get it for you.” A screenshot of the parking page associated with the Domain Name in November 2020, attached to the Complaint, shows that it displayed third-party advertising links, presumably on a pay-per-click (“PPC”) basis, under a diverse range of topics including blues singing, junk removal, and “Suez Environment”. The page was listed as “parked free” by the Registrar.
The Respondent, in emails to the Center, states that he incorporated a not-for-profit corporation in Ontario in 2018 called Sita Foundation Inc. to honor his mother, who raised children as a single mother. The online government database operated by Corporations Canada shows that this is an actively registered corporation since January 16, 2018, with the Respondent listed as its sole director.
The Complainant asserts that the Domain Name consists of its SITA mark “in its entirety”. The Complainant notes that that there is no evidence that the Respondent’s Sita Foundation Inc. has ever been active or that the Domain Name has ever been used for such a foundation; thus, it does not support a claim of rights or legitimate interests. Long-term PPC advertising use of the Domain Name, even if the Respondent has not profited from it, reflects bad faith under the Policy in creating a risk of confusion and exploiting the Complainant’s mark.
The Respondent did not submit a formal Response but made remarks in three emails to the Center. Hence, there is no certification of completeness and accuracy as required by the Rules, paragraph 5(c)(viii), which the Panel takes into account in weighing the credibility of the Respondent’s statements.
In the February 25, 2021 email, the Respondent concluded as follows:
“I am responding to the letter received in regards to the dispute for the domain name sita.foundation. I’ve previously mentioned that this a non for profit organization and in no way is being used or affiliated with sita.aero. Sita is my mother’s name and I started this in the hopes of helping Single Mothers/Parents through hardship. I’ve even mentioned in previous emails that I can note that sita.foundation is not affiliated with sita.aero. I’ve spoken to lawyers regarding this matter and was told I’ve done my part by registering Company in Canada and was told to ignore such requests. I do apologize but WIPO has blocked my domain I believe since Nov and not sure what to do at this point. I feel as if I’m being bullied by big corporations when I’m simply just trying to create something to commemorate the hardship and struggles my mother faced raising us without any help.”
The earlier emails from the Respondent furnished no more details about the Respondent’s activity other than recounting the formation of the nonprofit corporation in 2018 and stating, “I am looking to launch this year”.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
The Complainant holds registered SITA trademarks. The Domain Name incorporates this mark in its entirety. As usual, the generic Top-Level Domain (“gTLD”) “.foundation” is disregarded as a standard registration requirement. See id. section 1.11.2.
The Panel concludes that the first Policy element is established on these facts.
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the domain name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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; or
(ii) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) 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.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights, the lack of permission to use its mark, and the Respondent’s failure to use the Domain Name apart from allowing it to be used for PPC advertising and promoting the Registrar’s services. This shifts the burden to the Respondent to produce evidence of rights or legitimate interests.
The Respondent claims to have incorporated a not-for-profit corporation with a name corresponding to the Domain Name. The relevant corporations database supports this claim. However, there is no concrete evidence in the record of plans or preparations to establish a working nonprofit or an associated website. For three years, the Domain Name simply has been parked, apparently for the benefit of the Registrar and unrelated advertisers. A parking page alone does not represent a “legitimate interest”, particularly where, as here, it is not based on producing relevant search results related to dictionary words or phrases (see WIPO Overview 3.0, section 2.9). The Panel considers that the Respondent’s rights or legitimate interests must be assessed as of the time of the UDRP complaint (see id., sec. 2.11), and at this time there is a dearth of evidence that the Respondent is involved in any active charitable organization with a name corresponding to the Domain Name or has undertaken any demonstrable preparations for such activity after incorporating three years ago. The Panel cannot conclude that the Respondent is known by a corresponding name or “is making a legitimate noncommercial or fair use of the domain name”. To the contrary, the Respondent continues to allow others to profit from confusion engendered by the Domain Name.
The Panel concludes, therefore, that the Complainant prevails on the second element of the Complaint.
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The Respondent’s SITA mark has been in global circulation for more than half a century, and “sita” queries on major search engines produce top results pointing to the Complainant. It is not likely that the Respondent, applying for a company name and the Domain Name, missed this fact. The Respondent, in the emails with the Center, does not deny prior awareness of the Complainant’s trademark but argues instead that the Respondent’s intended reference and use are different and unlikely to confuse.
However, under the registration agreement the Respondent remains responsible for the use of the Domain Name in a manner that does not violate the rights of others, and for three years the Respondent has allowed the Domain Name, incorporating a well-known trademark, to be used to attract Internet users to a parking page advertising the goods and services of others. It does not appear that the Respondent took any steps to prevent that from happening, such as directing the Domain Name to an “Under Construction” message. The Respondent may not have intended to profit personally from misdirection while the Domain Name languished in “free parking” with PPC advertising links, but the Respondent nevertheless may be held accountable for such careless registration and use of a Domain Name that is identical or confusingly similar to the trademark of another. This amounts to bad faith within the meaning of the Policy.
The Panel concludes that the Complainant has established the third element of the Complaint.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <sita.foundation>, be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
date: March 22, 2021