PARTIES' CONTENTIONS:
COMPLAINANT:
The Complaint reads as follows (exact wording as supplied by the Complainant set out below):
The complainant is a joint stock company, based in Prague 6, Laglerové 1075/4, postcode 161 00, Czech republic. It is an operator of the cargo terminal in the Prague Ruzyne airport, and is rendering its services for the important worldwide transportation and airline companies. The complainant renders as well its services on the Bratislava airport in Slovakia, through a subsidiary company Skyport s.r.o. The complainant’s services are offered on the internet under several domains, based on the word element „skyport“ – the company is a holder of the domains „skyport.cz“ and „skyport.sk“. Under these domains, the complainant operates a web presentation containing an offer of its services, contact information, some corporate information etc. (the domain “skyport.sk” is redirected to the domain “skyport.cz”) (see attachment No. 1 – companies register statement relating to the complainant, attachment No. 2 – record from the whois database of the domain “skyport.cz”, and “skyport.sk”, attachment No. 3 - screenshot of the web page under the domain “skyport.cz” and “skyport.sk”).
Because the complainant is focused primarily on the cooperation with the international clients (transportation and forwarding companies), it’s important to offer its services under a generic top-level domain as well. He focused on the skyport.com domain (domain in subject) because of that necessity. This domain has been created in 1995, and since then has been registered by several domain speculators and never used by them to any purpose, and actually is being held by the respondent, company AMERCO LLC, seated at 1333 North Duval Street, Tallahassee, Florida 32303, United States, since 2007. Since the creation of the domain in 1995, the domain has never been used by the respondent, nor by his predecessors, for any web presentation, e-mail services or any other purpose. The complainant found out that the respondent acquired the domain in 2007 from a previous holder – company Essential Services, seated at New Port Richey, FL 34656, USA. After the complainant started its activity in 2007, he entered into contact with the respondent, to negotiate conditions of the domain transfer. At this negotiation the respondent expressed himself, that he registered the domain with the purpose of future sale, and offered the price, which was not acceptable for the complainant. The respondent agreed to provide the domain to the complainant on the lease basis – under the condition of paying a regular (annual) payment, the complainant was entitled to use the domain in subject for its own purposes – this solution has been found as acceptable by the complainant, fulfilling the objective pursued without the necessity of undergoing the domain dispute. The complainant has been operating its own web presentation in English language, focused on the foreign clients, under this domain, since beginning of 2008 (see attachment No. 4 – record from the whois database of the domain in subject, attachment No. 5 – screenshot of the complainant’s web presentation under the domain in subject, attachment No. 6 – record from the history of the whois database from www.who.is web page, relating to the domain in subject).
At the end of the 2010, the necessity of the prolongation of the domain in subject occurred, as the domain was to expire on 20/12/2010. With the soon expiration threatening, the respondent has started to escalate his demands and claimed an increased payment for the further use of the domain by the complainant. An increase, claimed by the respondent, reached several hundreds of % of the previous payment, while the respondent conditioned a prolongation of the domain an of the existing contractual relationship with the complainant by an immediate payment of the claimed amount. The respondent expressed himself, that in case when his conditions will not be fulfilled by the complainant, he will let the domain expire, with the immediate registration by any of the automatic systems threatening. Because the respondent’s request has been inacceptable for the complainant, the domain expired on 20/12/2010, and actually is in the protection period. Any requests of the domain renewal, sent by the complainant to the respondent, didn’t found any answer. The complainant now faces a danger of selling the domain in an auction by the registrar “godaddy.com”, or of an immediate automatic registration of the domain after the protection period terminates.
The complainant is an owner of several trademarks, based on the word element “skyport” – a Community trademark No. 6429741, a word mark „Skyport“, registered on 24/07/2009 in the classes of goods and services No. 12, 39, a Community trademark No. 6429732, a figurative mark „Skyport“, registered on 10/12/2009 in the classes of goods and services No. 12, 39, and a Czech national trademark No. 312858, a word mark „Skyport“, registered on 30.06.2010 in the classes of goods and services No. 12, 39. All these trademarks are based on the word element „Skyport“, which dominates even a figurative community trademark No. 6429732. With regard to the fact, that the top-level domain doesn’t have any distinctive function in the assessment of the similarity with the registered trademark, it has to be concluded, that the domain in subject is 100% similar to the complainant’s trademarks from all the relevant points of view (especially from the aural and conceptual points of view, while the visual point of view is identical in case of complainant’s word marks). It has to be emphasised, that registration of the Community trademarks indicates the orientation of the complainant’s services on the wide range of international clients, what justifies the necessity of using the generic top-level domain. (see attachments No. 7 and 8 – record from the Community trademarks register relating to the trademarks No. 6429741 and 6429732, attachment No. 9 – record from the national trademarks register relating to the trademark No. 312858).
Following the complainant’s opinion, all the necessary conditions set by the par. 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy are fulfilled in this case –
1) The domain in question is based on the word element, which is 100 % similar to the complainant’s trademarks, so the likelihood of confusion is evident from all the relevant points of view – it cannot be supposed, that there can be another subject with any stronger rights to the domain and to the word element, constituting the domain.
2) There is no circumstance that can be considered as forming respondent’s rights to use the domain, as he never has never shown any intention to use it in any manner (nor is predecessors did), and with regard to his expressed motivation of the future selling the domain it can be supposed, that he acquired the domain after learning about filling of the complainant’s community trademark applications in 10/2007.
3) Respondent’s behaviour foregoing the expiration of the domain has to be considered as the prove of his bad faith, as it was motivated only by the possibility of earning a financial gain in the situation, when the danger of the expiration was eminent and direct and when the complainant had no other possibilities. Such behaviour exposed the complainant to the real danger of losing any further possibility to use the domain, as the risk of its registration by the domain speculator or by its sale in the auction immediately after the end of protection period is evident. It can be supposed, that in case when the respondent had a real interest in the domain, he wouldn’t let it expire after the complainant refused to accept his financial requests. Such non-prolongation of the domain prevents complainant from using a domain, containing his registered trademarks, in the scope of the goods and services, protected by these trademarks.
In complainant’s opinion, the domain in subject cannot be used by any third party without infringing complainant’s rights to his trademarks. As the respondent is not commonly known under the name “Skyport”, nor under any similar name, and during his existing passive use he didn’t prove any intention to use the domain for any reasonable purpose, it has to be referred to the WIPO Administrative panel decision in the case No. D2002-0358 (Thaigem Global Marketing Limited v. Sanchai Aree), based on the similar factual background (ownership of the trademark by the complainant), as well as to the decision No. in the Case No. D2003-0661 (Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano). The above-mentioned cases have been as well marked by an offer of the domain to the complainant for an excessive price, similarly to this case, and led to the transfer of the domain to the complainants, having their claims supported by the trademark ownership. Besides the trademark ownership, the complainant’s claims are based on his business name (“Skyport a.s.”, while the “a.s.” is the Czech expression for the join-stock company). Any use of such word element in the domain name by the third party can be considered as an action of unfair competition (abuse of the well-known business name for the purpose of getting profit from its good reputation).
The complainant has a strong interest in the domain in subject, because of the international nature of his potential clients – the respondent doesn’t give any signs of such interest. Regarding to the previous contractual (and functional) relation between the parties, the respondent can be suspected from registering and using the domain in bad faith, only with a purpose of earning a monetary profit from the rights holder (complainant). Because of the lack of any communication from the respondent he has to presume, that any further cooperation in the use of the domain in subject is impossible. Because it’s evident that in case of the domain acquisition by the third person any similar cooperation would be very likely impossible, the complainant has to claim his rights to the domain name by the way of UDRP proceeding, as he considers this way as the sole possibility of preventing the total loss of the domain. For the above-mentioned reasons the complainant suggests, that the Panel orders the transfer of the domain „skyport.com“ from the respondent to the complainant.RESPONDENT:
NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.
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