Generic Top Level Domain Name (gTLD) Decisions

Complainant is Northwest Airlines, Inc., St. Paul, MN, USA ("Complainant") represented by A. Minnie Alexander, of Dorsey & Whitney. Respondent is Kim Jong Sub, South Korea ("Respondent").

The domain name at issue is "northwestairlines.net" registered with IBI.

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as a panelist in this proceeding. Honorable Carolyn Marks Johnson (Ret.) sits as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 9, 2001; the Forum received a hard copy of the Complaint on January 9, 2001. The Complaint was submitted in English with a Korean translation.

On January 10, 2001, IBI confirmed by e-mail to the Forum that the domain name "northwestairlines.net" is registered with IBI and that the Respondent is the current registrant of the name. IBI has verified that Respondent is bound by the IBI registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy"). IBI further confirmed that the registration agreement is in Korean.

On January 11, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 31, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@northwestairlines.net by e-mail. Both English and Korean copies of the Complaint were included.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On February 8, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Honorable Carolyn Marks Johnson (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from the Respondent.

Complainant requests that the domain name be transferred from Respondent to Complainant.

A. Complainant

Complainant asserts that this Complaint arises from the bad faith registration and use by Kim Jong Sub ("Respondent") of the domain name "northwestairlines.net", which is identical to and confusingly similar to Complainant’s distinctive and famous NORTHWEST AIRLINES and NORTHWEST service marks ("the NORTHWEST marks") that are owned and used by Northwest Airlines, Inc. ("Complainant"). Complainant urges that Respondent has no rights or legitimate interests in the disputed domain name and that the fact that the disputed domain name has been registered and used in bad faith is shown by evidence that (i) Respondent registered a domain name that incorporates Complainant’s famous marks in their entirety with actual or constructive knowledge of Complainant’s marks; (ii) the disputed domain name was registered or acquired for the purpose of selling, renting or otherwise transferring it to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs; and (iii) Respondent registered the "northwestairlines.net" domain name to prevent Complainant from reflecting its service mark in a corresponding domain name.

B. Respondent

Respondent filed no response although the Forum delayed consideration of the complaint and required Complainant to amend the Complaint by refilling it in English and Korean.

Complainant is the world’s fourth largest airline, providing air transportation services to over 750 destinations in 120 countries.

Complainant is the exclusive owner of the service mark registrations for NORTHWEST (No. 1,616,090; registered October 2, 1990) in connection with "air passenger and cargo transportation services" and NORTHWEST AIRLINES (No. 1,718,838; registered September 22, 1992) in connection with "air transportation services." Complainant is also the exclusive owner of a Korean service mark registration for NORTHWEST (No. 12103; registered September 5, 1990) for "transportation services, and air passenger and cargo transportation services."

No relationship exists between Respondent and Complainant. Respondent is not a licensee of Complainant and Respondent has not otherwise obtained any authorization to use Complainant’s mark and trade name.

On November 29, 2000, Complainant sent a "cease and desist" letter to Respondent via

e-mail and Federal Express delivery. Respondent countered by offering to sell the domain name in question to Complainant for $5,000. When Complainant told Respondent that it would not pay $5,000 for the domain name, Respondent threatened that if Complainant did not comply with Respondent’s demands, then Respondent would transfer the domain name to another foreigner and cause more harm to Complainant. After this correspondence, Complainant and Respondent engaged in communications for another couple of days but reached no agreement to transfer the domain name.

Paragraph 15(a) of the Rules instructs this 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."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical to and/or Confusingly Similar

The disputed domain name "northwestairlines.net" is identical to and confusingly similar to the NORTHWEST AIRLINES mark but for the addition of the generic top-level domain ".net." However, this distinction does nothing to diminish the confusing similarity between the domain name and Complainant’s mark. See Teleplace, Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that the domain names <teleplace.com>, <tele-place.com>, and <theteleplace.com> are confusingly similar to Complainant’s TELEPLACE trademark); Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that the domain name, clericalmedical.com, is identical to various registered trademarks belonging to Clerical Medical).

The Panel finds that the domain name "northwestairlines.net" is identical to and confusingly similar to Complainant’s marks. Policy ¶ 4(a)(i).

Complainant established in proof submitted with the Complaint that Complainant is the rightful owner of the registered and famous NORTHWEST and NORTHWEST AIRLINES marks.

The proof further shows that Respondent’s trade name is not the same as or any close derivation of the domain name in question. In addition, the proof shows that no relationship exists between Respondent and Complainant, all of which indicates to the Panel that Respondent sought to use the domain name in a manner that would suggest approval from or an association with Complainant that did not exist. Instead, it appears that Respondent registered this domain name, containing Complainant’s famous marks, solely for the purpose of selling it to Complainant for a profit. This is not a legitimate purpose. Policy ¶ 4(c). See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that the Respondent has no rights or legitimate interests in the domain name where it appeared that the domain name was registered for ultimate use by the Complainant).

The Panel finds that Complainant has established rights in the marks that were used to create the domain name in issue and that Respondent does not have and has never had any right or legitimate interest to the use of Complainant’s marks. Policy ¶ 4(a)(ii).

Complainant’s marks are well-known generally throughout the world that Complainant services as an international carrier of passengers and cargo. The notoriety of Complainant’s NORTHWEST marks, permits an inference that Respondent had actual or constructive knowledge of these marks at the time of registration of the domain name in issue. Registration using Complainant’s marks while having actual or constructive knowledge of Complainant’s marks is evidence of bad faith registration. Policy ¶ 4(a)(iii). See Prudential Ins. Co. v. Bixga Co., Ltd, FA 95487 (Nat. Arb. Forum Oct. 6, 2000) (finding bad faith registration and use where Respondent knew or should have known of Complainant’s marks prior to its registration of the domain name "theprudential.com").

In sum, the notoriety of Complainant’s NORTHWEST marks, Respondent’s lack of any connection to Complainant, and the fact that Respondent registered a domain name that incorporates Complainant’s NORTHWEST marks in their entirety, all indicate bad faith. See Northwest Airlines, Inc. v. Koch, FA 95688 (Nat. Arb. Forum Oct. 27, 2000) ("the selection of a domain name [northwest-airlines.com] which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith"); Singapore Airlines Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) ("The domain name "singaporeairlines.com" is so obviously connected with a well-known airline that its very registration and use by someone with no connection to the airline suggests opportunistic bad faith. Indeed, it is hard to imagine a more blatant exercise in ‘cybersquatting.’").

Registering a domain name with the intent of selling it to Complainant, who is the owner of the service mark, for valuable consideration in excess of out of pocket costs associated with the domain name is evidence of bad faith registration and use. Policy ¶ 4(b)(i). See Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy paragraph 4.b.(i) where Respondent stated in communication with Complainant, "if you are interested in buying this domain name, we would be ready to sell it for $10,000"); Dollar Rent A Car Systems Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that the Respondent demonstrates bad faith by registering the domain name for the purpose of transferring the domain name in the amount of $3,000, an amount in excess of out of pocket costs).

The amount requested by Respondent, $5,000, in addition to Respondent’s threats, if Complainant refused, to transfer the domain name to another person for the purpose of causing more harm to Complainant, is evidence of bad faith registration and use. Policy ¶ 4(b)(i).

The Panel finds that Complainant has proven that the domain name was registered and used in bad faith. Policy ¶ 4(a)(i)(iii).

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is Ordered that the domain name "northwestairlines.net" be transferred from Respondent to Complainant.

Honorable Carolyn Marks Johnson (Ret.), Panelist