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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Aero Continente v. ALIS
Claim Number: FA0103000096844
PARTIES
The Complainant is Aero Continente, Miroflores Lima, II ("Complainant") represented by Fritz L Schweitzer III. The Respondent is ALIS, Coral Gables, FL, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is "aerocontinente.com", registered with Network Solutions, Inc.
PANEL
The undersigned Daniel B. Banks, Jr., as Panelist, certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on March 15, 2001; the Forum received a hard copy of the Complaint on March 16, 2001.
On March 19, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name "aerocontinente.com" is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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").
On March 19, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 9, 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@aerocontinente.com by e-mail.
A timely response was received and determined to be complete on March 30, 2001.
On April 6, 2001, pursuant to Complainant’s request to have the dispute decided by a one member Panel, the Forum appointed Daniel B. Banks, Jr. as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, Aero Continente, has operated an airline under the service mark "AERO CONTINENTE" in Peru since 1992. As such, Complainant has offices in over 20 countries and has over 100 regularly scheduled flights along over 50 routes. Due to marketing efforts and quality of service, annual sales now exceed $120,000,000.
Complainant claims protectible common law rights in the mark AERO CONTINENTE dating back to January 21, 1992, the first date of use of the mark in Peru. Also, Complainant is licensee of a Peruvian service mark registration number 000736 for the mark AERO CONTINENTE for passenger and cargo air transportation; packing and storage of merchandise; travel organization and other services under international class 39, which application was filed on June 21, 1993.
Respondent, ALIS, registered the domain name "aerocontinente.com" on April 18, 1998, more than six years after Complainant began using the mark. Respondent is a business association believed to be controlled by Rainer Uphoff and has never used the domain name for any purpose other than to redirect the name to domain name operated by Complainant. Complainant has attempted to contact Rainer Uphoff, the administrative contact for Respondent, in an attempt to resolve this matter but Mr. Uphoff did not respond.
The domain name in dispute is identical to the common law service mark of the Complainant and the Respondent has no right or legitimate interest in the domain name. Respondent has not made any use or demonstrable preparations to use the domain name or any corresponding name in connection with a bona fide offering of goods or services. Respondent has not been commonly known by the domain name, nor has the Respondent made a legitimate noncommercial use of the domain name.
The domain name was registered and is being used in bad faith . It was registered long after Complainant had made substantial use of its mark and well after substantial recognition and goodwill had been developed in the mark. Respondent has made no legitimate use of the mark in the nearly three years since the original registration and has failed to respond to Complainant's attempt to contact Respondent.
Respondent has engaged in a pattern of unlawful conduct in registering domain names incorporating the marks of other business concerns including aerolineas.com and cubana.com. Respondent is engaged in domain name speculation for profit and has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name to Complainant for monetary gain.
B. Respondent
Respondent is a company taken over by Rainer Uphoff who expresses his unhappiness that a lack of communication has left the issue in this case unsolved for so much time. He blames the lack of communication on a change of address and telephone numbers for the company and the domains registered by it. He states that he has transmitted his will to transfer the aerocontinente.com domain the Complainant if Complainant would pay the costs incurred. In the alternative, he says that he would accept non-monetary payment in the form of a couple of free tickets or something similar.
The domain name at issue in this case has been redirected by Respondent to the Complainant's Peruvian address. He asks for 1,000 USD in recognition for his good will and expenses.
FINDINGS
It is the finding of the undersigned as follows:
1 - The disputed domain name is identical to Complainant's common law mark AERO CONTINENTE.
2 - The Respondent has no rights or legitimate interests in respect of the disputed domain name.
3 - The domain name was registered and is being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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."
Paragraph 4(a) of the Policy requires that the 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) the 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.
It is important to note that the Respondent has not disputed any claim of the Complaint except that it was registered and is being used in bad faith.
Identical and/or Confusingly Similar
Respondent does not contest Complainant's allegation that the domain name is identical to Complainant's mark. Complainant contends that Respondent’s domain name is identical to Complainant’s common law AERO CONTINENTE service mark. See BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the Complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify Complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services); Snow Fun, Inc. v James O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name TERMQUOTE.COM is identical to Complainant’s TERMQUOTE mark).
Rights or Legitimate Interests
Respondent makes no assertions of legitimate interests in the domain name. Respondent seems willing to transfer the domain name in return for his expenses associated with the domain name. Complainant contends that the Respondent has no rights or legitimate interests in the domain name because Respondent has made no use of the domain name for the past three years other than to link it to Complainant’s official web site. Thus, Complainant contends that Respondent has not made any bona fide use of the domain name, is not commonly known by the domain name, and has not made a legitimate noncommercial use of the domain name. Policy ¶ 4(c). See Yahoo!, Inc. v. Zuccarini, D2000-0928 (WIPO Sept. 29, 2000) (finding no rights or legitimate interests where Respondent used the domain names, which contained the YAHOO mark, to redirect Internet users to Complainant’s own web sites).
Registration and Use in Bad Faith
Complainant contends that the Respondent registered and used the domain name in bad faith. Specifically, the Complainant contends that:
The evidence in this case is sufficient to support a finding that Respondent has engaged in a pattern of conduct of registering marks of other entities in order to prevent them from reflecting their marks in domain names and that Respondent registered the domain name primarily for the purpose of transferring it to Complainant for monetary gain. Respondent has never been known by the domain name, has never made a bona fide offering of goods or services and has offered no evidence to demonstrate his rights or legitimate interests in the Domain name. Even though it is now stated that Respondent would transfer the domain name to Complainant for expenses or other consideration, there is no evidence that Respondent ever replied to Complainant's inquiries about the domain name. If Respondent had truly wanted to resolve this matter, it could have done so before allowing it to go this far.
DECISION
It is the decision of the undersigned that the Domain Name AEROCONTINENTE.COM be transferred to Complainant.
Daniel B. Banks, Jr., Panelist
April 16, 2001
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