DECISION

Air Tahiti Nui v. International Domains, Inc.

Claim Number: FA0205000114332

PARTIES

Complainant is Air Tahiti Nui, El Segundo, CA, USA (“Complainant”) represented by Evelyn D. Sahr, of Condon & Forsyth, LLP.  Respondent is International Domains, Inc., Port Vila, VANUATU (“Respondent”) represented by Dominique Antz.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <airtahitinui.com>, registered with DomainDiscover.com.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Clive Elliott as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 17, 2002; the Forum received a hard copy of the Complaint on May 21, 2002.

On May 20, 2002, DomainDiscover.com confirmed by e-mail to the Forum that the domain name <airtahitinui.com> is registered with DomainDiscover.com and that the Respondent is the current registrant of the name.  DomainDiscover.com has verified that Respondent is bound by the DomainDiscover.com 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 May 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 11, 2002 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@airtahitinui.com by e-mail.

A timely Response was received and determined to be complete on June 5, 2002.

The Forum received an Additional Submission, filed by the Complainant, on June 5, 2002. The Respondent then responded to this Submission by e-mail on June 11, 2002. The Additional Submission complies with Supplemental Rule 7, which requires that such Additional Submission be submitted to the Forum and the opposing party not later than 5 calendar days after the Response is submitted. Accordingly, it appears that the rule was complied with and that the said documents can be considered by the Panel.

On June 24 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Clive Elliott as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant is an airline. It was founded in 1996 and began flying in 1998. Complainant uses its mark in connection with air transportation services between Papeete, Tahiti, French Polynesia; Los Angeles, California; and Paris, France

Complainant asserts common law trademark rights arising from use of its corporate name in commerce in the U.S. and abroad, and statutory trademark rights arising from its foreign registration of its corporate name with the Institut National de la Propriete Industrielle (“INPI”), the French Patent and Trademark Registry.

It is asserted that the Air Tahiti Nui and <airtahitinui-usa.com> service marks are well established in connection with air transportation and travel services.  It is also asserted Complainant started its web site in July of 1999 and it makes prominent use of its service marks as exemplified through its use on Complainants’ business stationery, online reservations system, promotional literature and publicity photographs.

It is alleged that Respondent registered the domain name <airtahitinui.com> and then placed a notice on the site stating that the domain name was for sale.  On August 11, 2001, after seeing the offer to sell the domain name on the web site, Complainant says it contacted Respondent requesting information regarding the sale price for the <airtahitinui.com> domain name. 

Complainant alleges that on August 13, 2001, Respondent replied indicating that it had entered into a contract with another airline which offered that airline a two-month option to purchase the domain name.

Respondent then sent an e-mail to Complainant suggesting that it visit the <airtahitinui.com> web site.  The e-mail is exhibited. Upon visiting the site, Complainant became aware that users were being redirected to a pornographic web site

 

Later, Respondent contacted Complainant offering to sell the domain name to the Complainant for $300,000. 

Complainant states it refused to purchase the domain name for $300,000 and did not reply to Respondent’s offer. 

It is submitted by the Complainant that:

· Respondent’s use of the domain name <airtahitinui.com> is identical to the service mark Air Tahiti Nui and confusingly similar to the service mark Air Tahiti Nui and domain name <airtahitinui-usa.com> in which the Complainant has rights.

· Internet users are likely to assume that Complainant’s official web site is located at the URL <airtahitinui.com>. 

· Respondent is disparaging the goodwill associated with the Air Tahiti Nui mark by redirecting potential customers to a pornographic web site.

· Consumers have an expectation that the <airtahitinui.com> web site will direct them to the services of Complainant, not pornography.

· Respondent’s only use of the domain name is to forward the user to another web site, which offers pornographic material.  There is nothing on that web site to indicate Air Tahiti Nui as a name by reference to which Respondent is making a bona fide offering of goods or services.

· Respondent deliberately connected the <airtahitinui.com> domain name to this pornographic site with the aim of quickly bringing the situation to Complainants’ attention in a way that would cause significant concern and elicit a prompt and lucrative offer from the Complainants to purchase the domain name.

The Additional Submission lodged by Complainant depicts a range of pornographic images taken from a web site said to be accessible by the <airtahitinui.com> domain name.

Finally, it is asserted that, in violation of Paragraph 5 of the Domain Registration Agreement that Respondent entered into with the Registrar, DomainDiscover.com, Respondent has failed to provide the name of an authorized contact person although the Respondent is a corporation.  Furthermore, the Respondent has failed to “submit accurate and reliable contact details and [to] promptly correct and update them during the term of the Domain registration.”

B. Respondent

Respondent states that it is a young Internet company based in Vanuatu, which wants to develop non-profit web sites for the South Pacific island’s cultures. It asserts that when it registered the domain name <airtahitinui.com> it took all precautions and ascertained that “Air Tahiti Nui” was not a registered trademark and was thus available for registration and use.

Respondent points out that the French dictionary has more than 16 different meanings for the word"air”:“wind,atmosphere,air,feeling,music,space,breath,temperure,attitude,outside,expression,face,form,caractere,impression,physiognomy,them…” and that "air” is synonymic (sic) of melody, music and impression. It is also pointed out that " Tahitinui " means in South Pacific language (sic) all the islands of the South Pacific around Polynesia, Vanuatu, Hawaii, Fiji, Tonga, Tahiti, Easter Island and the Cook Islands.

Accordingly, it is asserted that Respondent chose the domain name <airtahitinui.com> for its future Internet web site dedicated to the Polynesian music and culture because “air Tahitinui " means " South Pacific culture (music, art, languages…) ".

Respondent asserts that when it registered the domain name <airtahitinui.com> it was unaware of the use of the domain name the subject of this dispute, whether as a domain name trade mark or otherwise.

Respondent states that when it registered the domain name, it was from the catalogue of " expired domain names " of the registrar www.buydomains.com . On this basis, it submits:

-  that the domain name <airtahitinui.com> was previously registered  for several years by another third party.

-  that the former registrant did not  renew his booking.

-  that the domain name <airtahitinui.com>  had been never disputed with the former registrant because it was again for sale normally on the Internet.

- that the Complainant had no interest in the domain name <airtahitinui.com>; and

- that the Complainant preferred to wait 3 years before engaging in a dispute with the new registrant , namely the Respondent.

Respondent refers to various other similar named businesses, including:

· Tahiti Nui Travel;

· Air Tahiti;

· Tahiti Nui Television; and

· Tahiti Nui Productions.

It also asserts that “air Tahitinui” are very usual words and that Complainant chose for its airline company a very common generic name, exposing itself to confusion with other entities.

Respondent denies it has never been in touch with the Complainant and does not want to sell the domain name <airtahitinui.com> to it. In this regard, it asserts the e-mails purportedly sent by it are false. It does however accept that at one point a “facetious employee” decided to link <airtahitinui.com> to a so called " funny cartoons " web site to amuse his friends. However, it states that this was not a pornographic web site and Respondent offered to put a stop to it as “soon as possible”.  

 

FINDINGS

Pursuant to paragraph 4(a) of the Policy it is found that:

(1) the domain name <airtahitinui.com> is identical or confusingly similar to the AIR TAHITI NUI trade/service mark;

(2) the Respondent has no rights or legitimate interests in respect of the <airtahitinui.com> domain name; and

(3) the <airtahitinui.com> 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:

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

(4) 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.

Identical and/or Confusingly Similar

Complainant was founded in 1996 and has been continually operating aircraft using the AIR TAHITI NUI service mark since 1998. It has been operating a web site under the <airtahitinui-usa.com> domain name since July 1999. Complainant makes use of its service mark on stationary, on an online reservation system and its web site.

Complainant asserts that it owns a registered French service mark, however, no Reg. No. or other evidence is provided. No weight can be given to this.

Complainant argues for recognition of its common law rights due to its international presence and the subsequent continuous use of its AIR TAHITI NUI service mark since inception in 1996. The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the policy.  McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the UDRP “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the UDRP to “unregistered trademarks and service marks”).

Respondent’s contested <airtahitinui.com> domain name reflects Complainant’s AIR TAHITI NUI common law mark in its entirety. Spaces are inconsequential when conducting an “identical” inquiry under Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Tech. Prop., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain name <radioshack.net> is identical to Complainant’s mark, RADIO SHACK).

Respondent asserts that Complainant’s AIR TAHITI NUI mark is commonplace and generic. While the components may be widely used in the Pacific (and possibly elsewhere) the combination seems, on the evidence, to be used exclusively by Complainant and on this basis to be capable of attracting common law rights.

<Airtahitinui.com> and AIR TAHITI NUI are, apart from the “com” element, identical and in the context of the Pacific region the likelihood of confusion between the two is high.

For the above reasons it is found that the ground is made out.

Rights or Legitimate Interests

Complainant argues that, pursuant to Policy ¶ 4(c)(ii), Respondent is not known as “Air Tahitinui” or by the <airtahitinui.com> domain name it registered. Complainant has not licensed Respondent to use its common law mark, nor is Respondent authorized to operate under Complainant’s AIR TAHITI NUI mark. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Respondent argues that it chose the disputed domain name for its future Internet web site dedicated to the Polynesian music and culture because “air Tahitinui " means " South Pacific culture (music, art, languages…) ". There is no evidence to support this contention. Absent such evidence and in the light of other contradictory evidence as discussed below, one reasonable and available inference is that this is a convenient re-construction to justify its actions. The Panel declines to accept the argument.

Complainant in turn argues that Respondent’s disputed domain name is not being used in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i). Complainant contends that Respondent’s only use of the domain name is to forward Internet users to another web site, which offers pornographic material. Complainant maintains that there is nothing on that web site indicating Respondent has a legitimate interest in the <airtahitinui.com> domain name.

Complainant believes Respondent’s activities tarnish Complainant’s AIR TAHITI NUI mark. See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use).

Additionally, Respondent’s use of the disputed domain name to channel users to a pornographic web site is not a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Nat’l Football League Prop., Inc. v. One Sex Entm't. Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent had no rights or legitimate interests in the domain names <chargergirls.com> and <chargergirls.net> where the Respondent linked these domain names to its pornographic web site); see also Land O’ Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding that use of a domain name to attract/redirect to another pornographic site is not a legitimate use).

Complainant’s contentions have merit. Respondent’s acceptance that at one point a “facetious employee” linked <airtahitinui.com> to so called" funny cartoons " to amuse his friends, suggests there is a basis for Complainant’s Complaint. Respondent’s blank denial of any contact with Complainant regarding sale of the domain name has to be contrasted to Complainant’s detailed account of the alleged contact. Further, there is evidence that Respondent sent an e-mail to Complainant suggesting that it visit the <airtahitinui.com> web site.  This is consistent with the general thrust of Complainant’s Complaint and in particular with the assertion that upon visiting the site, Complainant became aware that users were being redirected to a pornographic web site.

The Additional Submission lodged by Complainant depicting a range of pornographic images taken from a web site said to be accessible by the <airtahitinui.com> domain name is also consistent with the Complainant’s factual and legal contentions.

For these reasons it is found that Respondent has no legitimate interest or right in the disputed domain name and accordingly that this ground is made out.

Registration and Use in Bad Faith

Complainant asserts that Respondent’s initial registration of the domain name contained a notice stating that the domain name was for sale. Complainant alleges that Respondent then took various other steps to bring the domain name to its attention and eventually contacted it offering to sell the domain name for $300,000. Complainant asserts that Respondent’s actions constitute bad faith pursuant to Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale).

Complainant alleges that Respondent was constructively aware of the existence of its AIR TAHITI NUI mark via Complainant’s <airtahitinui-usa.com> web site and its residence within Complainant’s sphere of operations. Respondent’s subsequent registration and use of the disputed, identical domain name represents bad faith under Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Additionally, Complainant believes Respondent deliberately connected the <airtahitinui.com> domain name to a pornographic site with the aim of quickly bringing the situation to the Complainant’s attention. Complainant argues that the registration and use of the disputed domain name to redirect Internet users to web sites offering pornographic material warrants a finding of bad faith registration and use under Policy ¶ 4(a)(iii). See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic web site can constitute bad faith); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented web sites is evidence of bad faith).

Once again these assertions appear to have merit and nothing Respondent has said is sufficient to rebut the prima facie case Complainant has made out.

Lastly, it is asserted that Respondent failed to “submit accurate and reliable contact details and [to] promptly correct and update them during the term of the Domain registration.” Complainant asserts that Respondent failed to provide the name of an authorized contact person despite Respondent alleging that it is a corporation. This constitutes bad faith registration of the disputed domain name. See Home Dir., Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith); see also Video Direct Distrib. Inc. v. Video Direct, Inc., FA 94724 (Nat. Arb. Forum June 5, 2000) (finding that Respondent acted in bad faith by providing incorrect information to the registrar regarding the owner of the registered name).

Given that, for the reasons stated above, Complainant has established its case on this ground, no view need be expressed on this issue in this particular case.

DECISION

Given the above findings the <airtahitinui.com> domain name shall be transferred to the Complainant.

Clive Elliott, Panelist
Dated: July 8, 2002

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