|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
Northwest Airlines Inc. v. NWA INC
Claim Number: FA0204000109756
Complainant
is Northwest Airlines Inc., Eagan,
MN (“Complainant”). Respondent is NWA INC, Grand Blanc, MI (“Respondent”).
The
domain name at issue is <nwa.biz>,
registered with Network Solutions, Inc.
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual
Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel
and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 18, 2002; the Forum
received a hard copy of the Complaint on
May 17, 2002.
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 in compliance
with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
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 July 5, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Hon. Ralph Yachnin
as the single 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 STOP Rules. Therefore, the Panel
may issue its decision based on the documents submitted and in accordance with
the STOP Policy, STOP Rules, the
Forum’s STOP Supplemental Rules and any rules
and principles of law that the Panel deems applicable, without the benefit of
any Response
from Respondent.
Transfer
of the domain name from Respondent to Complainant.
A. Complainant
1. Respondent’s <nwa.biz>
domain name is identical to Complainant’s NWA mark.
2. Respondent has no rights or legitimate
interests in the <nwa.biz> domain name.
3. Respondent registered the <nwa.biz>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has a live service mark with
the United States Patent and Trademark Office (“USPTO”) for NWA (Reg. No.
76,210,945) registered
March 12, 2002. Complainant’s NWA mark is listed on the
Principal Register of the USPTO and the date of first use is listed as June
13,
1943. Complainant also operates a website at <nwa.com>, which receives
approximately 10 million hits per day.
Respondent registered the disputed domain
name on March 27, 2002. Respondent has yet to develop or designate a purpose
for the domain
name. Complainant’s investigation indicates that Respondent does
not have any substantially similar trademark or service mark relating
to NWA.
Paragraph 15(a) of the STOP 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 STOP Rules
and draw such inferences it considers appropriate
pursuant to paragraph 14(b)
of the STOP Rules.
Paragraph
4(a) of the STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order
that a domain name should be transferred:
(1) the domain name is identical to a
trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the
domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these
STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service
mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which
a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining
that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
Complainant
has established its rights in the NWA mark through registration with the USPTO
and continuous use of the mark since 1943.
Respondent’s
<nwa.biz> domain name mirrors Complainant’s NWA mark in its
entirety, emulating it in form and spelling. Respondent’s addition of the
“.biz”
gTLD is inconsequential when conducting an “identical” inquiry. "When a trademark, service mark, collective mark or
certification mark is composed, in whole or in part, of a domain name, neither
the beginning of the URL (http://www.) nor the TLD have any source indicating
significance. Instead, those designations are merely
devices that every
Internet site provider must use as part of its address." U.S. Patent
and Trademark Office Examination Guide No. 2-99, "Marks Composed, in
Whole or in Part, of Domain Names," Section I (Sept. 29, 1999).
Accordingly,
the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to produce a
Response in this proceeding. Therefore, it is presumed that Respondent lacks
rights and legitimate
interests in the <nwa.biz> domain name. See
Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’
failure to respond can be construed as an admission that they have no
legitimate interest in the domain names). Furthermore, because Respondent
failed to submit a Response, the Panel is permitted to
make all inferences in
favor of Complainant. See Talk
City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint”).
Complainant’s research has failed to
locate any evidence that Respondent is the owner or beneficiary of a trade or
service mark that
is identical to the <nwa.biz> domain name. It is
not apparent to the Panel, nor has Respondent come forward to provide any evidence,
that Respondent has legitimate
interests in the NWA mark anywhere in the world.
Therefore, Respondent has failed to establish rights in the domain name
pursuant
to STOP Policy ¶ 4(c)(i). See Nat’l Acad. Of Recording Arts &
Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding
that, because Respondent did not come forward with a Response, the Panel could
infer that it had no trademark or service marks identical to <grammy.biz>
and therefore had no rights or legitimate interests
in the domain name); see
also Canadian Imperial Bank of
Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336
(eResolution Sept. 23, 2000) (finding no rights or legitimate interests under
the UDRP where no such right or interest is
immediately apparent to the Panel
and Respondent has not come forward to suggest any right or interest it may
possess).
Respondent has yet to develop a website
or purpose in conjunction with the disputed domain name. The burden of proof
lies with Respondent
in producing reliable and credible evidence that the
disputed domain name was registered for a legitimate purpose, since one is not
apparent to the Panel. Respondent’s failure to support its registration of the
infringing domain name by showing it has made demonstrable
preparations to use <nwa.biz>
in connection with a bona fide offering of goods or services implies that
Respondent has no such rights or legitimate interests under
STOP Policy ¶
4(c)(ii). See Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar.
4, 2002) (finding that in order to show rights or legitimate interests in the
disputed domain name
Respondent must establish with valid evidence “a course of
business under the name, or at least significant preparation for use of
the
name prior to learning of the possibility of a conflict” with an IP Claimant); see
also Woolworths plc. v. Anderson,
D2000-1113 (WIPO Oct. 10, 2000) (finding that absent evidence of preparation to
use the domain name for a legitimate purpose, the
burden of proof lies with the
Respondent to demonstrate that it has rights or legitimate interests).
There is no evidence or information
before this Panel that suggests Respondent is known as “NWA” or by its <nwa.biz>
domain name pursuant to STOP Policy ¶ 4(c)(iii). Because Respondent
registered such an established mark for its domain name, a notable
passenger
airline that has been operating since at least 1943, there is a presumption
that Respondent is not commonly known by the
<nwa.biz> domain
name. See CBS Broad., Inc. v.
LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent
failed to demonstrate any rights or legitimate interests in the
<twilight-zone.net>
domain name since Complainant had been using the
TWILIGHT ZONE mark since 1959); see also Nike, Inc. v. B. B. de Boer, D2000-1397
(WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one
“would be hard pressed to find a person who
may show a right or legitimate
interest” in a domain name containing Complainant's distinct and famous NIKE
trademark).
Accordingly, the Panel finds that STOP
Policy ¶ 4(a)(ii).
Due to the nature of NeuLevel’s STOP IP
claim notification procedure, Complainant’s listing on the Principal Register
of the USPTO
and continuous operation under the NWA mark since 1943, Respondent
had notice of Complainant’s preexisting rights in the NWA mark.
Respondent’s
registration of the disputed domain name, despite preexisting knowledge of
Complainant’s rights in the mark, represents
bad faith registration under STOP
Policy ¶ 4(a)(iii). See Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb.
Forum Mar. 4, 2002) (finding that the unique nature of the STOP Policy and the
notice given to Respondent regarding
existing IP Claims identical to its chosen
domain name precluded good faith registration of <genelogic.biz> when
Respondent
registered it with “full knowledge that his intended business use of
this domain name was in direct conflict with a registered trademark
of a known
competitor in exactly the same field of business”); see also Valspar Sourcing, Inc. v. TIGRE, FA 112596 (Nat. Arb. Forum June 4, 2002) (“Respondent was
on notice of Complainant’s rights in PAINT.BIZ when it registered the
disputed
domain name, because Respondent received notice of Complainant’s IP Claim. Respondent’s registration of the disputed
domain name despite this notice when Respondent had no right or legitimate
interest in the
domain name is evidence of bad faith”).
Additionally, Respondent’s
registration of a domain name that is identical to Complainant’s famous mark
will eventually lead to user
confusion, resulting in Respondent attracting
Internet users searching for Complainant’s services. Complainant’s website
attracts
10 million users daily. Assuredly, a percentage of Complainant’s interested
Internet users will inevitably be directed to Respondent’s
website. Respondent
does not have rights or legitimate interests in the <nwa.com> domain
name, which implies Respondent had opportunistic motives in registering
Complainant’s established mark in its domain name.
Respondent’s actions
evidence bad faith under STOP Policy ¶ 4(b)(iv). See Pillsbury Co. v. Prebaked Scandinavia ab, FA 102970 (Nat. Arb. Forum Jan. 31,
2002) (finding registration of a domain name identical to Complainant’s mark to
be in bad faith
under STOP Policy ¶ 4(b)(iv) when use of the domain name would
likely cause confusion as to the affiliation between Respondent and
Complainant); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that the “domain names are so obviously connected with the
Complainants that the use or
registration by anyone other than Complainants
suggests ‘opportunistic bad faith’”).
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
Having
established all three elements required under the STOP Policy, the Panel
concludes that relief should be hereby GRANTED.
Accordingly,
it is Ordered that the <nwa.biz> domain name be TRANSFERRED from
Respondent to Complainant, and that subsequent challenges under the STOP Policy
against this domain name SHALL NOT be permitted.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: July 8, 2002
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/1065.html