DECISION

Aerovias Nacionales De Colombia S.A. Avianca v. Azim Barodawala

Claim Number: FA0206000114671

PARTIES

Complainant is Aerovias Nacionales De Colombia S. A. Avianca, Barranquilla, COLUMBIA (“Complainant”) represented by Luz Helena Adarve-Gomez, of Cardenas & Cardenas Abogados.  Respondent is Azim Barodawala, Coconut Grove, FL, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <avianca.com>, registered with All West Communications, Inc.

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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 21, 2002; the Forum received a hard copy of the Complaint on June 24, 2002.

On June 26, 2002, All West Communications, Inc. confirmed by e-mail to the Forum that the domain name <avianca.com> is registered with All West Communications, Inc. and that Respondent is the current registrant of the name.  All West Communications, Inc. has verified that Respondent is bound by the All West Communications, Inc. 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 June 27, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 17, 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@avianca.com by e-mail.

Having received no formal 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 25, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The <avianca.com> domain name is identical to Complainant's AVIANCA mark.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent failed to submit a formal Response.

FINDINGS

Complainant owns numerous trademarks for AVIANCA throughout the world including, Germany (Reg. No. 890762), Argentina (Reg. No.1027208), Bolivia (Reg. No. 47351-C), Brazil (Reg. No. 6100392), Costa Rica (Reg. No. 52915), Cuba (Reg. No. 116902), Chile (Reg. No. 495686), Ecuador (Reg. No. 99-94) and many others.  Complainant uses its mark in relation to passenger and cargo airline services.  Complainant currently operates a website at <avianca.com.co>.  Complainant is well-known throughout the entire Latin American world, including Southern Florida where Respondent is domiciled.

Respondent registered the disputed domain name on November 4, 2001.  Respondent registered the disputed domain name then proceeded to sell the right to use it to a third-party for $70,000.  Respondent has no license to use Complainant’s mark.

DISCUSSION

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 formal 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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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; and

(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.

Identical and/or Confusingly Similar

Complainant has established that it has rights in the AVIANCA mark because it owns a trademark for AVIANCA in various countries throughout the world.  Furthermore, Respondent’s domain name <avianca.com> is identical to Complainant’s AVIANCA mark because it incorporates Complainant’s entire mark and merely adds that generic top-level domain name “.com.”  The addition of a generic top-level domain is irrelevant when deciding whether a domain name is identical.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Sporty's Farm L.L.C. vs. Sportsman's Market, Inc., [2000] USCA2 33; 202 F.3d 489 (2d Cir. 2000), cert. denied, 530 U.S. 1262 (2000), ("For consumers to buy things or gather information on the Internet, they need an easy way to find particular companies or brand names.

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent is using the <avianca.com> domain name to divert Internet users interested in Complainant to an unconnected website run by a company called “Despegar.com.”  The use of a domain name, identical to Complainant’s mark, to divert Internet users to an unconnected website is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).

Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii) because it acquired the domain name primarily for the purpose of renting it.  As soon as Respondent gained possession of the domain name registration of <avianca.com> he immediately gave third-party, Despegar.com, the rights to use the disputed domain name for the amount of $70,000.  If Respondent’s only use of a domain name is to sell or rent it for profit then Respondent is not considered to be using the domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  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); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell domain name suggests it has no legitimate use); see also Hewlett-Packard Co. v. High Perf. Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name).

Respondent is known to the Panel only as Azim Barodawala.  Respondent presented no evidence that it owns any trademarks or service marks for AVIANCA or <avianca.com> and therefore has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  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).

The Panel finds that Policy ¶4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent was on notice of Complainant’s rights in the AVIANCA mark when it registered the <avianca.com> domain name because Respondent is domiciled in Miami, Florida where Complainant’s airline is well-known.  Respondent has rented the domain name out to a third-party for a considerable amount of money.  It can be inferred from this behavior that Respondent knew of Complainant’s rights in the AVIANCA mark when it registered the disputed domain name.  Registration of a domain name identical to Complainant’s mark, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to 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).

Respondent registered the domain name with the intention to sell, rent or transfer the domain name.  Respondent registered the domain name and immediately contracted with a third-party to rent the domain name for $70,000.  This type of behavior is evidence of bad faith use pursuant to Policy ¶ 4(b)(i).  See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the Respondent demonstrated bad faith when he requested monetary compensation beyond out of pocket costs in exchange for the registered domain name).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.

Accordingly, it is Ordered that the domain name <avianca.com> be transferred from Respondent to Complainant.

James A. Carmody, Panelist

Dated: July 31, 2002

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