START-UP TRADEMARK OPPOSITION POLICY

DECISION

Continental Airlines, Inc. v. Coldwell Banker Burnet

Claim Number: FA0112000102796

PARTIES

The Complainant is Continental Airlines, Inc., Houston, TX (“Complainant”) represented by W. Scott Brown, of Vinson & Elkins LLP.  The Respondent is Coldwell Banker Burnet, Richmond, British Columbia, CANADA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <continentalairlines.biz>, registered with Registrars.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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

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 December 10, 2001; the Forum received a hard copy of the Complaint on December 14, 2001.

On December 20, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 9, 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 January 31, 2002, pursuant to STOP Rule 6(b), the Forum appointed The Honorable Charles K. McCotter, Jr. (Ret.) 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.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant has rights to its CONTINENTAL AIRLINES trademark.

Respondent does not have rights or legitimate interests in the <continentalairlines.biz> domain name.

Respondent registered <continentalairlines.biz> in bad faith.

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Complainant has used CONTINENTIAL AIRLINES and many variations of the name in connection with airline transportation services, which presently reach five continents, Europe, North America, South America, Asia and Australia.  Complainant is the fifth largest U.S. airline based on passenger traffic.  Complainant served approximately 46 million passengers in 1999.

Moreover, Complainant has registered the CONTINENTAL AIRLINES trademark (Reg. No. 2,288,901) on the Principal Register of the USPTO as well as the CONTINENTAL trademark (Reg. No. 1,993,534) along with numerous other foreign and domestic trademarks within the family of CONTINENTAL AIRLINES marks.   As a result of Complainant’s trademarks and widespread use of the CONTINENTAL AIRLINES mark, it has established significant goodwill and wide public recognition.

Respondent, known as Coldwell Banker, is not affiliated with Complainant or its business.

DISCUSSION

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’s Rights in the Mark

Complainant has demonstrated rights in the CONTINENTAL AIRLINES mark due to its numerous registrations both abroad and with the USPTO, as well as its widespread, continuous, and exclusive commercial use of the name.  The <continentalairlines.biz> domain name is identical to Respondent’s registered CONTINENTAL AIRLINES trademark.

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

            Rights or Legitimate Interests

The Panel is allowed to determine Respondent does not have rights or legitimate interests in the disputed domain name because Respondent has failed to provide a Response to this claim.  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).

There is no evidence, and Respondent failed to provide any information, that would indicate it has a service or trade mark in the CONTINENTAL AIRLINES name, the identical domain name, or any names incorporating the mark.  As a result, Respondent is presumed not to have any rights or legitimate interests pursuant to the STOP Policy ¶ 4(c)(i) with respect to the disputed domain name.

It is inferred that due to the widespread fame and substantial goodwill built up by Complainant’s successful airline business, Respondent registered a domain identical to Complainant’s mark to capitalize on Complainant’s goodwill by diverting Complainant’s many customers to Respondent’s website for commercial gain.  This behavior is not considered a bona fide offering of goods pursuant to STOP Policy ¶ 4 (c)(ii).  See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites); see also Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered the domain name <householdbank.com>, which incorporates Complainant’s HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus finding no rights or legitimate interests).

There is no evidence that Respondent it is commonly known by the CONTINENTAL AIRLINES mark or the identical domain name.  As a result, Respondent is presumed not to have any rights or legitimate interests in the disputed domain pursuant to STOP Policy ¶ 4(c)(iii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).  Because Respondent’s CONTINETAL AIRLINES name is well known throughout the world as Complainant does business on five continents, it can be presumed that Respondent is not commonly known by such a famous mark.  See 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); see also Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well established use of the mark).

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

Registration or Use in Bad Faith

Respondent’s registration of a domain identical to Complainant’s registered trademark will inevitably create a likelihood of confusion with Complainant’s mark as to the source, affiliation, and endorsement of Respondent’s website.  This reveals Respondent’s bad faith pursuant to STOP Policy 4(b)(iv).  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

Moreover, it can be inferred that Respondent registered the disputed domain to attract Internet users to Respondent’s website for its commercial gain without Complainant’s permission.  This activity demonstrates Respondent’s bad faith pursuant to STOP Policy ¶ 4(b)(iv).  See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intends to use Complainant’s marks to attract the public to the web site without permission from Complainant); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the Respondent registered the domain name <bigtex.net> to infringe on the Complainant’s good will and attract Internet users to the Respondent’s website).

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

DECISION

Having established all three elements required under the Start-Up Trademark Opposition      Policy, the Panel concludes that relief shall be hereby granted.

Accordingly, it is Ordered that the <continentalairlines.biz> domain name be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against the domain name shall not be permitted.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: February 6, 2002

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