DECISION

Kuwait Airways Corporation v. Mario Noronha

Claim Number: FA0210000127713

PARTIES

Complainant is Kuwait Airways Corporation, New York, NY, USA (“Complainant”) represented by J. Gregory Lahr, of Condon & Forsyth LLP.  Respondent is Mario Noronha, Mangalore, INDIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <kuwaitairways.com>, registered with Network Solutions.

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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 8, 2002; the Forum received a hard copy of the Complaint on October 11, 2002.

On October 10, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <kuwaitairways.com> is registered with Network Solutions and that Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 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 October 18, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 7, 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@kuwaitairways.com by e-mail.

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 November 25, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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’s submission makes the following arguments:

1. Respondent’s <kuwaitairways.com> domain name is identical to Complainant’s KUWAIT AIRWAYS trademark and “Kuwait Airways” corporate identity.

2. Respondent does not have any rights or legitimate interests in the <kuwaitairways.com> domain name.

3. Respondent registered and used the <kuwaitairways.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant’s submission to the Panel indicates that Complainant operates under the KUWAIT AIRWAYS “corporate name and trademark.”

Respondent registered the <kuwaitairways.com> domain name on October 31, 2000. Complainant’s investigation into Respondent’s use of the domain name indicates that the subject domain name resolves to Complainant’s website, located at <kuwait-airways.com>.

Respondent is not authorized or licensed to utilize Complainant’s “Kuwait Airways” moniker in any fashion or for any purpose.

The Complaint contains e-mails that discuss Respondent’s attempted sale of the domain name registration to Complainant. Respondent makes suggestive comments such as “Make an offer,” and more explicit demands such as:

Kuwait Airways can offer 10 business class return tickets on their airline from [the] U.S.A. to my Client and take full control of the domain name. Alternatively Kuwait Airways can pay US $ TEN THOUSAND being the cost and the charges incurred.

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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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 fails in establishing rights in the KUWAIT AIRWAYS mark pursuant to Policy ¶ 4(a)(i).

Policy ¶ 4(a)(i) articulates an initial burden on Complainant, specifically, a complainant must prove that “[the respondent’s] domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights” (emphasis added). Although Complainant’s assertion that it holds a trademark reflecting the “Kuwait Airways” corporate name is uncontested by Respondent, Complainant fails to demonstrate with sufficient evidence its rights in the alleged mark. Complainant neglected to include any evidence indicating a trademark registration or application for the “Kuwait Airways” business moniker. Further, Complainant did not assert common law rights in the “Kuwait Airways” mark, and failed to submit any evidence suggesting extensive use or secondary source identity. Under the UDRP, a complainant must fulfill its initial burden to prove, by a preponderance of the credible, relevant and admissible evidence, that the domain name is identical or confusingly similar to a mark in which it has rights. See FRH Freies Rechenzerntrum v. Ingenieurburo FRH, FA 102945 (Nat. Arb. Forum Jan. 18, 2002) (determining that Complainant has not proven by a preponderance of the relevant, admissible and credible evidence that the domain name in question is identical to a trademark in which Complainant has rights despite Complainant’s mark being the dominant feature of Complainant’s trade name).

As stated, in initiating a proceeding under the UDRP, Complainant bears the initial burden of presenting a sufficient prima facie case showing rights in a mark. In the present dispute, Complainant asserts rights in the KUWAIT AIRWAYS mark, yet fails to adequately support its assertion with any evidence, statements or proof (e.g., business letterhead, sales figures, advertising expenditures, date of origination, number of consumers served). See Do the Hustle v. Tropic Web, D2000-0624 (WIPO August 21, 2000) (finding that paragraph 4(a) of the Policy sets out three elements implying that Complainant has the burden of proof as to each of the three elements); see also TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16 2002) (finding that in order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s initial burden is to provide proof of “valid, subsisting rights in a mark that is similar or identical to the domain name in question”).

Additionally, establishing brand significance and secondary source identification are paramount in illustrating rights in a trade name. Complainant’s submission includes no evidence that supports a finding that the consuming public has developed a sense of brand identity with its “Kuwait Airways” corporate identity or corresponding services. Although Complainant’s services may in fact be internationally recognized, that is a finding that must be supported by evidence and not self-serving assertions. UDRP precedent does not support merely protecting Complainant’s corporate name, absent evidence of secondary source identification or extensive use of the name in relation to specified services. See Diversified Mortgage, Inc. v. World Fin. Partners, FA 118308 (Nat. Arb. Forum Oct. 30, 2002) (finding that the UDRP makes clear that its “rules are intended only to protect trademarks, registered or common law, and not mere trade names, due to the fact that trade names are not universally protected as are trademarks”). Simply operating under a business name does not, per se, constitute secondary source identification. Complainant’s burden requires supporting evidence or information that indicates consumers identify its business name as a source identifier.

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has not been satisfied. Because satisfaction of each element listed under paragraph 4(a) is mandatory, it is not necessary to pursue analysis under Policy ¶¶ 4(a)(ii) or (iii). See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).

DECISION

Having failed to establish the elements required under ICANN Policy, the Panel concludes that relief shall be hereby DENIED.

Accordingly, it is Ordered that the <kuwaitairways.com> domain name REMAIN with Respondent.

Tyrus R. Atkinson, Jr., Panelist

Dated: December 3, 2002

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