Generic Top Level Domain Name (gTLD) Decisions

DECISION

Delta Corporate Identity, Inc. and Delta Air Lines, Inc. v. Tuna Orbay

Claim Number: FA0211000133619

PARTIES

Complainant is Delta Corporate Identity, Inc. and Delta Air Lines, Inc., Atlanta, GA, USA (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry, Digital Brands Practice. Respondent is Tuna Orbay, Ankara, TURKEY(“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <wwwdelta.com>, registered with Innerwise, Inc. d/b/a Itsyourdomain.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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 12, 2002; the Forum received a hard copy of the Complaint on November 12, 2002.

On November 12, 2002, Innerwise, Inc. d/b/a Itsyourdomain.com confirmed by e-mail to the Forum that the domain name <wwwdelta.com> is registered with Innerwise, Inc. d/b/a Itsyourdomain.com and that Respondent is the current registrant of the name.  Innerwise, Inc. d/b/a Itsyourdomain.com has verified that Respondent is bound by the Innerwise, Inc. d/b/a Itsyourdomain.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 November 14, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 4, 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@wwwdelta.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 December 20,2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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 makes the following assertions:

Respondent’s <wwwdelta.com> domain name is confusingly similar to Complainant’s registered DELTA mark.

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

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

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

FINDINGS

Complainants, Delta Corporate Identity, Inc. and Delta Air Lines, Inc., are holder and licensee, respectively, of the worldwide family of marks incorporating the DELTA mark. These include Complainants’ DELTA AIR LINES mark (e.g. U.S. Reg. No. 970,418, registered on October 9, 1973 and Canadian Reg. No. 394,181, registered on August 12, 1977). For the purposes of this dispute, both Complainants will be referred to as “Complainant.”

Complainant, in many respects the largest U.S. airline and ranked as the 116th largest company in the world according to Fortune magazine, serves 205 cities domestically and 44 additional cities worldwide. Complainant’s annual revenues approach nearly $15 billion dollars, with many millions of dollars spent on advertising and promotion of its DELTA family of marks. Through these expenditures and via its worldwide use of the DELTA mark, Complainant has established substantial goodwill and consumer recognition of its mark.

Complainant also maintains a presence on the Internet, including at the <delta.com> domain name. At this website, Complainant markets its services directly to its worldwide consumer base and provides information about those services.

Respondent, Tuna Orbay, registered the <wwwdelta.com> domain name on May 20, 2001, and is not licensed or authorized by Complainant to use the DELTA family of marks for any purpose. Respondent previously used the disputed domain name in association with an advertising agreement with <linkshare.com>, presumably linking Internet users to other, commercial websites for profit or a commission. Currently, Respondent posts no content at the website.

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 has established sufficient rights in the DELTA family of marks due to registration of the marks on governmental registers worldwide, as well as through widespread and continuous use of the mark.

Respondent’s <wwwdelta.com> domain name is confusingly similar to Complainant’s DELTA mark. Respondent has done nothing to distinguish the fact that the dominant characteristic of the domain name is the DELTA mark, other than to add a “www” prefix. This prefix results in the creation of a domain name that resembles the result of an Internet user partaking in the common mistake of omitting the period between the “www” and the second-level domain they are attempting to locate. Users who wish to reach “www.delta.com” but inadvertently fail to type in a period will instead reach <wwwdelta.com>. This is not a relevant distinction for purposes of a Policy ¶ 4(a)(i) analysis. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”).

Respondent’s addition of the top-level domain “.com”, a feature that is required for all domain name registrants, also fails to prevent the Panel from finding Respondent’s domain name to be confusingly similar to Complainant’s mark. 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 Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").

Accordingly, Policy ¶ 4(a)(i) is satisfied. 

Rights or Legitimate Interests

Policy paragraphs 4(c)(i)-(iii) list three circumstances illustrative of situations where a respondent would have rights or legitimate interests in a domain name. When a respondent has failed to respond to a complaint, a showing by a complainant that none of these three circumstances are present is sufficient for that complainant to meet its burden under the Policy. At that point, the burden shifts to the respondent to rebut the complainant’s allegations. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

In these circumstances, Respondent’s failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Respondent originally used the <wwwdelta.com> domain name to redirect Internet users to the commercial website with which it was affiliated with at <linkshare.com>.  This attempt by Respondent to earn compensation from the re-direction of Internet users through the use of Complainant’s mark was neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use); see also Oly Holigan, L.P. v. Private, FA 95940 (Nat. Arb. Forum Dec. 4, 2000) (finding no rights or legitimate interest in a misspelled domain name because Respondent did not provide any bona fide products in connection with the domain name); see also Encyclopaedia Brittanica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of Complainant's mark).

Respondent’s contact information states that it is “Tuna Orbay,” and no evidence supports the proposition that it has ever been “commonly known by” the name WWWDELTA or <wwwdelta.com>. Furthermore, given the prominence and widespread use of the DELTA mark, it is highly unlikely that Respondent could ever claim to be known by the disputed domain name. As such, the Panel finds that Complainant has met its burden in showing that Respondent does not fall under the ambit of Policy ¶ 4(c)(ii). 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 Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <wwwdelta.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

While Policy paragraph 4(b) lists four circumstances evidencing bad faith use and registration of a domain name, that list is not meant to be all-inclusive. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in ¶4(b), does not mean that the domain names at issue were not registered in and are not being used in bad faith”).

One example of bad faith use and registration not directly illustrated in the Policy, yet nevertheless representing bad faith use and registration of a domain name under Policy ¶ 4(a)(iii), is typosquatting. See AltaVista Co. v. Stoneybrook, D2000-0886 (WIPO Oct. 26, 2000) (awarding <wwwalavista.com>, among other misspellings of altavista.com, to Complainant); see also Dow Jones & Co. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (awarding domain names <wwwdowjones.com>, <wwwwsj.com>, <wwwbarrons.com> and <wwwbarronsmag.com> to Complainants). Respondent’s registration and use of the <wwwdelta.com> domain name qualifies as typosquatting (simply adding a “www” prefix to a mark in which another has rights exemplifies typosquatting) and therefore evidences bad faith use and registration.

Further evidence of Respondent’s bad faith use and registration of the disputed domain name can be inferred from the fact that Respondent had actual knowledge of Complainant’s mark when it registered the infringing domain name, and subsequently used it to redirect Internet users to Complainant’s website. Such registration and use is another non-enumerated example of bad faith under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith).

Finally, as Respondent was using the disputed domain name to redirect Internet users to <linkshare.com>, Complainant’s uncontested assertions allege that this was done for commercial gain through advertising commissions. In using Complainant’s mark to achieve this commercial end, Respondent’s registration and use of the <wwwdelta.com> domain name fulfilled the criteria set forth in Policy ¶ 4(b)(iv), and therefore evidences bad faith registration and use. See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy 4(b)(iv)); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked the domain name to another website <iwin.com>, presumably, Respondent received a portion of the advertising revenue from site by directing Internet traffic to the site, thus using a domain name to attract Internet users, for commercial gain).

Accordingly, the Panel finds that Respondent registered and used the <wwwdelta.com> domain name in bad faith, and Policy ¶ 4(a)(iii) is satisfied.

DECISION

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

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

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: December 30, 2002

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