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Generic Top Level Domain Name (gTLD) Decisions |
American
Airlines Inc. v. Namjunghoon
Claim Number: FA0112000102959
The Complainant is American Airlines Inc., Dallas-Fort Worth Airport, TX, USA (“Complainant”) represented by Kay Lyn Schwartz, of Gardere Wynne Sewell. The Respondent is Namjunghoon, Seoul, KOREA (“Respondent”).
The domain name at issue is <americanair.biz>, registered with YesNIC Co. Ltd.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.
Sandra Franklin 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 December 14, 2001; the Forum received a hard copy of the Complaint on December 17, 2001.
On December 21, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 10, 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 30, 2002, pursuant to STOP Rule 6(b), the Forum appointed Sandra Franklin 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
The <americanair.biz> domain name is identical to Complainant's AMERICAN AIR mark.
Respondent has no rights or legitimate interests in the <americanair.biz> domain name.
Respondent registered the <americanair.biz> domain name in bad faith.
B. Respondent
Respondent failed to submit a Response.
Complainant owns a service mark for AMERICAN AIR and has used the mark since 1934. Complainant is also the owner of an entire family of marks incorporating AMERICAN AIRLINES and AMERICAN AIR. Additionally, Complainant holds registration of <americanair.com>, and <americanairlines.com> among others. Complainant is one of the largest airlines in the United States. It has acquired tremendous goodwill in its name and the quality of its services.
Respondent registered the disputed domain name on November 19, 2001. Complainant's investigation did not find any trademarks or service marks owned by Respondent. Respondent is not affiliated with the Complainant.
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, through continuous use and numerous registrations in the United States has established that it has rights in the AMERICAN AIR mark. The <americanair.biz> domain name is identical to Complainant's AMERICAN AIR mark.
Therefore, the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to come forward with a Response and therefore it is
presumed that Respondent has not demonstrated rights or
legitimate interests in
the disputed 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, when Respondent fails 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”).
Respondent has not come forward to present any evidence that it owns a trademark or service mark anywhere in the world for the AMERICAN AIR mark. Therefore Respondent has not demonstrated that it has rights or legitimate interests in the <americanair.biz> domain name pursuant to STOP Policy ¶ 4(c)(i).
Based on the fame of Complainant's mark, any planned use by Respondent would be an opportunistic attempt to attract Complainant's customer's to Respondent's website by creating a likelihood of confusion with Complainant. Such behavior is not considered to be a bona fide offering of goods or services pursuant to STOP 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 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).
There is no evidence on the record nor has Respondent come forward to establish that it is commonly known by <americanair.biz>. Without evidence the Panel cannot find that Respondent has rights or legitimate interests in the disputed domain name pursuant to STOP Policy ¶ 4(c)(iii). See Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>); see also 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).
The Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.
Because of the famous and distinctive nature of Complainant's AMERICAN AIR mark, Respondent is thought to have been on notice of the existence of Complainant's mark at the time Respondent registered the infringing <americanair.biz> domain name. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith).
Furthermore, based on the famous nature of Complainant's mark, it can be inferred that Respondent registered the domain name in order to create a likelihood of consumer confusion for its own commercial gain. The <americanair.biz> domain name is identical to Complainant's AMERICAN AIR mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant. Registration of the <americanair.biz> domain name despite it being identical is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(iv). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that 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”); 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 Start-up Trademark Opposition Policy, the Panel concludes that relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <americanair.biz> be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against this domain name shall not be permitted.
Sandra Franklin, Panelist
Dated: February 11, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/194.html