|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
Delta Corporate Identity, Inc. v. Dotsan
Claim Number: FA0203000105750
PARTIES
Complainant
is Delta Corporate Identity, Inc.,
Atlanta, GA (“Complainant”) represented by Paul
D. McGrady, of Ladas & Parry. Respondent is Dotsan, Mumbai, INDIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <deltaairline.com>,
registered with Bulkregister.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known
conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 1, 2002; the Forum received
a hard copy of the
Complaint on March 5, 2002.
On
March 5, 2002, Bulkregister confirmed by e-mail to the Forum that the domain
name <deltaairline.com> is
registered with Bulkregister and that Respondent is the current registrant of
the name. Bulkregister has verified
that Respondent is bound by the Bulkregister 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
March 11, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of April 1,
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@deltaairline.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
April 4, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Hon.
Carolyn Marks Johnson 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
allegations:
The
<deltaairline.com> domain name is confusingly similar to
Complainant's DELTA AIR LINES 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 did not file a Response in this proceeding.
FINDINGS
Complainant has used the DELTA AIR LINES
mark as well as its family of DELTA marks throughout the world in relation to
its air transportation
services.
Complainant is the leading United States airline in the transatlantic,
offering the most daily flight departures, serving the largest
number of
nonstop markets and carrying more passengers than any other United States
airline. Complainant’s annual revenues
are nearly $15 billion dollars and it spends millions every year on
advertising. Complainant has developed
a large amount of goodwill in its DELTA family of marks and serves customers on
the Internet at <delta.com>.
Respondent registered the disputed domain
name on September 24, 2001. Respondent
is using the disputed domain name in order to redirect Internet traffic to GITO
Travel at <gotoo.com>, which offers
competing air transportation services
and vacation packages.
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 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.
Complainant established in this
proceeding that it has rights to the DELTA AIR LINES mark through registration
and continuous use. The domain name
registered by Respondent, <deltaairline.com>, is confusingly
similar to Complainant’s mark because it incorporates the entirety of
Complainant’s mark and merely deletes the
“s” at the end of airlines. It is well established that deletion of one
letter such as an “s” at the end of a famous mark does not create a distinct
mark capable
of overcoming a claim of confusing similarity. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO
Sept. 5, 2000) (finding that deleting the letter “s” from Complainant’s
UNIVERSAL STUDIOS STORE mark did not change
the overall impression of the mark
and thus made the disputed domain name confusingly similar to it); see also
Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name that differs by
only one letter from a trademark has a greater tendency
to be confusingly
similar to the trademark where the trademark is highly distinctive).
Furthermore, the addition of a generic
top-level domain name such as “.com” is
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).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Complainant established its rights to or
legitimate interests in the DELTA AIR LINES mark in this proceeding. Respondent did not come forward with a
Response in this proceeding and the Panel may presume that Respondent has no
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 is using the disputed domain
name in order to divert Complainant’s customers to a competing website. Using Complainant’s trademark without
Complainant’s authority in order to attract Internet users to a website that
competes with Complainant’s
business is not considered to be a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i). See Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21,
2000) (finding that the disputed domain names were confusingly similar to
Complainant’s mark and that
Respondent’s use of the domain names to sell
competing goods was illegitimate and not a bona fide offering of goods); see
also Ticketmaster Corp. v.
DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or
legitimate interests where Respondent generated commercial gain by
intentionally
and misleadingly diverting users away from Complainant's site to
a competing website).
Furthermore, based on the fame of
Complainant’s family of DELTA marks it can be inferred that Respondent is not
commonly known by
<deltaairline.com>, 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
Victoria’s Secret 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).
Respondent is intentionally diverting
Internet users to its website for its own commercial gain and is therefore not
making a legitimate,
noncommercial or fair use of the disputed domain pursuant
to Policy ¶ 4(c)(iii). See Kosmea Pty Ltd. v. Krpan, D2000-0948
(WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has
an intention to divert consumers of Complainant’s
products to Respondent’s site
by using Complainant’s mark).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Complainant urges that Respondent acted
in bad faith in registering a domain name containing Complainant’s famous
mark. Because of the well-known nature
of Complainant’s DELTA family of marks, the Panel may assume that Respondent
was on notice of the
existence of Complainant’s DELTA AIR LINES mark when
Respondent registered <deltaairline.com>. Therefore, Respondent’s registration of an
infringing domain name, despite notice, is evidence of bad faith. 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 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 world-wide prominence of the mark and thus Respondent
registered the domain name in bad faith).
Respondent’s use of a confusingly similar
domain name to redirect Internet users to a competing website also is evidence
of bad faith,
pursuant to Policy ¶ 4(b)(iii).
See EthnicGrocer.com, Inc.
v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad
faith where Respondent’s sites pass users through to Respondent’s competing
business); see also Puckett v.
Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has
diverted business from Complainant to a competitor’s website in violation
of
Policy ¶ 4(b)(iii)).
Furthermore, the facts in this case
permit the inference that Respondent’s use of the disputed domain name in order
to divert Complainant’s
customer to a competing website was for Respondent’s
commercial gain and therefore bad faith pursuant to Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum
Sept. 12, 2000) (finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe
on Complainant’s goodwill and attract Internet
users to Respondent’s website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users
seeking the Complainant’s
site to its own website for commercial gain).
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 <deltaairline.com>
be transferred from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: April 18, 2002.
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/571.html