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Generic Top Level Domain Name (gTLD) Decisions |
Delta Corporate Identity, Inc. v. Patrick
Ory
Claim Number: FA0204000109375
PARTIES
Complainant
is Delta Corporate Identity, Inc.,
Atlanta, GA (“Complainant”) represented by Paul
D. McGrady, of Ladas & Parry. Respondent is Patrick Ory, Cancun, Cancun, MEXICO (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <delta-airlines-fares.com>
and <deltaairlinesreservation.com>, registered with Joker.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.
James
Alan Crary as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically
on April 9, 2002; the Forum received
a hard copy of the Complaint on April 10,
2002.
On
April 10, 2002, Joker.com confirmed by e-mail to the Forum that the domain
names <delta-airlines-fares.com> and <deltaairlinesreservation.com>
are registered with Joker.com and that Respondent is the current registrant of
the names. Joker.com has verified that
Respondent is bound by the Joker.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
April 10, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of April 30,
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@delta-airlines-fares.com, and
postmaster@deltaairlinesreservation.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
May 14, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed James
Alan Crary 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 names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<delta-airlines-fares.com> and <deltaairlinesreservation.com>
domain names are confusingly similar to Complainant's DELTA AIR LINES mark.
Respondent
has no rights or legitimate interests in the disputed domain names.
Respondent
registered and used the disputed domain names in bad faith.
B.
Respondent
No
Response was received.
FINDINGS
Complainant first registered the DELTA
AIR LINES mark with the United States Patent and Trademark Office in 1950 as
Registration Number
523,611.
Complainant has since registered the mark in Argentina, Australia,
Canada, Costa Rica, France, and Guatemala.
Complainant is also the owner of an entire family of DELTA marks. Complainant uses the DELTA family of marks
in relation to its air transportation services. Complainant is known throughout the world, and its route network
covers 221 domestic cities in 48 states and 118 cities in 47 countries. Complainant’s annual revenues are nearly
$15 billion dollars and its advertising expenditures are in the millions. Complainant has also utilized the Internet
for direct marketing at its domain names <delta.com> and <deltavacations.com>.
Respondent registered the disputed domain
names on November 12, 2000 and November 14, 2000. Respondent is using the disputed domain names in order to
redirect Internet users to <cheaptravelnetwork.quixo.com>. This website offers air transportation and
travel services that directly compete with Complainant’s services
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 the Respondent is identical or confusingly
similar 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 and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant has established that it has
rights in its DELTA AIR LINES mark through registration and continuous
use. Respondent’s <delta-airlines-fares.com> domain name is confusingly similar to Complainant’s mark because it
incorporates the entirety of Complainant’s mark and adds hyphens
between the
words. The use of hyphens between words
does not create a distinct mark capable of overcoming a claim of confusing
similarity. See Easyjet
Airline Co. v. Harding, D2000-0398 (WIPO June 22, 2000) (finding it
obvious that the domain name <easy-jet.net> was virtually
identical to Complainant's EASYJET mark and therefore that they are confusingly
similar). Furthermore, the addition of
a generic term to Complainant’s well-known mark is not considered to create a
new mark capable of overcoming
a claim of confusing similarity. Respondent added the term “fares” to
Complainant’s DELTA AIR LINES mark in <delta-airlines-fares.com>
and “reservation” to <deltaairlinesreservation.com>; these are generic terms and therefore
do not create distinct marks capable of overcoming a claim of confusing
similarity. See Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of the
Complainant combined with a generic
word or term); see also Sony Kabushiki
Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’
detract
from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is
satisfied).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward
with a Response and therefore it is presumed that Respondent has no rights or legitimate
interests
in the disputed domain names.
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 two confusingly
similar domain names in order to divert Internet users to a website that
competes with Complainant’s
services.
This is not considered to be a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) and therefore does not create
rights or legitimate
interests in the disputed domain names.
See Vapor Blast Mfg. Co. v.
R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding
that Respondent’s commercial use of the domain name to confuse and divert
Internet
traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554
(Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was
diverting consumers to its own website by
using Complainant’s trademarks).
Respondent is known to the Panel as
Patrick Ory, not as <delta-airlines-fares.com> or <deltaairlinesreservation.com>. Respondent has not submitted any evidence
that it is commonly known as the disputed domain names and therefore has not
established
that it has rights or legitimate interests in the disputed domain
names pursuant to Policy ¶ 4(c)(ii). See
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); see also CBS Broadcasting,
Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that
Respondent failed to demonstrate any rights or legitimate interests in the
<twilight-zone.net>
domain name since Complainant had been using the
TWILIGHT ZONE mark since 1959).
Respondent is using the disputed domain
names in order to divert Complainant’s customers to a website that competes
with Complainant’s
services. The
domain names are confusingly similar to Complainant’s DELTA AIR LINES mark and
therefore, Internet users may be confused as to
the source, sponsorship, and
affiliation of the disputed domain names.
The use of the <delta-airlines-fares.com> or <deltaairlinesreservation.com>
in order to create a likelihood of confusion for Respondent’s commercial gain
is not considered to be a legitimate noncommercial
or fair use and therefore
does not create rights or legitimate interests pursuant to Policy ¶
4(c)(iii). See AltaVista v. Krotov, D2000-1091 (WIPO
Oct. 25, 2000) (finding that use of the domain name to direct users to other,
unconnected websites does not constitute
a legitimate interest in the domain
name); see also 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.
Registration and Use in Bad Faith
Based on the fame of Complainant’s mark
it can be inferred that Respondent was on notice as to Complainant’s mark when
it registered
the disputed domain names.
Therefore, Respondent’s registration of <delta-airlines-fares.com>
and <deltaairlinesreservation.com>, despite this notice is
evidence of bad faith registration. See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly
known mark at the time
of registration); 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).
Furthermore, Respondent’s use of
Complainant’s mark in both domain names creates a likelihood of confusion for
Respondent’s commercial
gain because the disputed domain names divert
Complainant customers to Respondent’s competing website. This is evidence of bad faith use 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 Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent
registered and used an infringing domain name to attract
users to a website
sponsored by Respondent).
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 names <delta-airlines-fares.com> and <deltaairlinesreservation.com>
be transferred from Respondent to Complainant.
James Alan Crary, Panelist
Dated: May 22, 2002
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