South African Airways (Pty.) Limited v. Vern Six [2002] GENDND 794 (30 May 2002)

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DECISION

South African Airways (Pty.) Limited v. Vern Six

Claim Number: FA0204000109385

PARTIES

The Complainant is South African Airways (Pty.) Limited, Gauteng, South Africa (“Complainant”) represented by Frank J. Costello, of Zuckert, Scoutt & Rasenberger, L.L.P. The Respondent is Vern Six, Austin, TX (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <neverflysaa.com>, registered with Register.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.

R. Glen Ayers served 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, Register.com confirmed by e-mail to the Forum that the domain name <neverflysaa.com> is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.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 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 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@neverflysaa.com by e-mail.

A late Response was received and determined to be complete on May 2, 2002.

Additional submissions were received timely from Complainant on May 6, 2002.

On May 15, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed R. Glen Ayers as Panelist.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant, South African Airways (Pty.) Limited, asserts that is has registered “SAA” as a service mark in South Africa and twenty-one other countries and has used the mark in the United States. It claims common law marks in the United States for SAA and for <flysaa.com>. (Complainant alleges that it registered the domain name <flysaa.com> in 1996.)

Respondent has registered the domain name <neverflysaa.com>. This, says Complainant, is confusingly similar to its common law marks and registered mark (“SAA” being both a registered mark and a common law mark, at least in the United States).

Complainant asserts that the addition of “never” to <flysaa.com> mark does not save the mark, citing domain name cases such Vivendi Universal v. Sallen, D2001-1121 (WIPO Nov. 7, 2001) <vivendiuniversalsucks.com> and Societe Accor v. Hartmann, D2001-0007 (WIPO Mar. 13, 2001) <accorsucks.com>. Those decisions assert that not all Internet users are native English speakers and may be confused. In this case, such persons could believe that the domain name <neverflysaa.com> is owned or controlled by South African Airways and “not know the meaning of or the linguistic consequences of the addition of the prefix ‘never’.” “In fact, English is just one of eleven official languages within South Africa alone. ... Therefore, the domain name ‘neverflysaa.com’ is confusingly similar to the marks ....”

As evidence of bad faith, Complainant goes on to assert that the use of the marks as part of its domain name means that Internet users are likely to find <neveryflasaa.com> and be diverted, citing Bloomberg L.P. v. Secaucus Group, 97077 (Nat. Arb. Forum June 7, 2001) <michaelbloombergsucks.com>; TPI Holdings, Inc. v. AFX Communications, D2000-1472 (WIPO Feb. 2, 2001) (“autotradersucks.com”). Complainant also says that “Respondent also used meta-tags that identify the domain neverflysaa.com as the home page of South African Airways, in order to confuse Internet search engines and users about the ownership and control of the domain name.”

Respondent was certainly aware of the “SAA” and <flysaa.com> marks at the time that he registered the domain name <neverflysaa.com> because he registered the name with the specific intent of harassing Complainant as a result of a bad flight experience.

As to rights in the name, the Complainant asserts that other domain decisions hold that the use of a domain with a confusingly similar domain name for commentary is not permissible. Further, as Complainant points out, this domain seems to be more for the purpose of blackmail than fair use commentary.

Finally, the Complainant recites all of the “bad faith” things that Respondent has done, including agreeing to a settlement and then demanding cash.

B. Respondent

Respondent says: “The ‘Reasonable Man Test’ clearly dictates that no reasonable person would confuse the name ‘neverflysaa.com’ with the name ‘flysaa.com’.”

The remainder of the Response consists primarily of generally unsupported assertions about Respondent’s rights in the name and the absence of bad faith.

C. Additional Submissions

Complainant timely filed a additional submission, largely restating its prior submission, but also responding to certain unsupported allegations in Respondent’s papers that Complainant had “willingly and purposely lied to the forum,” that Complainant had released Respondent’s telephone number, exposing him to death threats, and that Complainant was engaged in reverse domain name hijacking.

FINDINGS

Respondent is correct: no reasonable man or Internet user would confuse <flysaa.com> and <neverflysaa.com>. The decisions cited by Complainant are nonsensical. Even if not nonsensical, the decisions all seem to involve cases in which the protected mark appeared first. That said, if an Internet user does not speak English, all of these domain names would make no sense.

Complainant has offered some evidence that “SAA” is a common law mark in the United States and is a registered mark in other countries. But, “neverflysaa.com” and “SAA” are simply not confusing.

Further, and if it were necessary to do so, the Panelist would hold that registration of a domain name alone does not create a common law mark. Complainant has wholly failed to establish the existence of a common law mark, “flysaa.com,” in this or any other country. For the elements necessary to establish a distinctive and famous mark, see generally, Victoria’s Secret Catalogue, Inc. v. Mosley, [2001] USCA6 246; 259 F.3d 464 (6^th Cir. 2001).

Certainly Respondent has no rights in the name, except for “fair use.” If it were necessary to reach that issue, the Panelist would be troubled by the factual allegations about blackmail. It looks like Respondent is just trying to “up the ante” on the settlement.

Further, Respondent has clearly behaved in bad faith – even if perhaps not quite in the ways expressed in the ICANN Rules and Policies. The use of meta tags could be enough. The use of the domain name to establish an anti-South African Airways billboard might pass the smell test but not if the totality of circumstances is considered. But, the Respondent’s bad faith or good faith are absolutely irrelevant where the first element – identical to or confusingly similar – is missing.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

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;

(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

The panelist holds that the domain name and the alleged common law marks are not confusingly similar.

Generic Top Level Domain Name (gTLD) Decisions

South African Airways (Pty.) Limited v. Vern Six [2002] GENDND 794 (30 May 2002)

National Arbitration Forum