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Southwest Airlines Co. v. Horoshiy, Inc. [2004] GENDND 1475 (21 November 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Southwest Airlines Co. v. Horoshiy, Inc.

Case No. D2004-0771

1. The Parties

The Complainant is Southwest Airlines Co., Dallas, Texas, United States of America, represented by Piper Rudnick, United States of America.

The Respondent is Horoshiy, Inc., Curacao, Netherlands Antilles, Netherlands.

2. The Domain Name and Registrar

The disputed domain name <southwestairlinesvacations.com>, is registered with NameKing.com .

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2004. On September 24, 2004, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name at issue. On September 24, 2004, NameKing.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 6, 2004. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 12, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 1, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2004.

The Center appointed James McNeish Innes as the sole panelist in this matter on November 15, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a corporation having its principal place of business in Dallas, Texas, United States of America. It provides airline transportation services and a variety of related transport services including hotel, airfare and rental car packages throughout the United States. The Complainant has for more than 30 years used the mark and name SOUTHWEST AIRLINES in connection with its transportation services in the United States. The Complainant has used the following marks

∙ SOUTHWEST

∙ SOUTHWEST AIRLINES

∙ SOUTHWEST AIRLINES VACATIONS

∙ SOUTHWEST VACATIONS

∙ SWA VACATIONS

To help protect its trademark rights and put others on notice of these rights the Complainant has obtained numerous US trademarks including but not limited to numbers 1,2081; 1,738670; 2,112041; 2,623857; 2,625085 and 2,313710 on the Principal Register of the United States Patent and Trade Mark Office for SOUTHWEST, SOUTHWEST AIRLINES, SOUTHWEST AIRLINES A SYMBOL OF FREEDOM, SOUTHWEST.COM, SOUTHWEST.COM A SYMBOL OF FREEDOM, SWA and variations thereof.

The Complainant is the fourth largest airline in the United States flying more that 64 million passengers a year to 59 airports throughout the United States. The Complainant has a significant presence on the Internet and generates a substantial proportion of its bookings through its websites at <southwest.com> and <southwestairlines.com>.

5. Parties’ Contentions

A. Complainant

The complaint is made on the basis that

(i) The Respondent registered the domain name through NameKing without the Complainant’s consent or authorization and was familiar with the famous marks at the time of registration and intentionally registered a name confusingly similar to the SOUTHWEST AIRLINES marks in order to profit from the goodwill associated with the mark and/or to profit from selling the domain name.

(ii) The Respondent’s purpose in registering the domain name is to wrongfully misappropriate the goodwill symbolized by the SOUTHWEST AIRLINES marks and to capitalize off the goodwill through attracting Internet users to the <southwestairlinesvacations.com> website.

(iii) The domain names is confusingly similar to Southwest Airlines’ name, and to the SOUTHWEST AIRLINES Marks and to Southwest Airlines’ official websites: “www.southwest.com”, “www.southwestairlines.com”, “www.southwestvacations.com” and “www.southwestvacations.com”.

(iv) The Respondent has no legitimate interest in the domain name in view of Southwest Airlines prior statutory and common law rights in the SOUTHWEST AIRLINES marks.

(v) The Respondent is a serial cybersquatter who targets famous companies and incorporates their trademarks in a domain name that directs Internet users to websites which promote or have links to other websites that often compete with the business of the famous companies.

(vi) The Respondent’s only use of the domain name at issue is to divert consumers to it in connection with offers of travel related services in direct competition with the Complainant.

(vii) The Respondent has not used the domain name for legitimate personal or business purposes but is used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to Paragraph 15(a) of the Rules the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

1) That 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) That the Respondent has no legitimate interests in respect of the domain name.

3) That the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The domain name in issue in this case is <southwestairlinesvacations.com>. The Complainant has to prove that the domain name is identical to or confusingly similar to a mark in which the Complainant has rights. From the submissions by the Complainant supported by documentary evidence it follows that the Complainant has registered trademark rights in a number of SOUTHWEST AIRLINES marks in the United States. However there does not appear to be any registered or clearly established unregistered right in the trademark “southwestairlinesvacations.com”. Notwithstanding this fact the disputed domain name is confusingly similar to those trademarks in which the Complainant does have rights. The only difference between the Complainant’s trademark SOUTHWEST AIRLINES and the domain name is the generic word ‘vacations’ and the addition of the generic ‘.com’ domain. This panel adopts the decision in Southwest Airlines Co v. Damir Kruzicevic WIPO Case No. D2003-0249 and finds that given the undoubted reputation of the Complainant and the very close association between Complainant’s airline services and its vacation services the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

According to Paragraph 4a(ii) of the Policy the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name. Paragraph 4(c) sets out certain circumstances in particular but without limitation, which if found by the Panel to be proved on its evaluation of all the evidence presented, shall demonstrate rights or a legitimate interest on the part of the Respondent. The Respondent has not submitted a response and has failed to invoke any circumstance which could have demonstrated any rights or legitimate interest in the domain name. The Complainant has asserted that the Respondent has no authorization for using the SOUTHWEST AIRLINES marks. There is no evidence for any circumstance which could have demonstrated any rights or legitimate interests. Accordingly the panelist holds that the Respondent has no legitimate interests or rights in registering the domain name.

C. Registered and Used in Bad Faith

Given the Respondent’s failure to file a response the Panel accepts as true the supported assertions of the Complainant. Paragraph 4(b) of the Policy sets out a number of circumstances in particular but without limitation, which if found by the Panel, to be present shall be evidence of bad faith. The Complainant’s assertions touch upon these particular circumstances. Inter alia the Complainant has asserted that the Respondent’s only use of the domain name is to divert customers to other websites which offer travel related services in direct competition with the Complainant. The Complainant has also asserted that the Respondent is in fact a serial cybersquatter who targets famous companies and incorporates their trademark in a domain name. In the light of the above, the Complainant has proven bad faith in registration and use on the part of the respondent.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <southwestairlinesvacations.com> be transferred to the Complainant.

__________________________________

James McNeish Innes
Sole Panelist

Dated: November 21, 2004