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Generic Top Level Domain Name (gTLD) Decisions |
Continental Airlines, Inc. v. Mindal Park
Claim Number: FA0403000250002
PARTIES
Complainant
is Continental Airlines, Inc. (“Complainant”),
represented by W. Scott Brown, of Vinson & Elkins, L.L.P.,
2300 First City Tower, 1001 Fannin, Houston, TX 77002-6760. Respondent is Mindal Park (“Respondent”), SungJi A.P.T. 2Dong401 Ho.206, WonJong
2 Doung Ojung – Gu Buchun, City Kyenggi, Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <continentalairlines.com>,
registered with Netpia.com, Inc.
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.
Hong Oo Baak as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration
Forum (the “Forum”) electronically on March 26, 2004; the Forum received
a hard
copy of the Complaint on May 3, 2004.
The Complaint was submitted in both Korean and English.
On May 4, 2004, Netpia.com, Inc. confirmed by e-mail to the Forum
that the domain name <continentalairlines.com>
is registered with Netpia.com, Inc. and that the Respondent is the current
registrant of the name. Netpia.com,
Inc. has verified that Respondent is bound by the Netpia.com, Inc. 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 May 4, 2004, a Korean language Notification of Complaint and
Commencement of Administrative Proceeding (the “Commencement Notification”),
setting a deadline of May 24, 2004 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@continentalairlines.com
by e-mail.
A timely Response was received and determined to be complete on May
24, 2004.
An Additional Submission by Complainant was received on June 1, 2004,
which failed to comply with Supplemental Rule 7.
Pursuant to Rule 11(a) the Panel determines that the language
requirement has been satisfied through the Korean language Complaint
and
Commencement Notification and, being that the Complaint and Response were
submitted in both English and Korean, the Panel determines
that the remainder
of the proceedings may be conducted in English.
On June 4, 2004,
pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hong Oo Baak as
Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
First, Comlainant contends that the Disputed
Domain Name <continentalairlines.com> (hereinafter, “Disputed
Domain Name”) is
identical to and confusingly similar to the marks it owns, i.e., CONTINENTAL AIRLINES (hereinafter, “Mark”),
and its family of related marks (hereinafter, “Marks”). Complainant points out that the Disputed
Domain Name <continentalairlines.com> creates a likelihood of
confusion with Continental Airlines’ marks as to the source, sponsorship,
affiliation or endorsement of another’s
website or of any goods or services
promoted on the website and is certain to misleadingly divert web users trying
to locate the
legitimate CONTINENTAL AIRLINES website.
Second, Complainant contends that Respondent’s use of the
Disputed Domain Name <continentalairlines.com> is
just to divert customers who access the Disputed Domain Name to <flightreservationsonline.com>,
which presents an air travel reservation system operated by
FlightReservationsOnline.com,
and thus, Respondent has no rights or legitimate
interests in the Disputed Domain Name.
Thirdly, Complainant asserts that
Respondent was undoubtedly aware of Continental Airlines’ famous name and mark
CONTINENTAL AIRLINES
when it registered the Disputed Domain name and that Respondent’s
use of the Disputed Domain Name to divert web users indicates that Respondent registered the Disputed
Domain Name with
bad faith as defined by the Policy, to attract for commercial gain, Internet
users to its website or on-line location.
B. Respondent
Respondent contends that the mark
CONTINENTAL AIRLINES owned by Complainant is generic since it is a combination
of the generic terms
“continental” and “airlines,” and thus is not entitled to
trademark protection, and that even if it is entitled to protection the
protection must be very limited.
Respondent asserts that it uses the
Disputed Domain name to forward Internet users who access the site to <flightreservationsonline.com>,
by which Respondent operates a travel ticket reservation business.
Respondent also contends that the business
Respondent does is not airline transportation but travel ticket reservation or as
a travel
agent and thus does not fall within the categories of the designated
services of Complainant’s Marks.
Respondent also contends that it did not
register the Disputed Domain name in bad faith.
FINDINGS
1. Complainant is the fifth largest U.S.
airline.
2. Complainant
is the owner of the name and mark CONTINENTAL AIRLINES and a family of related
marks which are registered in the United
States and other countries.
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.
For a
trademark to be valid, a trademark must be distinctive, that is, capable of
identifying one firm’s goods or services and distinguishing
them from those of
another.
The
Mark consists of two parts, “continental” and “airlines.” The word “continental”
is generic because it describes an area that
airline services cover. The word “airlines”
is also descriptive because it describes the type of services.
However,
it appears that Complainant has proved that the Mark has been adopted and used
in commerce by Continental Airlines in connection
with airline transportation
services and thus has achieved secondary meaning. Thus, the Mark is entitled to
protection.
The Disputed Domain Name is identical to the mark
CONTINENTAL AIRLINES. The addition of a top level domain
designation (such as ".com") does not defeat a claim that a domain
name is identical to
a complainant's mark.
See, e.g., Blue Sky Software Corp.
v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000).
Accordingly, the Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent’s use of the
Disputed Domain Name <continentalairlines.com> is
just to divert customers who access the Disputed Domain Name to <flightreservationsonline.com>,
which presents an air travel reservation system operated by
FlightReservationsOnline.com,
and thus, Respondent has no rights or legitimate
interests in the Disputed Domain Name.
Respondent’s intentional diverting of users to a competitor’s site
does not constitute a bona fide offering of services and it is interpreted that Respondent has no rights or legitimate interests in the Disputed
Domain Name, for the purpose
of Policy ¶ 4(c)(i). See
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).
Accordingly, the Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
It is found that Respondent was aware of
Continental Airlines’ famous name and mark CONTINENTAL AIRLINES when it
registered the Disputed
Domain name, and the fact that Respondent has used the
Disputed Domain Name to divert web users indicates that Respondent registered the Disputed
Domain Name to
attract, for commercial gain, Internet users to its website or on-line
location.
Policy
¶ 4(b)(iv) provides that, for the purposes of Paragraph
4(a)(iii), if a person who registered a domain name has intentionally attempted to
attract, for commercial gain, Internet users to his/her website or other on-line location, by creating
a likelihood of confusion with the complainant's mark as to the source,
sponsorship,
affiliation, or endorsement of his/her website or location or of a
product or service on his/her website or location, it shall be evidence of the
registration and use of a domain name in bad faith.
Accordingly, the Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
For the reasons set forth above, Complainant,
having satisfied all
three elements
stated in
Paragraph 4(a) of the Policy, has established its prima facie case sufficient
to warrant transfer of the contested domain name.
Therefore, the Panel concludes that the requested
relief should be granted.
Accordingly, it is Ordered that the <continentalairlines.com> domain name
be transferred from Respondent to Complainant.
Hong
Oo Baak,
Panelist
Dated: June 18, 2004