DECISION

OnAirlines, Inc. v. buydmains

Claim Number:  FA0404000250746

PARTIES

Complainant is OnAirlines, Inc. (“Complainant”), represented by Noel E. Frank Jr., 722 Hillgirt Circle, Apartment 2, Oakland, CA 94610.  Respondent is buydmains (“Respondent”), 4200 Wisconsin Avenue NW, Suite #106-190, Washington, D.C., 20016-2143.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <onair.com>, registered with 1 eNameCo.

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 2, 2004; the Forum received a hard copy of the Complaint on April 5, 2004.

On April 9, 2004, 1 eNameCo. confirmed by e-mail to the Forum that the domain name <onair.com> is registered with 1 eNameCo. and that Respondent is the current registrant of the name. 1 eNameCo. has verified that Respondent is bound by the 1 eNameCo. 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 15, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 5, 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@onair.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 24, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 assertions:

1. Respondent’s <onair.com> domain name is confusingly similar to Complainant’s ONAIRLINES mark.

2. Respondent does not have any rights or legitimate interests in the <onair.com> domain name.

3. Respondent registered and used the <onair.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, OnAirlines, Inc, is a startup passenger and charter airline service.  Complainant began trading under the ONAIRLINES mark on March 14, 2003.  It filed a service mark application for the ONAIRLINES mark (78,260,235) on June 10, 2003 with the U.S. Patent and Trademark Office (“USPTO”).  Complainant claims that it is common practice for airlines to truncate their names and register domain names under the truncated word (e.g. <jetblue.com> for JetBlue Airways, <spiritair.com> for Spirit Airlines, <delta.com> for Delta Air Lines).

Complainant alleges Respondent does not have rights or legitimate interests in the domain name: “Respondent acquired [<onair.com>] for the express purpose of resale and, based on Respondent’s established business, intends to sell [<onair.com>] for an amount greater then the cost of acquisition.”  “Respondent did not intend or plan to use [<onair.com>] for their own use or in connection with a bona fide offering of goods or services before receiving notice of this dispute.” 

As part of its start up efforts, Complainant sought, as early as July 28, 2003, to procure the <onair.com> domain name.  It asserts that it backordered the domain name through two registrars, Network Solutions and GoDaddy, on July 28, 2003, and November 14, 2003.  Although it backordered the domain name, Complainant asserts that Respondent registered the domain name on March 12, 2004.  Complainant alleges, “Respondent’s technological advantage in capturing domain names as they become available is unfair competition.”  Complainant also asserts that “there are indications Respondent, with their expertise, proficiency and resources in capturing and reselling domain names, detected Complainant’s interest and activity in the Domain Name in Dispute and actions were taken to capture the domain for the express purpose of selling it to Complainant for a price in excess of Respondent’s out-of-pocket costs.”

Respondent, buydmains, registered the <onair.com> domain name on March 11, 2004, according to the WHOIS domain name registration information.  The disputed domain resolves to <buydomains.com>—a domain sales website.   The website offers the disputed domain name for sale.

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 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.

Identical and/or Confusingly Similar

Complainant has established rights in the ONAIRLINES mark through a registration application with the U.S. Patent and Trademark Office (“USPTO”).  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications); see also British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).

Although Complainant demonstrates that “air” is a common abbreviation for “airline,” it does not address the resultant mark in its totality:  the word “on air” is a common expression in the field of broadcasting.  Nonetheless, in the absence of a Response, the Panel accepts that ONAIR is a common abbreviation of Complainant’s ONAIRLINES mark.  Therefore, Complainant need merely show similarity.

The test for similarity has a low threshold of proof, requiring Complainant to demonstrate Respondent is including Complainant’s mark in the disputed domain name.  See Nikon, Inc. and Nikon Corp. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name rather than upon the likelihood of confusion test under U.S. trademark law); see also Desktop Media, Inc. v. Desktop Media, Inc., FA 96815 (Nat. Arb. Forum Apr. 12, 2001) (“[F]or the limited purposes of the domain name dispute resolution process[,] a low threshold of proof is all that is required to meet the first element ….”).  The Panel finds Respondent’s <onair.com> domain name to be confusingly similar to Complainant’s ONAIRLINES mark.  The only difference is the omission of the word “lines,” abbreviating “airlines” to “air.”   This does not significantly distinguish the domain name from the mark, especially since abbreviating “airlines” to “air” is a standard practice in the airline industry.  See Delta Corp. Identity, Inc. v. Seventh Summit Ventures, FA 133621 (Nat. Arb. Forum Dec. 31, 2002) (finding that the omission of the word “lines” did not significantly distinguish the domain name from Complainant’s DELTA AIR LINES mark); see also Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (stating that “[n]otwithstanding the analysis by Respondent, ‘modprops’ is a contraction or shorthand for ‘Modern Props.’ ‘Mod’ cononotes [sic] ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning”).

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not filed a Response in this matter.  Therefore, the Panel may accept all reasonable allegations and assertions of fact to be true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Strum v. Nordic Net Exchange AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that in accordance with Paragraph 14(b) of the Policy, the Panel may draw such inferences as it considers appropriate, if Respondent fails to comply with the Panel's requests for information).

Using a domain name to sell domain name registrations may be a bona fide offering of goods or services in the absence of bad faith.  See Fifty Plus Media Corp. v. Digital Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000) (finding that Complainant failed to prove that Respondent had no rights in the domain name and had registered and used the domain name in bad faith where Respondent is an Internet business which deals in selling or leasing descriptive/generic domain names); Front Range Internet, Inc. v.  David Murphy, FA 145231 (Nat. Arb. Forum Apr. 4, 2003) (“In some circumstances, the trading of domain name registrations is considered a bona fide offering of goods and services.”).

Respondent is appropriating Complainant’s mark to sell it and other domain names.  Complainant alleges “Respondent acquired <onair.com> for the express purpose of resale and, based on Respondent’s established business, intends to sell <onair.com> for an amount greater then the cost of acquisition.”  “Respondent did not intend or plan to use <onair.com> for their own use or in connection with a bona fide offering of goods or services before receiving notice of this dispute.”  A bulk domain name reseller does not, per se, lack rights any domain name that is similar to another’s trademark.  However, in light of the lack of a Response, the Panel deems Complainant’s assertion reasonable: merely selling <onair.com> does not establish equitable interests in the domain name; it is not a bona fide offering of a good or service, pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use of the domain name, pursuant to ¶ Policy 4(c)(iii).  See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit). 

There is nothing in the record, including the WHOIS domain name registration information, which establishes that Respondent is otherwise known as <onair.com>.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant alleges that Respondent’s method of acquiring domain names is unfair: “Respondent’s technological advantage in capturing domain names as they become available is unfair competition.”  It alleges that this behavior is bad faith pursuant to Policy ¶ 4(a)(iii) because it is predatory.  While Panels have examined the timing of a domain name registration (see, e.g., New Piper Aircraft, Inc. v. Piper.com, FA 94367 (Nat. Arb. Forum May 2, 2000)), they have not addressed the method of registration in determining bad faith.  Complainant’s allegation of “unfair competition” questions the Registrars’ activities, and the Panel finds that it is outside the scope of the Policy.  See Thread.com, LLC v. Poploff, D2000- 1470 (WIPO Jan. 5, 2001) (stating that “this Panel is not a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names”); see also Commercial Publ'g Co. v. EarthComm, Inc., FA 95013 (Nat. Arb. Forum July 20, 2000) (stating that the Policy is intended to resolve only a narrow class of cases of “abusive registrations” and does not extend to cases where a registered domain name is subject to legitimate disputes, which are relegated to the courts).

According to Complainant, Respondent detected Complainant’s interest in <onair.com> and acted to benefit from this interest: “[T]here are indications Respondent, with their expertise, proficiency and resources in capturing and reselling domain names, detected Complainant’s interest and activity in the Domain Name in Dispute and actions were taken to capture the domain for the express purpose of selling it to Complainant for a price in excess of Respondent’s out-of-pocket costs.”  The Panel will address this in four parts.

First, the Panel finds that hedging a domain name, in itself, is not bad faith.  See Seaway Bolt & Specials Corp. v. Digital Income Inc., FA 114672 (Nat. Arb Forum August 5, 2002) (finding that the speculation in domains that reflect ordinary dictionary words is not bad faith unless Respondent registered the name with the intent of selling the registration to Complainant or a competitor of Complainant); see also Jones v. Gregory, FA 125747 (Nat. Arb. Forum Jan. 14, 2003) (“Complainant may not like Respondent's business of domain name speculation, but that does not mean that it is an improper activity under the UDRP. Respondent is an entrepreneur, not a squatter.”).

Second, the Panel declines to address backordering in the context of bad faith registration.  Complainant implies that it is entitled to this domain name because it “backordered” with two Registrars.  Clearly, the Policy does not address pre-registration activities, and the Panel will not construe it to state that a party can act in bad faith before acting.  The Panel finds that Complainant’s “backordering” does not create bad faith in Respondent’s subsequent registration and use.  Any subsequent issues that arise out of the backordering are between Complainant and the Registrars, and are outside of the scope of the UDRP.  See, supra, Registration and Use in Bad Faith, ¶ 1.

Third, Complainant asserts that because Respondent “detected Complainant’s interest and activity in the Domain Name,” Respondent’s subsequent registration demonstrates that it acquired the domain name primarily for the purpose of selling it to Complainant, pursuant to Policy ¶ 4(a)(i).  Complainant has not provided evidence demonstrating that Respondent “detected” Complainant’s interest and sought to prey upon it.  Absent other evidence of bad faith, the Panel will not regard Respondent’s first-in-time status to infer that Respondent intended to sell the disputed domain name to Complainant.  See Goldmasters Precious Metals v. Gold Masters srl, FA 95246 (Nat. Arb. Forum Aug. 21, 2000) (finding no bad faith even though Respondent’s ownership and purported use of the domain name frustrates Complainant’s efforts where the record does not indicate any purpose or intent on the part of Respondent to prevent Complainant from reflecting its mark in a corresponding domain name, to disrupt the business of a competitor, or to intentionally attract the customers of Complainant to Respondent’s site by creating a likelihood of confusion); see also Loris Azzaro BV, SARL v. Asterix & De Vasconcellos, D2000-0608 (WIPO Sept. 4, 2000) (“Mere belief and indignation by Complainant that Respondents have registered and are using the Domain Name in bad faith are insufficient to warrant the making of such a finding in the absence of conclusive evidence.”).

Fourth, Complainant implies that Respondent’s listing of <onair.com> as a domain name for sale on <buydomains.com> is evidence that Respondent acquired the domain name primarily for the purpose of selling it to Complainant for consideration in excess of its out of pocket costs, pursuant to Policy ¶ 4(a)(i).  Complainant provides no evidence that Respondent has attempted to sell the domain name to Complainant, nor has it alleged or provided evidence that Respondent has invited an offer for consideration in excess of its out-of-pocket costs.  While Panels have held that general offers for sale can be evidence of bad faith registration and use, this is generally in the context of either (1) famous marks or (2) contexts in which there are other instances of bad faith.  In this instance, Complainant is very close to asking the Panel to find that the act of selling a domain name registration is bad faith: the Panel will not do this.  The Panel finds that Respondent’s mere listing of the <onair.com> domain name on <buydomains.com> is not evidence of bad faith registration and use, pursuant to Policy ¶ 4(a)(iii).  See John Fairfax Publ’n Pty Ltd v. Domain Names 4U & Gray, D2000-1403 (WIPO Dec. 13, 2000) (finding legitimate interests and no bad faith registration where Respondent is a seller of generic domain names); see also Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000) (finding no bad faith where the domain name involves a generic term, and there is no direct evidence that Respondent registered the domain name with the intent of capitalizing on Complainant’s trademark interest).

Complainant has not alleged or provided any evidence to support any claims of bad faith specifically under Policy ¶ 4(b) or generally under Policy ¶ 4(a).  Lacking factual basis, the Panel will not inquire into other types of bad faith registration and use.  See PRL USA Holdings, Inc. v. Polo, D2002-0148 (WIPO Apr. 29, 2002) (finding that because Complainant failed to provide any factual allegations as to the nature of use of the disputed domain name, Complainant failed to prove that Respondent’s domain names were being used in bad faith); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the Panel may conclude that Respondent acted in bad faith).

The Panel finds that Complainant has not established Policy ¶ 4(a)(iii).

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

John J. Upchurch, Panelist

Dated:  June 7, 2004

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