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Southwest Airlines Co. v. Cattitude a/k/a LJ Gehman [2005] GENDND 1083 (13 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Southwest Airlines Co. v. Cattitude a/k/a LJ Gehman

Case No. D2005-0410

1. The Parties

The Complainant is Southwest Airlines Co., Dallas, Texas, United States of America, represented by DLA Piper Rudnick Gray Cary US, LLP, United States of America.

The Respondent is Cattitude a/k/a LJ Gehman, Camas, Washington, United States of America.

2. The Domain Name and Registrar

The disputed domain name <mysouthwest.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2005. On April 19, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On April 19, 2005, eNom 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. The Center verified that 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 April 28, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2005. The Respondent filed a Response with the Center on May 18, 2005.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on May 24, 2005. 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.

Complainant submitted an Additional Statement of Complainant in Reply to Response dated May 25, 2005. By Administrative Order No. 1 the Panel accepted the supplemental submission, and authorized Respondent to file its own Additional Statement. Respondent filed its Additional Statement of Response in reply to the Additional Statement of Complaint on June 4, 2005. The Panel has accepted that additional submission by Respondent.

4. Factual Background

Complainant has registered the word and design service mark “SOUTHWEST” on the Principal Register of the United States Patent and Trademark Office (USPTO), Reg. No. 1230381, dated March 8, 1983, in International Class (IC) 39, covering “transportation services - namely, transporting passengers by air”, claiming date of first use of June 8, 1971, and date of first use in commerce of February 7, 1980. Complainant has also registered several SOUTHWEST-formative service marks on the Principal Register, including “SOUTHWEST AIRLINES”, “SOUTHWEST.COM”, “SOUTHWEST.COM A SYMBOL OF E- FREEDOM”. Complaint, para. 13 & Annex C.

Complainant is a major U.S. domestic air carrier which, according to the Complaint, “provides approximately 90% of all discount air travel in the U.S.”. Complainant invests substantial sums of money in advertising in the United States. Id., paras. 14-15.

Complainant operates commercial Internet web sites at “www.southwest.com”, “www.southwestairlines.com” and “www.southwestvacations.com”. A substantial portion of Complainant’s air travel bookings are made via the Internet. Complainant has been recognized by a number of publications as a leader in the effective use of electronic commerce. Id., paras. 16-22.

According to the Registrar’s Verification, Respondent is the registrant of the disputed domain name <mysouthwest.com>. According to an eNom WHOIS database printout submitted by Complainant, the record of registration was created on April 22, 2002.

Respondent since on or about September 30, 2004, has used the disputed domain name to direct Internet users to a web page which is linked to its commercial web site “Just Ducky Creations” at Internet address (URL) “www.just-ducky.com”. Response, para. III.B. The web page identified by the disputed domain name refers, inter alia, to “great designer t-shirts and sweatshirts with southwest themes ...”. Complaint, Annex I. The main home page of Just Ducky Creations refers to original designs that “include themes of cats, dogs, animals, florals, seasonal, nautical, sports and contemporary.” Complaint, Annex J. At least as of the filing date of the Response, Respondent’s main web site includes some “southwest”-style clothing for sale. Response, Annex D.

From the date of registration (April 22, 2002) to May 2003, the disputed domain name was “parked” with eNom and the registrar cover page used by that registrar included links to sponsored advertising. In April 2004, the disputed domain name was registered in a “pay per click” (PPC) program with Fabulous.com. Fabulous.com included a default “domain for sale” notice on its PPC pages, including that identified by the disputed domain name. Response, para. III.B.

By letter of September 16, 2004, Complainant sent a cease and desist demand to Respondent with respect to the fact that the PPC page identified by the disputed domain name was linked to web sites offering travel services in alleged infringement of Complainant’s “family” of SOUTHWEST marks. Complaint, Annex H. By e-mail of September 20, 2004, Respondent requested Fabulous.com to remove any airline, travel or tourism links to the web page identified by the disputed domain name, and on September 21, 2004, Fabulous.com indicated that such links had been removed. Additional Response, Annex A.

Complainant employed a third party intellectual property investigator (Marksmen Inc.) to seek to obtain the disputed domain name from Respondent. Complaint, e.g., Annex M. That investigator contacted Respondent on several (at least four) occasions by telephone and e-mail without disclosing the identity of its principal to inquire whether the disputed domain name was for sale. Response, para. B & Annex G. On its initial contact, Respondent categorically advised Complainant’s third party representative that the disputed domain name was not for sale, and that Respondent was using the name to attract Internet customers to its family-run apparel business. By e-mail of December 21, 2004, Respondent stated to Complainant’s representative:

“No, I’m sorry, but mysouthwest.com is not for sale. We have numerous southwestern themed shirts in our product line and use the domain to point to our retail apparel business, Just Ducky Creations.

There are undoubtedly many domains that incorporate the word southwest - perhaps you should try some of the domain brokerage firms. Good luck.”

In response to another inquiry from Complainant’s representative, Respondent stated by e-mail of January 11, 2005:

“I’m not sure why there is so much interest in this domain name but we’ve had several offers to buy and have told everyone the same thing - that it’s not for sale. It brings a lot of traffic into our main website and increased traffic corresponds to increased orders. Our designer is going to add even more southwestern designs to our contemporary and country collections.

My new policy regarding this domain name, which should be highly successful in preventing return inquiries, is to state mysouthwest.com is not for sale unless a purchase offer of over $25,000 is made. :-)

Good luck with your domain hunt - I’m sure there must be other southwest domains out there that are actually for sale that would meet your purposes.”

In its Complaint, Complainant characterized Respondent’s conduct with respect to the issue of bad faith as follows:

“Southwest also engaged a private investigator to determine whether the domain name was actually being offered for sale. On July 11, 2005, Respondent replied to the investigator’s inquiry by offering to sell the Domain Name if an offer ‘over $25,000’ was made.” Complaint, para. 34.

“Respondent has not used the Domain Name for legitimate personal or business purposes. Instead, Respondent initially linked the Domain Name to a web site offering travel-related services and then offered to sell the Domain Name at a price of over $25,000.” Id., para. 44.

Complainant did not furnish to the Panel any other portion of the correspondence between its third-party investigator and Respondent.

The Registration Agreement in effect between Respondent and eNom subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant alleges that it has rights in the service mark “SOUTHWEST” based on long use in commerce and as evidenced by registration at the USPTO.

Complainant states that its service mark is well-known in the United States.

Complainant argues that the disputed domain name is confusingly similar to its mark.

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant argues that Respondent did not make a bona fide offering of goods or services prior to notice of a dispute because it did not use the disputed domain name to direct Internet users to its business until after receipt of Complainant’s cease and desist letter. It also argues that Respondent’s business does not in fact offer for sale southwest-style apparel. Complainant further contends that Respondent is in fact in the business of selling domain names, as evidenced by Respondent’s ownership of 251 “.us” domain names.

Complainant argues that Respondent registered and used the disputed domain name in bad faith because it registered the name with the intention of selling it for a profit.

Complainant requests the Panel to direct the registrar to transfer the disputed domain name to it.

B. Respondent

Respondent argues that the term “southwest” is being used by it in the generic sense of a geographic territory. It argues that use of the term “southwest” to describe apparel and other merchandise is long-established. Respondent argues that the disputed domain name is not confusingly similar to Complainant’s mark because Internet users viewing the name will not predominantly associate <mysouthwest.com> with Complainant.

Respondent contends that it has rights or legitimate interests in the disputed domain name. It states that from the time of registering the disputed domain name it intended to use that name in connection with its apparel business and that “parking” of the name and association with the PPC service were interim measures pending association of the name with an active web page linked with its business. To the extent that it only established the linkage with its business following a cease and desist letter from Complainant, Respondent alleges that this provided impetus to complete its own long contemplated plan. Respondent notes that its business has been in operation since 1996, and that the Just Ducky Creations web site was first created in December 1996.

Respondent alleges that Complainant has deliberately attempted to mislead the Panel by providing a very selective reference to correspondence to suggest that Respondent intended to sell the disputed domain name to Complainant. Respondent states that a complete set of the correspondence which it has provided makes clear that it had no intention of selling the disputed domain name. Therefore, it has not acted in bad faith.

Respondent argues that its registration of a substantial number of “.us” domain names is perfectly legitimate and has no bearing on this proceeding.

Respondent requests the Panel to reject Complainant’s request.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

Complainant and Respondent have each filed initial and supplemental submissions. The Panel is satisfied that Respondent had adequate notice of the proceedings and that the parties have been given adequate opportunity to participate.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain name; and

(iii) respondent’s domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has established rights in the word and design service mark “SOUTHWEST” by use in commerce in the United States and as evidenced by registration at the USPTO (see Factual Background, supra). Complainant has also established rights in certain “SOUTHWEST”-formative service marks, such as “SOUTHWEST AIRLINES”. Complainant has not presented evidence of registration of the term “SOUTHWEST” as a word mark standing alone. There is no evidence on the record of this proceeding as to whether Complainant has attempted to register the word mark “SOUTHWEST” standing alone (i.e., without design). An attempt at such registration might well encounter difficulty because the term “Southwest” is a common geographically descriptive term.

The combination term “SOUTHWEST AIRLINES” is registered. Southwest Airlines is one of the United States’ major air transport carriers, advertises heavily, and the combination term SOUTHWEST AIRLINES is well known in the United States. While the term “Southwest” may be well known in connection with a particular airline, the term is widely used by third party businesses and is widely used by the public as a geographically descriptive term (see Response, Annex B). In this respect, to the extent that “Southwest” is used in reference to air travel, Complainant may be able to enforce service mark rights against a third party infringer. However, Complainant’s right to enforce the SOUTHWEST mark is closely circumscribed. Complainant has not demonstrated rights to oppose third party use of the geographically descriptive term “Southwest” in other contexts. The limitations on Complainant’s mark are the result of its own election to use a common geographically descriptive term to identify its business.

The Panel determines that Complainant has rights in the service mark “SOUTHWEST”, based on registration of the word and design mark and use in commerce, but rights with respect to the mark outside the field of air travel and related services are not established.

Respondent has registered the disputed domain name <mysouthwest.com>. On one hand, that term is similar to SOUTHWEST in that it is distinguished only by addition of the common possessive term “my”. There are a significant number of panel decisions under the Policy (including by this sole panelist) holding that the mere addition of a common term to a mark is not sufficient to avoid a finding of confusing similarity.¹ However, these cases must be considered in their context. For example, Complainant has referred to a proceeding in which <mysony.com> was determined to be confusingly similar to the well known mark “Sony” (Sony Kabushiki Kaishi v. Sin, Eonmok, WIPO Case No. D2000-1007, decided November 16, 2000). “Sony”, however, is a distinctive coined term and not a common geographically descriptive term. The combination of “my” with “Sony” does not create a new distinctive term. When a party, as Complainant here, has adopted a common geographically descriptive term for its service mark, it faces a greater risk that the combination of that term with another common term will in fact distinguish the new combination.² It is easy to posit myriad uses of the term “my Southwest” in contexts other than the air travel industry in which no connection to Complainant would arise in the mind of the Internet user. So, for example, a pictorial exhibit of desert and cactus landscapes might well be referred to by a photographer as “my Southwest” without any evocation of Complainant’s business.

Respondent in this proceeding asserts that its intended and primary use of the disputed domain name was to attract Internet users to its apparel business which includes “Southwest-themed” apparel. This would be consistent with a use of the combination term “my Southwest” which is not confusingly similar to Complainant’s mark. However, Respondent has also used the disputed domain name in connection with providing links to air travel services through a pay per click enterprise. Such use of “my Southwest” might create confusion with Complainant’s business.

However, because the Panel rejects Complainant’s claim on other grounds, it need not decide whether the disputed domain name <mysouthwest.com> is confusingly similar to Complainant’s “SOUTHWEST” service mark.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).

Respondent has asserted rights or legitimate interests in the disputed name domain name based on its alleged fair use of the common geographically descriptive aspect of the term “SOUTHWEST”, and on the basis that it has made preparations for a bona fide offering of goods under the disputed domain name prior to notice of the dispute.

With respect to the claim of fair use of a common descriptive term, the analysis involves a similar problem set to that discussed with respect to confusing similarity between the disputed domain name and Complainant’s mark. If Respondent has merely used the disputed domain name in connection with its apparel business (i.e., to identify Southwest-themed apparel), then its use may well be fair (and non-infringing). Since the date it was first contacted by Complainant, this appears to be the use made by Respondent. However, prior to that date, the disputed domain name was used, inter alia, to refer Internet users to travel related web sites. This prior usage might preclude a finding that Respondent has used the disputed domain name for fair use purposes. On balance, the Panel is disinclined to accept that Respondent’s actions constitute fair use because of its previous use in connection with travel-related services.

The question whether Respondent demonstrably made preparations for use in a bona fide offering of goods prior to notice of dispute involves a difficult weighing of facts. Respondent claims that it registered the disputed domain name in 2002, in contemplation of use in connection with its existing business “Just Ducky Creations”. Respondent has submitted ample evidence that Just Ducky Creation was and is a going concern at “www.just-ducky.com”. Respondent justifies its delay in making use of the disputed domain name in connection with its business until September 2004, by reference to ordinary difficulties in running a small business; that is, finding the time to create a new web page and link. Complainant, it says, may have accelerated Respondent’s timetable for producing the new web page and link, but it was long planned.

Complainant argues that Respondent’s belated creation of a link between the disputed domain name and its Just Ducky Creations business was done only to mask its real intention for registering the disputed domain name, which was to sell it to Complainant (or a third party). Complainant argues that Respondent’s business has no meaningful link with the “Southwest” and that Respondent has added a few Southwest-oriented words to its web site to convey the impression of a genuine link.

Paragraph 4(c)(i) of the Policy recognizes that a domain name registrant need not make immediate use of the name in connection with a business.³ Respondent has presented “hard evidence” of the existence of its business as early as 1996. And, Respondent has presented evidence that it uses various domain names and key terms in metatags to direct Internet users to its business. Giving Respondent benefit of the doubt, the Panel might conclude that it did, in fact, intend to use the disputed domain name in connection with Just Ducky Creations when it registered that name in 2002. Moreover, its decision to use the name for alternative purposes pending creation of a link to its business is not necessarily inconsistent with this version of events. Finally, since Respondent advised Complainant that the disputed domain name was not for sale, but rather was intended for use in its business, Respondent by its conduct supported this version of events. The main fact arguing against Respondent’s claim is that it did not create any link to its business prior to notification of a dispute by Complainant. It is plausible that Complainant’s notification provided the impetus for Respondent to carry out its long intended plan, but the facts could be interpreted in more than one way.

Administrative proceedings under the Policy involve a limited evidentiary review. In light of the Panel’s decision with respect to the third element (i.e., bad faith), the Panel will refrain from making a determination as to whether Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name. The Panel notes, however, that the burden of proof is on Complainant and that, in a situation such as that presented here, the benefit of the doubt might well go to Respondent.

C. Registered and Used in Bad Faith

The third element that Complainant must prove to establish that Respondent has engaged in abusive domain name registration and use is that Respondent has acted in bad faith.

The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are that the domain name has been registered or acquired by a respondent “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondent’s] documented out-of-pocket costs directly related to the domain name” (Id., paragraph 4(b)(i)). Complainant has relied on Respondent’s alleged purpose of registering the disputed domain name to sell it to Complainant (or a third party) to demonstrate bad faith.

Complainant expressly refers to an offer by Respondent to sell the disputed domain name to Complainant as evidence of Respondent’s bad faith. In support, Complainant attached an affidavit from a third party investigator stating that Complainant “responded to my inquiry by indicating that the Domain Name was ‘not for sale unless a purchase offer of over $25,000 is made’.” This statement and Complainant’s characterization of it is incomplete at best. It might more appropriately be characterized as misleading. The written evidence of exchanges of e-mails indicates that Complainant initiated contact with Respondent through a third party agent which did not disclose its principal. The agent’s initial offer to purchase the domain name was clearly rejected by Respondent, with an indication that it had no intention to sell the name and that it was using it in connection with its business. The agent telephoned Respondent’s business. It followed with another e-mail request. On this occasion, Respondent reiterated that it had no intention of selling the disputed domain name. It added that it hoped to keep further inquiries away by stating that it would not accept an offer less than $25,000. It then wished Complainant’s agent luck in finding an alternative “Southwest” domain name.

With perhaps rare exception, every business asset is for sale at some price. Southwest Airlines is for sale at some price. The fact that Respondent on repeated inquiry could be induced to say, “There is some price at which I would sell this domain name” shows nothing more than that Respondent is an ordinary businessperson. Taken in the context of the correspondence between Complainant’s agent and Respondent, the evidence shows that Respondent registered the disputed domain name to use in connection with its apparel business, and not for the purpose of selling it to Complainant (or a third party).⁴ Complainant’s characterization of Respondent’s conduct omitted information highly material to this proceeding.

The Panel rejects Complainant’s request for a finding of bad faith.

Complainant has failed to establish that Respondent registered and used the disputed domain name in bad faith. The Panel will not direct the registrar to transfer the disputed domain name.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Frederick M. Abbott
Sole Panelist

Date: June 12, 2005

1 See, e.g., General Electric Company v. Forddirect.com, Inc., WIPO Case No. D2000-0394, decided June 22, 2000.

2 See, e.g., Advanced Comfort Inc. v. Abedstore.com, WIPO Case No. D2003-0017, decided March 24, 2003.

3 Compare Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000, (September 25, 2000), and Bergen’s Greenhouse, Inc. v. Jennifer Barnes, WIPO Case No. D2000-1503, (February 18, 2001).

4 The disputed domain name was used by Respondent in connection with a pay-per-click service that included an offer for sale as part of its default web page. The correspondence between Complainant’s agent and Respondent is sufficient to demonstrate that Respondent did probably not intend by engaging the pay-per-click service to sell the disputed domain name.