Dallas/Fort Worth International Airport Board v. Zurab Tsertsvadze / Unlimitedweorg
Claim Number: FA1909001861554
Complainant is Dallas/Fort Worth International Airport Board (“Complainant”), represented by Michael J. Phipps of Munck Wilson Mandala, LLP, Texas, USA. Respondent is Zurab Tsertsvadze / Unlimitedweorg (“Respondent”), Georgia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dfw-international-airport.com>, registered with NameCheap, Inc..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 10, 2019; the Forum received payment on September 10, 2019.
On September 10, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <dfw-international-airport.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 16, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@dfw-international-airport.com. Also on September 16, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 8, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant operates the Dallas/Fort Worth International Airport in Texas, USA.
Complainant has rights in the DFW AIRPORT mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <dfw-international-airport.com> domain name is identical or confusingly similar to Complainant’s DFW AIRPORT mark because it wholly incorporates Complainant’s DFW AIRPORT mark, and merely adds hyphens, the descriptive term “international” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <dfw-international-airport.com> domain name. Respondent is not authorized or licensed to use Complainant’s DFW AIRPORT mark and there is no evidence to suggest that the Respondent listed in the WHOIS record is commonly known by the disputed domain name. Respondent fails to use the at-issue domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because Respondent uses the disputed domain name’s resolving webpage to pass off as Complainant and promote third party businesses.
Respondent registered and uses the <dfw-international-airport.com> domain name in bad faith because Respondent attempts to attract, for commercial gain, users to the disputed domain name where creates a likelihood of confusion with Complainant to promote unrelated business. Furthermore, Respondent had actual knowledge of Complainant’s DFW AIRPORT mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the DFW AIRPORT mark as demonstrated by its registration of such mark with the USPTO.
Complainant’s rights in the DFW AIRPORT mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademark.
Respondent uses the <dfw-international-airport.com>domain name to address a website that displays Complainant’s trademark and logo and trades on Complainant’s DFW AIRPORT trademark to promote unrelated business.
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."
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.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the DFW AIRPORT mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(I). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Additionally, the at-issue domain name consists of Complainant’s DFW AIRPORT trademark with the descriptive term “international,” bracketed by hyphens, inserted between the trademark’s two terms all followed by the top level domain name “.com.” The differences between the at-issue <dfw-international-airport.com> domain name and Complainant’s DFW AIRPORT trademark are insufficient to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. In fact the inclusion of the term “international” in the domain name only adds to any confusion between Complainant’s trademark and Respondent’s domain name as it suggests the trademark’s relation to the Dallas-Fort Worth International Airport. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <dfw-international-airport.com> domain name is confusingly similar to Complainant’s DFW AIRPORT trademark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the <dfw-international-airport.com> domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name ultimately identifies the domain name’s registrant as “Zurab Tsertsvadze.” The record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <dfw-international-airport.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore and as elaborated below regarding bad faith, Respondent is attempting to trade on Complainant’s trademark to divert internet users looking for Complainant to a website controlled by Respondent. Respondent’s use of the domain name in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <dfw-international-airport.com> domain name was registered and used in bad faith. As discussed below without limitation, Policy ¶ 4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith regarding the at-issue domain name pursuant to paragraph 4(a)(iii) of the Policy.
First and as touched on above regarding rights and legitimate interests, Respondent attempts to pass itself off as Complainant and trade off the goodwill in Complainant’s DFW AIRPORT trademark. Respondent’s at-issue domain name addresses a website displaying Complainant’s trademark and corresponding logo, along with links to information about third-party businesses at or near the Dallas-Fort Worth International Airport. Notably, Respondent and/or the businesses referenced by Respondent’s <dfw-international-airport.com> website are likely to commercially benefit from domain name and it related website. Significantly, the aforementioned circumstances indicate Respondent’s bad faith registration and use of the <dfw-international-airport.com> domain name pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Additionally, Respondent registered <dfw-international-airport.com> knowing that Complainant had trademark rights in the DFW AIRPORT trademark. Respondent’s prior knowledge is evident given the mark’s notoriety and extensive use. See Finex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). It follows that Respondent intentionally registered the at-issue domain name so that it might improperly exploit the domain name’s trademark value rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <dfw-international-airport.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dfw-international-airport.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 8, 2019
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