American
Airlines Inc. v. Webtoast Internet Services Inc.
Claim Number: FA0112000102954
PARTIES
The Complainant is American Airlines Inc., DFW Airport, TX (“Complainant”) represented by Kay Lyn Schwartz, of Gardere Wynne Sewell LLP. The Respondent is Jim Manley of Webtoast Internet Services Inc., TX (“Respondent”).
The domain name at issue is <americanway.biz>, registered with Registrars.com.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on December 14, 2001; the Forum received a hard copy of the Complaint on .
On December 21, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 10, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A late Response was received.
Complainant’s Additional Submission was also received after the deadline.
On February 11, 2002, pursuant to STOP Rule 6(b), the Forum appointed Tyrus R. Atkinson, Jr., as the single Panelist.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
A. Complainant
Complainant is American Airlines, Inc. located at DFW Airport, Texas.
Complainant is one of the nation’s largest airlines, and has acquired a nationwide reputation for quality goods and services and has accumulated substantial public goodwill.
In the course of its business, Complainant has acquired extensive rights in numerous trade names, trademarks, and service marks, including the mark “American Way.” Complainant has continuously used the mark since at least as early as 1966 in connection with its in-flight monthly magazine.
Complainant holds a Registered mark as Serial Number 1004523 for the mark “American Way” in addition to numerous Registered marks that encompass the term “American”.
Respondent registered the domain name <americanway.biz> on November 19, 2001.
Respondent was not authorized to use Complainant’s marks for any of the period during which he has registered the domain name at issue.
Respondent (as an individual, business, or other organization) has never been commonly known by the domain name at issue and has no legitimate non-commercial or fair use of the domain name. The domain name at issue is not, nor could it be contended to be, the nickname of Respondent or other members of his family, or in any other way identified with or related to a legitimate interest of Respondent.
The domain name that is subject of this arbitration was registered or acquired for a primary purpose of intentionally attempting to attract, for commercial gain, Internet users to Registrant’s web site or other on line locations, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.
The registration by Respondent of the domain name at issue prevents Complainant, as owner of the trademark “AMERICAN WAY,” from reflecting the mark in the domain name at issue.
Respondent’s conduct, knowing full well that he has no right to use of Complainant’s marks, demonstrates that he is knowingly, willfully and with a particularly bad faith intent, trading on the value of, and interfering with, Complainant’s rights to use its marks in commerce.
B. Respondent
Respondent’s Response To Domain Complaint was not filed within twenty calendar days of the commencement of the administrative proceeding. No Request was made by Respondent to extend the period of time for the filing of the response nor is any reason found to suggest that exceptional circumstances are present to warrant consideration of the late Response. The Response did not contain the required content and certificate as required by the Rules. The Response is not timely filed nor is in conformance with the Rules. See Rules For Start-up Trademark Opposition Policy, Rule 5.
Complainant in its Additional Response contends that the Response to Domain Complaint should be rejected entirely and that the proceeding be conducted as a case in default. The case should be decided on the Complaint alone, Complainant argues.
Rule 5 states that if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint. Respondent did file a Response, even if untimely and flawed.
As to how a late response should be treated, the Panel notes that Rules 5, 14 and 15 of the Start-up Trademark Opposition Policy and Rules for .BIZ are identical to Rules 5, 14 and 15 of Rules for Uniform Domain Name Dispute Resolution Policy. Panel decisions interpreting the URDP Rules are instructive. The Panels are not consistent. Panels have considered late responses without comment or explanation. see BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000). Panels have found that the Panel cannot consider late responses unless there are exceptional circumstances. see Fortis N.V.-Fortis B.S.A.-Fortis A.G. NL S.A. v. Yannick Godu, D2000-1453 (WIPO Jan. 19, 2001); Edgar Rice Burroughs, Inc. v. Adtel Communications, D2000-0115 (WIPO April 21, 2000). It is noted that there are no exceptional circumstances either proposed by Respondent or found in the record of this case. If exceptional circumstances are alleged and proved, a response should be considered. see Red Bull GmbH v. Markus Bernhardt, D2001-0019 (WIPO Oct. 22, 2001). It has been held that due process requires consideration of a late response. see The New York Times Company v. New York Internet Services, D2000-1072 (WIPO Dec. 5, 2000). The approach this Panel will employ is that set out in AT& T Corp. v. Randy Thompson, D2001-0830 (WIPO Aug. 15, 2001). In that case it was stated as follows: “In the event of a belated Response, the Panel’s default cause of action, pursuant to Rule 14(a) is to proceed to decision based only on the Complaint. The Panel may, in its discretion, consider the Response if ‘exceptional circumstances’ exist. In addition, the Panel has broad general powers under Rule 10(a) to ‘conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and the Rules. Specifically, the Panel is required under Rule 10(b) to ensure that ‘each Party is given a fair opportunity to present its case.’ Under Rules 10(d) the Panel is empowered to ‘determine the admissibility, relevance, materiality and weight of the evidence.’…Although the Panel declines to find exceptional circumstances in this case, however, it will nevertheless consider Respondent’s Response brief pursuant to the general powers and responsibilities set out in Rule 10. Denial of an opportunity for response would be a rather drastic step which, in the Panel’s opinion, should be undertaken with great care in view of the exhortation of Rule 10(b) that each party be ‘given a fair opportunity to present its case’.”
Under the reasoning employed in the AT& T case, Respondent’s untimely Response will be considered since this Panel finds that the leading intent of the Policy and Rules is that a domain dispute proceeding be decided on the basis of the statements and documents submitted to the Panel as required under Rule 15 and that each Party have a fair opportunity to present its case as required by Rule 10.
Respondent’s e-mail letter with exhibits, sent under the name Jim Manley, will be considered as the Response.
Respondent alleges that he successfully applied for the trademark, “The American Way” to be used in “electronic medium” in 1992. At the time he produced a video series entitled “The American Way™ of Training Hunters & Jumpers.”
Respondent applied for the domain name <americanway.com> in 1996 and has continuously used and maintained that domain name since that time.
Respondent has used the domain name as an e-commerce gateway for sales of videotapes, books and CDs and as a website for access to the works of the American author, Ralph Waldo Emerson.
Respondent applied for <americanway.biz> as a natural extension of the present business that will offer quality Internet services to the small business market and individual entrepreneurs in New York City.
Complainant never objected to Respondent’s 1996 registration of the mark, “The American Way”, or the URL, <americanway.com>.
C. Additional Submissions
The Start-up Trademark Opposition Policy for .BIZ “Stop” Supplemental Rules permits, in Rule 7, submission of other written statements and documents within the time specified. Complainant’s Additional Response was filed late. However, Complainant could not comply with Rule 7 because of Respondent’s late Response. That constitutes, in this case, the exceptional circumstance necessary to consider the pleading. see Red Bull GmbH v. Marcus Barnhardt, supra.
Complainant argues that the Response should not be considered since it is untimely and not in conformity with the Policy and Rules. Complainant contends that Respondent’s trademark registration for “The American Way” does not support an interest in the domain name, <americanway.biz>. Americanway and The American Way are not identical, it is contended. Complainant attaches printouts of Respondent website which, it is alleged, proves that the web site has little to do with Respondent’s mark used in connection with instructional videos.
1. Complainant is a major airline company with a national reputation and has accumulated substantial public goodwill.
2. Complainant has numerous trademarks and service marks in which the word “American” is used. It holds a trademark registration for “American Way” which is used in connection with its in-flight monthly magazine. Complainant does not say when the trademark “American Way” was registered but does state that the term has been in use since 1966.
3. Respondent’s operations are unclear. Respondent appears to be a corporation, which is controlled by Jim Manley who operates various enterprises. For the purpose of this proceeding, the Respondent corporation and Jim Manley will be treated as one entity.
4. Respondent offers no proof, other than Jim Manley’s statement that he holds a registered trademark in the mark “The American Way”. Complainant does not dispute this allegation, so it is taken as true.
5. Respondent registered the domain name <americanway.com> in 1996 and has operated a web site at <americanway.com> continuously since 1996.
6. Respondent registered the domain name, <americanway.biz>, on November 19, 2001.
7. The domain name <americanway.biz> is identical to Complainant’s trademark, AMERICAN WAY.
8. Complainant has rights and interests in the mark AMERICAN WAY.
9. Respondent has rights and interests in the name, AMERICANWAY.
10. Respondent did not register the domain name <americanway.biz> in bad faith.
Paragraph
15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
Complainant has rights in the mark, AMERICAN WAY, due to its registration of the mark and continuous use of the mark since 1966. AMERICAN WAY and AMERICANWAY are identical for the purposes of this proceeding. see Sydney Opera House Trust v. Trilynx Pty. Ltd, D2000-1224 (WIPO Oct 31, 2000); Winchester Properties, LLC v. DefaultData.com, FA 97114 (Nat. Arb. Forum June 22, 2001).
Complainant contends that Respondent was not authorized to use
Complainant’s mark, that Respondent has never been commonly known by the domain
name in issue and has no legitimate non-commercial or fair use of the domain
name, nor is there any evidence of Respondent’s use of, or demonstrable
preparation to use, the domain name in connection with a bona fide offering of
goods or services.
Respondent can demonstrate its rights and legitimate interests in the domain name by any of the methods set out in Paragraph 4(c) of the Policy.
Respondent must prevail under Paragraph 4(c)(ii). It is clear from the pleadings and exhibits that before any notice to Respondent of the dispute, that Respondent used a name corresponding to the domain name in connection with a bona fide offering of goods or services. Respondent registered the domain name <americanway.com> on July 3, 1996. Respondent has continuously used the domain name <americanway.com> since that time as a web site offering goods and services on the Internet. <americanway.com> is certainly a name corresponding to <americanway.biz>. The names are identical. see The Toronto-Dominion Bank v. Boris Karpachev, D2000-1571 (WIPO Jan. 15, 2001) and cases cited therein.
These facts satisfy the requirements of Paragraph 4(c)(ii). It is unnecessary to decide if Respondent has proved rights or legitimates interests under Paragraph 4(c)(i) or (iii), though it is noted that a good case is made under each of these Paragraphs. see National Collegiate Athletic Association and March Madness Athletic Association LLC v. Mark Halpern and Front Center Entertainment, D2000-0700 (WIPO Dec. 10, 2000).
Complainant, having failed to prove no rights or legitimate interests in Respondent as required by Paragraph 4(a)(ii), must be found to have failed to prove its case.
No facts or circumstances appear to indicate that Respondent registered
or used the domain name in bad faith.
It is the Judgment
of this Panel that the Complaint be Dismissed. Subsequent challenges under the Policy shall be permitted.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 24, 2002
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