Delta Corporate Identity, Inc. v. Dotsan
Claim Number: FA0203000105750
Complainant is Delta Corporate Identity, Inc., Atlanta, GA (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry. Respondent is Dotsan, Mumbai, INDIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <deltaairline.com>, registered with Bulkregister.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 1, 2002; the Forum received a hard copy of the Complaint on March 5, 2002.
On March 5, 2002, Bulkregister confirmed by e-mail to the Forum that the domain name <deltaairline.com> is registered with Bulkregister and that Respondent is the current registrant of the name. Bulkregister has verified that Respondent is bound by the Bulkregister 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 March 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 1, 2002 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 firstname.lastname@example.org 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 April 4, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following allegations:
The <deltaairline.com> domain name is confusingly similar to Complainant's DELTA AIR LINES mark. Respondent has no rights or legitimate interests in the disputed domain name. Respondent registered and used the disputed domain name in bad faith.
B. Respondent did not file a Response in this proceeding.
Complainant has used the DELTA AIR LINES mark as well as its family of DELTA marks throughout the world in relation to its air transportation services. Complainant is the leading United States airline in the transatlantic, offering the most daily flight departures, serving the largest number of nonstop markets and carrying more passengers than any other United States airline. Complainant’s annual revenues are nearly $15 billion dollars and it spends millions every year on advertising. Complainant has developed a large amount of goodwill in its DELTA family of marks and serves customers on the Internet at <delta.com>.
Respondent registered the disputed domain name on September 24, 2001. Respondent is using the disputed domain name in order to redirect Internet traffic to GITO Travel at <gotoo.com>, which offers competing air transportation services and vacation packages.
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 the 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.
Complainant established in this proceeding that it has rights to the DELTA AIR LINES mark through registration and continuous use. The domain name registered by Respondent, <deltaairline.com>, is confusingly similar to Complainant’s mark because it incorporates the entirety of Complainant’s mark and merely deletes the “s” at the end of airlines. It is well established that deletion of one letter such as an “s” at the end of a famous mark does not create a distinct mark capable of overcoming a claim of confusing similarity. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from Complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name that differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).
Furthermore, the addition of a generic top-level domain name such as “.com” is
v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant established its rights to or legitimate interests in the DELTA AIR LINES mark in this proceeding. Respondent did not come forward with a Response in this proceeding and the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).
Respondent is using the disputed domain name in order to divert Complainant’s customers to a competing website. Using Complainant’s trademark without Complainant’s authority in order to attract Internet users to a website that competes with Complainant’s business is not considered to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also 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).
Furthermore, based on the fame of Complainant’s family of DELTA marks it can be inferred that Respondent is not commonly known by <deltaairline.com>, pursuant to Policy ¶ 4(c)(ii). See 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); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).
Respondent is intentionally diverting Internet users to its website for its own commercial gain and is therefore not making a legitimate, noncommercial or fair use of the disputed domain pursuant to Policy ¶ 4(c)(iii). See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant urges that Respondent acted in bad faith in registering a domain name containing Complainant’s famous mark. Because of the well-known nature of Complainant’s DELTA family of marks, the Panel may assume that Respondent was on notice of the existence of Complainant’s DELTA AIR LINES mark when Respondent registered <deltaairline.com>. Therefore, Respondent’s registration of an infringing domain name, despite notice, is evidence of bad faith. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith).
Respondent’s use of a confusingly similar domain name to redirect Internet users to a competing website also is evidence of bad faith, pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where Respondent’s sites pass users through to Respondent’s competing business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from Complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Furthermore, the facts in this case permit the inference that Respondent’s use of the disputed domain name in order to divert Complainant’s customer to a competing website was for Respondent’s commercial gain and therefore bad faith pursuant to Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking the Complainant’s site to its own website for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted. Accordingly, it is Ordered that the domain name <deltaairline.com> be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 18, 2002.
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