Delta Corporate Identity, Inc. v. Private
Claim Number: FA0203000105859
Complainant is Delta Corporate Identity, Inc., Atlanta, GA (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry. Respondent is Private, Moscow, RUSSIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <delta-airline.com>, registered with Bulkregister.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 13, 2002; the Forum received a hard copy of the Complaint on March 14, 2002.
On March 13, 2002, Bulkregister.com confirmed by e-mail to the Forum that the domain name <delta-airline.com> is registered with Bulkregister.com and that Respondent is the current registrant of the name. Bulkregister.com has verified that Respondent is bound by the Bulkregister.com 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 15, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 4, 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 9, 2002, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. The disputed domain name <delta-airline.com> is confusingly similar to Complainant’s DELTA family of marks and specifically Complainant’s DELTA AIRLINES.
2. Since Respondent is known as “Private” and has never been known by any name that incorporated DELTA, Respondent is not commonly known as <delta-airline.com>. Also, the use of the disputed domain name to redirect Internet users to a website that offers competing services, is not evdience of a legitimate interest in the disputed domain name. Therefore, Respondent does not have a right or legitimate interest in <delta-airline.com>.
3. The mere fact Respondent has registered a domain name that incorporates the mark of a world famous airline with the apparent intent to redirect users to a competing website is evidence that Respondent registered <delta-airline.com> in bad faith. By redirecting Internet users to a website that offers the same services Complaintant offers, Respondent has used <delta-airline.com> in bad faith.
No Response was received.
Complainant is the largest United States airline in terms of aircraft departures and passengers enplaned. Complainant serves 205 cities in the United States as well as forty-four cities in twenty-eight foreign countries worldwide. Complainant owns several trademarks and services marks worldwide, including: DELTA in the United States, registered on October 17, 1956, Registration Number 654,915; DELTA AIR LINES in the United States, registered on August 22, 1972, Registration Number 970,418; DELTA in Russia (the supposed home of Respondent), registered on August 22, 1990, Registration No. 106,839. As the result of using the DELTA family of marks through advertising, Complainant boasts annual revenues of nearly $15 billion. The DELTA family of marks has reached the “notorious” level, and therefore, the marks enjoy liberal protection under the Paris Convention. Russia is one of several countries that have adopted the provisions outlined in the Paris Convention.
Respondent registered <delta-airline.com> on March 12, 2000. According to Complainant, Respondent’s only use of the domain name is in connection with the GITO travel website that offers travel services similar to Complainant. In fact it is in direct competition with Complainant’s <delta.com> and <deltavacations.com> websites.
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 the 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 the Respondent is identical or confusingly similar 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 and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant has established its rights to the DELTA AIR LINES mark through federal registration and continuous use. The disputed domain name <delta-airline.com> is confusingly similar to Complainant’s famous mark. The hyphen in the domain name does not distinguish it from the famous mark, since the words “delta” and “airline” are the dominate factor in the disputed domain name. See
Nintendo Of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar to Complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words divided by a hyphen); see also Pep Boys Manny, Moe, and Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that a hyphen between words of Complainant’s registered mark is confusingly similar). Furthermore, the exclusion of the “s” in the disputed domain name does not change the fact that a likelihhod of confusion may exist between DELTA AIR LINES and <delta-airline.com>. See Delta Air Lines, Inc.. v. Stonybrook Investments, Ltd., D2000-1686 (WIPO Jan. 22, 2001 (finding <deltaairline.com> confusingly similar to DELTA AIR LINES, since the deletion of the "s" from the mark, indicating the singular rather than the plural form, “does not alter the meaning of the domain name, nor does it remove the likelihood of confusion that arises from it”). Finally, even though the disputed domain name does not incorporate a space between “air” and “line” like the mark itself, the disputed domain name is confusing similar to Complainant’s famous mark. See Tech. Prop., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain name <radioshack.net> is identical to Complainant’s mark, RADIO SHACK); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that Respondent’s domain name <charlesjourdan.com> is identical to Complainant’s marks).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent uses a domain name that utilizes the famous mark of one of the largest airlines in the world in connection with a website that offers competing travel services. This activity by Respondent cannot be considered a use in connection with a bona fide service as 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).
Complainant’s mark reflects one of the largest airline carriers in the world. The fame associated with the mark leads the Panel to presume that it would be impossible for anyone, except Complainant, to be commonly known by <delta-airline.com>. Further, the only evidence presented leads the Panel to believe that Respondent is known as “private.” Therefore, Respondent is not considered to be commonly known as <delta-airline.com> pursuant to Policy ¶ 4(c)(ii). See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding that no person besides Complainant could claim a right or a legitimate interest with respect to the domain name <nike-shoes.com>).
Respondent uses Complainant’s famous mark as the dominant portion of its domain name. Because, Complainant has established its mark as a symbol of an airline industry leader and since Respondent’s domain name is connected with a website that offers the same airline on-line booking services that Complainant’s website does, Respondent’s use of the disputed domain name is not a legitimate, noncommercial or fair use as pursuant to Policy ¶ 4(c)(iii). See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name); see also 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).
Therefore, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Based on the fame generated by Complainant’s mark and the website connected with the disputed domain name, which is a competitor of Complainant within the same industry, the Panel presumes that Respondent had constructive knowledge of Complainant’s famous mark before Respondent registered the disputed domain name. Therefore, Respondent registered <delta-airline.com> in bad faith. See CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that given the long use and fame of the Complainant’s mark, the Respondent’s use of a confusingly similar or identical domain name is evidence of bad faith).
Since Respondent uses a confusingly similar domain name to redirect Internet users to the website operated by one of Complainant’s competitors, Respondent has used the disputed domain name in bad faith as outlined in Policy ¶ 4(b)(iv). See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where the Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as the Complainant).
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 be hereby granted.
Accordingly, it is Ordered that the domain name <delta-airline.com> be transferred from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 12, 2002
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