Delta Corporate Identity, Inc. v. Private
Claim Number: FA0203000105859
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@delta-airline.com 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B.
Respondent
No
Response was received.
FINDINGS
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.
DISCUSSION
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.
DECISION
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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