national arbitration forum

 

DECISION

 

Aero California S.A. DE C.V. v. Douglas Lagos

Claim Number: FA0708001058868

 

PARTIES

Complainant is Aero California S.A. DE C.V., (“Complainant”), represented by Marc A. Paul, of Steptoe & Johnson LLP, 1330 Connecticut Ave., NW, Washington, DC 20036.  Respondent is Douglas Lagos (“Respondent”), 1541 Brickell Avenue T-112 Miami, FL 33129.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <aero-california.us>, registered with Namescout.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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 7, 2007; the Forum received a hard copy of the Complaint on September 12, 2007.

 

On September 12, 2007, Namescout.com confirmed by e-mail to the Forum that the <aero-california.us> domain name is registered with Namescout.com and that Respondent is the current registrant of the name.  Namescout.com has verified that Respondent is bound by the Namescout.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On September 17, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 8, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On October 15, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq.,  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.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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.      Respondent’s <aero-california.us> domain name is confusingly similar to Complainant’s AERO CALIFORNIA mark.

 

2.      Respondent does not have any rights or legitimate interests in the <aero-california.us> domain name.

 

3.      Respondent registered and used the <aero-california.us> domain name in bad faith.

 

            B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Aero California S.A. DE C.V., is a well known provider of air transportation services for passengers, mail and property.  Complainant has operated these services in Mexico and the United States for over fifteen years.  In connection with the provision of these services, Complainant has registered the AERO CALIFORNIA mark (Reg. No. 2,328,013 issued March 14, 2000) with the United States Patent and Trademark Office (“USPTO”).  Complainant also operates a website at the <aerocalifornia.com> domain name.

 

Respondent registered the <aero-california.us> domain name on April 2, 2005.  The disputed domain name resolves to a search engine website offering links to various, third-party commercial websites, some of which directly compete with Complainant’s business.

 

 

 

 

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(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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).

 

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 or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

Complainant attempts to establish rights in the AERO CALIFORNIA mark through registration of the mark with the USPTO.  The Panel finds that Complainant’s timely registration and subsequent use of the AERO CALIFORNIA mark sufficiently establishes rights in the mark pursuant to Policy ¶ 4(a)(i).  See ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the complainant demonstrated its rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar offices around the world): see also Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that the complainant’s registration of the AMERIDREAM mark with the USPTO established its rights in the mark pursuant to UDRP ¶ 4(a)(i)).

 

Respondent’s <aero-california.us> domain name contains Complainant’s mark in its entirety, with the exception of the addition of a hyphen between the two words of Complainant’s mark and the country code top-level domain (“ccTLD”) “.us.”  The Panel finds that the mere addition of a hyphen and a ccTLD does not sufficiently distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i).  See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a [UDRP] Policy ¶ 4(a)(i) confusingly similar analysis.”).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

In instances where Complainant has made a prima facie case in support of its allegations, the burden shifts to Respondent to set forth concrete evidence indicating that it has rights or legitimate interests in accordance with Policy ¶ 4(a)(ii).  See SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Nat. Arb. Forum Apr. 9, 2007) (concluding that under UDRP ¶ 4(a)(ii) and the factors listed in UDRP ¶ 4(c), a complainant must first make a prima facie case that the respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, that the respondent is not commonly known by the disputed domain name, and that the respondent is not making a legitimate noncommercial or fair use of the disputed domain name before the burden shifts to the respondent to show otherwise); see also F. Hoffman-La Roche AG v. Tomasso Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the [UDRP] Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”).  The Panel finds that Complainant’s assertions are sufficient to establish a prima facie case for purposes of the Policy.  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).

 

There is no evidence in the record to indicate that Respondent is the holder or beneficiary of a service or trademark registration for the <aero-california.us> domain name, or that Respondent is commonly known by the disputed domain name or licensed by Complainant to use the name in any way.  Accordingly, the Panel finds that Respondent has not satisfied the requirements of Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).  See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark). 

 

Respondent is using the <aero-california.us> domain name to host a website that displays hyperlinks to various third-party websites, some of which are in direct competition with Complainant.  Such use is presumably for Respondent’s own commercial gain through the earning of click-through fees for the hyperlinks displayed.  The Panel finds that such use of the <aero-california.us> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).  See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.      

 

Registration and Use in Bad Faith

 

Respondent is using the <aero-california.us> domain name to host advertising links for a variety of third-party websites, some of which are in direct competition with Complainant.  Such use constitutes a disruption of Complainant’s business, and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).  See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to UDRP ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).

 

Moreover, as discussed above, the Panel infers that Respondent’s use of the <aero-california.us> domain name is for Respondent’s own commercial benefit through the accrual of click-through fees.  As the disputed domain name is confusingly similar to Complainant’s AERO CALIFORNIA mark, there is also the possibility that Internet users will be confused as to Complainant’s affiliation with the disputed domain name and corresponding website.  Thus, the Panel further finds evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to UDRP ¶ 4(b)(iv)); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.     

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <aero-california.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated: October 29, 2007

 

 

 

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page