Delta Corporate Identity, Inc. v. Patrick Ory
Claim Number: FA0204000109375
Complainant is Delta Corporate Identity, Inc., Atlanta, GA (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry. Respondent is Patrick Ory, Cancun, Cancun, MEXICO (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <delta-airlines-fares.com> and <deltaairlinesreservation.com>, registered with Joker.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.
James Alan Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 9, 2002; the Forum received a hard copy of the Complaint on April 10, 2002.
On April 10, 2002, Joker.com confirmed by e-mail to the Forum that the domain names <delta-airlines-fares.com> and <deltaairlinesreservation.com> are registered with Joker.com and that Respondent is the current registrant of the names. Joker.com has verified that Respondent is bound by the Joker.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 April 10, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 30, 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 email@example.com, and 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 May 14, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James Alan Crary 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 names be transferred from Respondent to Complainant.
The <delta-airlines-fares.com> and <deltaairlinesreservation.com> domain names are confusingly similar to Complainant's DELTA AIR LINES mark.
Respondent has no rights or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
No Response was received.
Complainant first registered the DELTA AIR LINES mark with the United States Patent and Trademark Office in 1950 as Registration Number 523,611. Complainant has since registered the mark in Argentina, Australia, Canada, Costa Rica, France, and Guatemala. Complainant is also the owner of an entire family of DELTA marks. Complainant uses the DELTA family of marks in relation to its air transportation services. Complainant is known throughout the world, and its route network covers 221 domestic cities in 48 states and 118 cities in 47 countries. Complainant’s annual revenues are nearly $15 billion dollars and its advertising expenditures are in the millions. Complainant has also utilized the Internet for direct marketing at its domain names <delta.com> and <deltavacations.com>.
Respondent registered the disputed domain names on November 12, 2000 and November 14, 2000. Respondent is using the disputed domain names in order to redirect Internet users to <cheaptravelnetwork.quixo.com>. This website offers air transportation and travel services that directly compete with Complainant’s services
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 that it has rights in its DELTA AIR LINES mark through registration and continuous use. Respondent’s <delta-airlines-fares.com> domain name is confusingly similar to Complainant’s mark because it incorporates the entirety of Complainant’s mark and adds hyphens between the words. The use of hyphens between words does not create a distinct mark capable of overcoming a claim of confusing similarity. See Easyjet Airline Co. v. Harding, D2000-0398 (WIPO June 22, 2000) (finding it obvious that the domain name <easy-jet.net> was virtually identical to Complainant's EASYJET mark and therefore that they are confusingly similar). Furthermore, the addition of a generic term to Complainant’s well-known mark is not considered to create a new mark capable of overcoming a claim of confusing similarity. Respondent added the term “fares” to Complainant’s DELTA AIR LINES mark in <delta-airlines-fares.com> and “reservation” to <deltaairlinesreservation.com>; these are generic terms and therefore do not create distinct marks capable of overcoming a claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has no rights or legitimate interests in the disputed domain names. 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 two confusingly similar domain names in order to divert Internet users to a website that competes with Complainant’s services. This is not considered to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and therefore does not create rights or legitimate interests in the disputed domain names. See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).
Respondent is known to the Panel as Patrick Ory, not as <delta-airlines-fares.com> or <deltaairlinesreservation.com>. Respondent has not submitted any evidence that it is commonly known as the disputed domain names and therefore has not established that it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See 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); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).
Respondent is using the disputed domain names in order to divert Complainant’s customers to a website that competes with Complainant’s services. The domain names are confusingly similar to Complainant’s DELTA AIR LINES mark and therefore, Internet users may be confused as to the source, sponsorship, and affiliation of the disputed domain names. The use of the <delta-airlines-fares.com> or <deltaairlinesreservation.com> in order to create a likelihood of confusion for Respondent’s commercial gain is not considered to be a legitimate noncommercial or fair use and therefore does not create rights or legitimate interests 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Based on the fame of Complainant’s mark it can be inferred that Respondent was on notice as to Complainant’s mark when it registered the disputed domain names. Therefore, Respondent’s registration of <delta-airlines-fares.com> and <deltaairlinesreservation.com>, despite this notice is evidence of bad faith registration. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); 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).
Furthermore, Respondent’s use of Complainant’s mark in both domain names creates a likelihood of confusion for Respondent’s commercial gain because the disputed domain names divert Complainant customers to Respondent’s competing website. This is evidence of bad faith use 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 Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).
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 names <delta-airlines-fares.com> and <deltaairlinesreservation.com> be transferred from Respondent to Complainant.
James Alan Crary, Panelist
Dated: May 22, 2002
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