Northwest Airlines Inc. v. NWA INC
Claim Number: FA0204000109756
Complainant is Northwest Airlines Inc., Eagan, MN (“Complainant”). Respondent is NWA INC, Grand Blanc, MI (“Respondent”).
The domain name at issue is <nwa.biz>, registered with Network Solutions, Inc.
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.
Hon. Ralph Yachnin as Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on April 18, 2002; the Forum received a hard copy of the Complaint on May 17, 2002.
On May 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 11, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
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 July 5, 2002, pursuant to STOP Rule 6(b), the Forum appointed Hon. Ralph Yachnin as the single 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 STOP Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Transfer of the domain name from Respondent to Complainant.
1. Respondent’s <nwa.biz> domain name is identical to Complainant’s NWA mark.
2. Respondent has no rights or legitimate interests in the <nwa.biz> domain name.
3. Respondent registered the <nwa.biz> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has a live service mark with the United States Patent and Trademark Office (“USPTO”) for NWA (Reg. No. 76,210,945) registered March 12, 2002. Complainant’s NWA mark is listed on the Principal Register of the USPTO and the date of first use is listed as June 13, 1943. Complainant also operates a website at <nwa.com>, which receives approximately 10 million hits per day.
Respondent registered the disputed domain name on March 27, 2002. Respondent has yet to develop or designate a purpose for the domain name. Complainant’s investigation indicates that Respondent does not have any substantially similar trademark or service mark relating to NWA.
Paragraph 15(a) of the STOP 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 STOP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the STOP Rules.
Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical 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.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
Complainant has established its rights in the NWA mark through registration with the USPTO and continuous use of the mark since 1943.
Respondent’s <nwa.biz> domain name mirrors Complainant’s NWA mark in its entirety, emulating it in form and spelling. Respondent’s addition of the “.biz” gTLD is inconsequential when conducting an “identical” inquiry. "When a trademark, service mark, collective mark or certification mark is composed, in whole or in part, of a domain name, neither the beginning of the URL (http://www.) nor the TLD have any source indicating significance. Instead, those designations are merely devices that every Internet site provider must use as part of its address." U.S. Patent and Trademark Office Examination Guide No. 2-99, "Marks Composed, in Whole or in Part, of Domain Names," Section I (Sept. 29, 1999).
Accordingly, the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to produce a Response in this proceeding. Therefore, it is presumed that Respondent lacks rights and legitimate interests in the <nwa.biz> 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, because Respondent failed 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”).
Complainant’s research has failed to locate any evidence that Respondent is the owner or beneficiary of a trade or service mark that is identical to the <nwa.biz> domain name. It is not apparent to the Panel, nor has Respondent come forward to provide any evidence, that Respondent has legitimate interests in the NWA mark anywhere in the world. Therefore, Respondent has failed to establish rights in the domain name pursuant to STOP Policy ¶ 4(c)(i). See Nat’l Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that, because Respondent did not come forward with a Response, the Panel could infer that it had no trademark or service marks identical to <grammy.biz> and therefore had no rights or legitimate interests in the domain name); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests under the UDRP where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).
Respondent has yet to develop a website or purpose in conjunction with the disputed domain name. The burden of proof lies with Respondent in producing reliable and credible evidence that the disputed domain name was registered for a legitimate purpose, since one is not apparent to the Panel. Respondent’s failure to support its registration of the infringing domain name by showing it has made demonstrable preparations to use <nwa.biz> in connection with a bona fide offering of goods or services implies that Respondent has no such rights or legitimate interests under STOP Policy ¶ 4(c)(ii). See Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that in order to show rights or legitimate interests in the disputed domain name Respondent must establish with valid evidence “a course of business under the name, or at least significant preparation for use of the name prior to learning of the possibility of a conflict” with an IP Claimant); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the Respondent to demonstrate that it has rights or legitimate interests).
There is no evidence or information before this Panel that suggests Respondent is known as “NWA” or by its <nwa.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii). Because Respondent registered such an established mark for its domain name, a notable passenger airline that has been operating since at least 1943, there is a presumption that Respondent is not commonly known by the <nwa.biz> domain name. See CBS Broad., 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); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).
Accordingly, the Panel finds that STOP Policy ¶ 4(a)(ii).
Due to the nature of NeuLevel’s STOP IP claim notification procedure, Complainant’s listing on the Principal Register of the USPTO and continuous operation under the NWA mark since 1943, Respondent had notice of Complainant’s preexisting rights in the NWA mark. Respondent’s registration of the disputed domain name, despite preexisting knowledge of Complainant’s rights in the mark, represents bad faith registration under STOP Policy ¶ 4(a)(iii). See Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that the unique nature of the STOP Policy and the notice given to Respondent regarding existing IP Claims identical to its chosen domain name precluded good faith registration of <genelogic.biz> when Respondent registered it with “full knowledge that his intended business use of this domain name was in direct conflict with a registered trademark of a known competitor in exactly the same field of business”); see also Valspar Sourcing, Inc. v. TIGRE, FA 112596 (Nat. Arb. Forum June 4, 2002) (“Respondent was on notice of Complainant’s rights in PAINT.BIZ when it registered the disputed domain name, because Respondent received notice of Complainant’s IP Claim. Respondent’s registration of the disputed domain name despite this notice when Respondent had no right or legitimate interest in the domain name is evidence of bad faith”).
Additionally, Respondent’s registration of a domain name that is identical to Complainant’s famous mark will eventually lead to user confusion, resulting in Respondent attracting Internet users searching for Complainant’s services. Complainant’s website attracts 10 million users daily. Assuredly, a percentage of Complainant’s interested Internet users will inevitably be directed to Respondent’s website. Respondent does not have rights or legitimate interests in the <nwa.com> domain name, which implies Respondent had opportunistic motives in registering Complainant’s established mark in its domain name. Respondent’s actions evidence bad faith under STOP Policy ¶ 4(b)(iv). See Pillsbury Co. v. Prebaked Scandinavia ab, FA 102970 (Nat. Arb. Forum Jan. 31, 2002) (finding registration of a domain name identical to Complainant’s mark to be in bad faith under STOP Policy ¶ 4(b)(iv) when use of the domain name would likely cause confusion as to the affiliation between Respondent and Complainant); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).
The Panel finds that STOP Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the STOP Policy, the Panel concludes that relief should be hereby GRANTED.
Accordingly, it is Ordered that the <nwa.biz> domain name be TRANSFERRED from Respondent to Complainant, and that subsequent challenges under the STOP Policy against this domain name SHALL NOT be permitted.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: July 8, 2002
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page