TWA Airlines LLC v. Venator Group
Claim Number: FA0204000112520
Complainant
is TWA Airlines LLC, DFW Airport, TX
(“Complainant”) represented by Kay Lyn
Schwartz, of
Gardere Wynne Sewell LLP. Respondent
is Venator Group, New York, NY (“Respondent”).
The
domain name at issue is <getaway.biz>,
registered with Net Searchers
International.
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.
The
Honorable Charles K. McCotter, Jr. 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 27, 2002; the Forum
received a hard copy of the Complaint on May 1, 2002.
On
May 3, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 23,
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”).
On
May 22, 2002, Respondent requested, with Complainant’s consent, an extension
with which to file its Response.
Respondent’s request was granted by the Forum on May 23, 2002, extending
Respondent’s Response deadline until June 3, 2002. Respondent did not submit a substantive Response.
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 8, 2002, pursuant to STOP Rule 6(b), the Forum
appointed the Honorable
Charles K. McCotter, Jr. 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.
A. Complainant
1. Respondent’s <getaway.biz> domain
name is identical to Complainant’s registered GETAWAY mark.
2. Respondent has no rights or legitimate
interests in the <getaway.biz> domain name.
3. Respondent registered the <getaway.biz>
domain name in bad faith.
B. Respondent failed to submit a Response.
Complainant is the owner of U.S. Service
Mark Reg. No. 930,216 (registered February 29, 1972) for the GETAWAY mark as
listed on the Principal Register of the U.S. Patent and Trademark Office
(“USPTO”).
Complainant has a nationwide reputation
for quality services and has accumulated substantial public goodwill. In the
course of its business, Complainant has acquired extensive rights in numerous
names, trademarks and service marks, including the GETAWAY mark. Complainant
has continuously used the mark since as early as 1969 in connection with credit
card and air transportation services.
Respondent registered the disputed domain
name on March 27, 2002 and has yet to develop a use for the domain.
Complainant’s investigation of Respondent indicated that Respondent may have
trademark rights in NORTHERN GETAWAY, however, no evidence suggests that
Respondent has rights in the GETAWAY mark. Respondent is not a licensee of
Complainant, nor is Respondent authorized to use Complainant’s mark.
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 GETAWAY mark through registration with the
USPTO and subsequent continuous use of the mark since as early as 1969.
Respondent’s
<getaway.biz> domain name is identical to Complainant’s GETAWAY
mark in form and spelling, thereby satisfying the “identical” requirement of
STOP Policy ¶ 4(a)(i).
Accordingly,
the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to come forward
with a Response. Therefore, it is presumed that Respondent has no rights or
legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondent’s 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 Vertical Solutions Mgmt., Inc. v.
Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant to be deemed true).
Complainant has established that it has
rights in the disputed domain name because it is the owner of the relevant
registered trademark in the United States. Respondent has not come forward to
proffer any evidence that it has rights in the GETAWAY mark. Complainant’s
investigation revealed that Respondent may have rights in the NORTHERN GETAWAY
mark, but not the GETAWAY mark standing alone. Therefore, Respondent has not
established rights or legitimate interests in the <getaway.biz> domain
name under 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); but
see MARCOM HandelsgesmbH v. MARCOM automatisering bv, FA 110854 (Nat. Arb.
Forum July 1, 2002) (awarding the domain name <marcom.biz> to Respondent
where Complainant had rights in the MARCOM mark but where Respondent had been
doing business as “MARCOM automatisering bv” for at least 14 years).
Complainant’s investigation of
Respondent’s Northern Getaway business reveals that Respondent may simply be
trying to use a shortened form of a phrase in which it may have rights.
Respondent uses a domain name that more closely follows Complainant’s trademark
rather than its own. This implies that Respondent is not using the disputed
domain name in connection with a bona fide offering of goods or services under
STOP Policy ¶ 4(c)(ii). Respondent’s registration of Complainant’s mark in an
identical domain name implies that Respondent is diverting Internet users
searching for Complainant’s services to its competing website. See N. Coast Med., Inc. v. Allegro Med., FA
95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent
used the domain name to divert Internet users to its competing website); see
State Farm Mut. Auto. Ins. Co. v.
LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that
“unauthorized providing of information and services under a mark owned by a
third party cannot be said to be the bona fide offering of goods or services”).
There is no evidence on the record, nor
has Respondent come forward to establish that it is commonly known by the <getaway.biz>
domain name pursuant to STOP Policy ¶ 4(c)(iii). Moreover, Respondent is not an authorized agent or licensee of
Complainant. See Broadcom Corp. v.
Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no
rights or legitimate interests because Respondent is not commonly known by the
disputed domain name or using the domain name in connection with a legitimate
or fair use); see also Gallup Inc.
v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding
that Respondent does not have rights in the domain name when Respondent is not
known by the mark).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
Furthermore, Respondent’s registration of the domain
name at issue prevents Complainant, as owner of the corresponding GETAWAY
service mark, from reflecting the mark in the domain name, thereby constituting
bad faith pursuant to STOP Policy ¶ 4(b)(ii). See Toyota
Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding
that “Registration of a domain name goes further than merely correctly using in
an advertisement the trade mark of another in connection with that other’s
goods or services: it prevents the trade mark owner from reflecting that mark
in a corresponding domain name”); see also Peachtree Software v.
Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding bad faith
under STOP Policy ¶ 4(b)(ii), noting that it was reasonable to conclude
Respondent registered <peachtree.biz> with the intent to prevent
Complainant from reflecting its PEACHTREE mark in a corresponding domain name,
given Respondent's knowledge of Complainant's mark and Respondent's lack of
rights or interests in the mark).
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
Having established all three elements
required under the Start-Up Trademark Opposition Policy, the Panel concludes
that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the
domain name <getaway.biz> be
TRANSFERRED from Respondent to Complainant and that subsequent
challenges under the STOP Policy against this domain name SHALL NOT be
permitted.
The Honorable Charles K. McCotter, Jr.,
Panelist
Dated: July 15, 2002
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