Allegiant Air Inc. v.
Allegiant Solutions Corp
Claim Number: FA0805001191283
PARTIES
Complainant is Allegiant Air Inc. (“Complainant”), represented by Norman
M. Abramson, of Gray, Plant, Mooty, Mooty & Bennett,
P.A.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allegiant.com> (the “Disputed Domain Name”), registered with Korea Information Certificate Authority,
Inc. d/b/a Domainca.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.
Hong Oo Baak as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On May 29, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 18, 2008 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@allegiant.com by e-mail.
A Response itself was received on June
18, 2008, however, the Response was deficient under ICANN Supplemental rule 5(a) as the
exhibits were received six (6) days late, on
Complainant filed a timely Additional
Submission on
Respondent filed a timely Additional Submission
on
On
RELIEF SOUGHT
Complainant requests that the Disputed Domain Name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Complainant asserts that it is a commercial
airline based in
2. Complainant registered the domain name <allegiantair.com>
on
3. Complainant asserts that the Disputed Domain
Name is confusingly similar to Complainant’s Mark.
4. Complainant asserts that Respondent has no rights
or legitimate interest in the Disputed Domain Name as Respondent is merely
using the website at the Disputed Domain Name to misdirect Internet traffic.
Complainant asserts that Respondent owns no trademark registration for the term
“Allegiant” and that Respondent is not authorized by Complainant to use the
Mark. Complainant further asserts that Respondent is not affiliated in any way
with Complainant. In addition, Complainant asserts that Respondent does not use
the Disputed Domain Name in connection with a bona fide offering of goods or services but that the website at the
Disputed Domain Name consists of a commercial search engine and web directory
with links to websites administered by Complainant’s competitors, as well as
links to unrelated commercial websites.
5. Complainant asserts that Respondent
registered and is using the Disputed Domain Name in bad faith. Complainant
asserts that Respondent’s bad faith may also be readily inferred from its use
of the Mark to divert Internet users to Respondent’s site containing a commercial
search engine and links to Complainant’s competitors. Complainant further
asserts that Respondent’s bad faith registration and use is evidenced by the
fact that Respondent either knew or reasonably should have known about
Complainant’s use of its Mark. Complainant contends that it has been promoting
its Mark in connection with airline transportation services for almost 10
years, and is particularly well known as an air travel provider of direct
travel services to vacation destinations particularly Las Vegas from dozens of
cities in the United States and Canada.
B. Respondent
1. Respondent contends that it acquired by
purchase, the Disputed Domain Name from Telerent Leasing Corporation on April
26, 2006 at 100,000 USD and that Respondent is using the website at the
Disputed Domain Name as a travel information search site for the world’s best
10 travel destinations. Respondent contends that the website at the Disputed
Domain Name provides air-ticket comparison search service and news on travel
destinations and that Respondent owns numerous websites including the websites
which relate to travel. Respondent contends that it is continuously investing
into online and website business and that it is operating such business
worldwide.
2. Respondent contends that Complainant does
not have a right to ownership of the mark “Allegiant,” which is a generic term
used in many other domain names and which the Complainant cannot assert
exclusive right to use.
3. Respondent contends that the Disputed Domain
Name is not confusingly similar to Complainant’s Mark since it is composed of generic
terms.
4. Respondent contends that it has rights or legitimate
interest in the Disputed Domain Name and that Complainant has no rights or
legitimate interest in the Disputed Domain Name. Respondent contends that it
registered the domain name <allegiant.co.kr> on
5. Respondent contends that the Disputed Domain
Name was not registered and used in bad faith. Respondent contends that
Complainant’s assertion that Respondent either knew or reasonably should have
known about Complainant’s use of its Mark is far-fetched.
6. Respondent contends that Complainant’s
conduct constitutes reverse domain name hijacking.
C. Additional Submissions by Complainant
1. Complainant contends that Respondent’s Response
was not timely provided to Complainant and that those portions not timely
provided should be stricken.
2. Complainant contends that it has developed
strong and incontestable rights in the Mark for airline transportation
services, upon which Respondent’s misuse of the Disputed Domain Name creates a likelihood
of confusion. Complainant contends that the United States Patent and Trademark Office
does not think “Allegiant” is a generic term for airport transportation
services registering Complainant’s Mark in connection with Complainant’s
airline travel services, which gives Complainant the exclusive rights to use
the Mark for airport transportation services. Complainant contends that
Respondent’s use of the Disputed Domain Name in connection with a website
displaying a travel-related web directory and links to travel websites which
compete with Complainant, constitutes strong evidence of Respondent’s bad
faith.
3. Complainant contends that Respondent’s
argument that “Allegiant” is used as a mark in different industries in
different classes of goods and services has no bearing on Complainant’s
established trademark rights. Complainant further contends that Respondent’s
acquisition of the Disputed Domain Name in 2006 and use of it to link to
services that are competitive with Complainant’s is what creates a likelihood
of confusion and constitutes bad faith use of the Disputed Domain Name.
4. Complainant contends that Respondent’s
recent acquisition and use of the Disputed Domain Name to host a website
linking to airline travel services in the
5. Complainant contends that Respondent’s
argument that there is no likelihood of confusion between the Mark and the
Disputed Domain Name because Respondent uses <allegiant.com> not <allegiantair.com> is frivolous.
6. Complainant contends that Respondent’s acquisition
of the Disputed Domain Name constitutes a bad faith registration under the Policy.
Complainant contends that because Complainant’s Mark was registered five years
before Respondent registered the Disputed Domain Name to use it for commercial
gain by advertising links to competing airline services and benefiting from the
likely confusion between Complainant’s Mark and the Disputed Domain Name,
Respondent registered and is using the Disputed Domain Name in bad faith.
7. Complainant contends that it has not engaged
in reverse domain name hijacking.
D. Additional Submissions by Respondent
1. Respondent contends that Complainant’s
assertion that it has developed strong and incontestable rights in the Mark for
airline transportation services and that it has exclusive right to use “Allegiant”
is unreasonable. Respondent contends that there is no evidence of likelihood of
confusion between the Mark and the Disputed Domain Name.
2. Respondent contends that there is no
evidence that its operation of the website at the Disputed Domain Name is
likely to harm Complainant or trigger market confusion.
3. Respondent contends that its business is not
focused on the
4. Respondent contends that it is using the
Disputed Domain Name in good faith, providing services and information such as VOD
service, information on travel destinations, and news and air-ticket comparison
search service.
FINDINGS
1.
Complainant is the owner of the trademark registration
for the Mark (USPTO registration number 2444756), registered on April 17, 2001.
2.
Complainant has used the Mark in connection with
airline transportation services since
3.
Complainant is the owner of the domain name <allegiantair.com>
registered on
4.
The Disputed Domain Name was initially registered by
Telerent Leasing Corporation and later acquired by Respondent at 100,000 USD on
April 26, 2006.
5.
Respondent is the owner of several domain names including
the Disputed Domain Name and the domain name <allegiant.co.kr>.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
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;
(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.
The Mark consists of two parts, namely “Allegiant”
and “Air.” “Allegiant” and “Air” are generic terms. The generic terms have
meaning common usage would ascribe to those words only, and the generic or
descriptive aspect of a mark is not lost in the combined form. If a term is
generic for a particular product or service, it cannot be entitled to trademark
protection unless it has acquired a secondary meaning.
In addition to the above, the Disputed Domain
Name <allegiant.com> is not
identical to the Mark “Allegiant Air,” since the Mark has the extra word “Air.”
Therefore whether the Disputed Domain Name is confusingly similar to the Mark
must be determined. Confusing similarity of a mark will naturally be more
difficult to be established where the mark contains generic or descriptive
terms, unless the mark is sufficiently distinctive or acquired a secondary
meaning through use for a long period of time.
Considering the fact that domain names are used
throughout the world, it will be reasonable to decide whether a mark consisting
of a generic or descriptive term has become distinctive by a test of whether it
has become distinctive throughout world users.
Complainant has not submitted sufficient
evidence that the Mark has acquired secondary meaning. Since the words “Allegiant”
and “Air” are generic terms, the fact that the Mark has acquired secondary
meaning has to be proved by clear and convincing evidence. Although Complainant
asserts that it has been promoting its Mark in connection with airline
transportation services for almost 10 years and that it is particularly well
known as an air travel provider of direct travel services to vacation
destinations including Las Vegas, such fact is not enough to establish that the
Mark has become distinctive. Although there may be marks that have become
distinctive in fewer than 10 years, merely the fact that Complainant has been
promoting its Mark for 10 years does not establish that the Mark has
become distinctive.
Therefore, the Panel finds that Policy ¶
4(a)(i) has not been satisfied.
Complainant has
failed to establish that Respondent has no rights or legitimate interests in
the Disputed Domain Name. Although it is true that Respondent is not authorized
by Complainant to use the Mark nor is Respondent affiliated in any way with Complainant,
that is not enough for this Panel to decide that Respondent has no rights or
legitimate interests in the Disputed Domain Name, since Respondent contends
that the website at Disputed Domain Name provides for air-ticket comparison
search service and news on travel destinations and that it owns several
websites including the websites which relate to travel and there is no evidence
to the contrary.
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii)
has not been satisfied
Complainant contends that it has been promoting its Mark in connection with
airline transportation services for almost 10 years, and that it is particularly
well known as an air travel provider of direct travel services to vacation destinations
such as
It is true that
it is important to consider whether Respondent had bad faith at the time
of transfer of the Disputed Domain Name. However, the date of original registration
of the Disputed Domain Name is also one of the additional factors to consider.
In this regard, there is no evidence that Telerent Leasing Corporation, the
prior registrant of the Disputed Domain Name before Respondent (“Prior
Registrant”) knew the existence of the Mark at the time of registration of the
Disputed Domain Name. Not only that, Complainant has not sufficiently shown
that Respondent, at the time the Disputed Domain Name was transferred
from Prior Registrant, acquired the
Disputed Domain Name in bad faith.
Evidence of bad faith includes constructive
knowledge of a commonly known mark at the time of registration of a domain name.
See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum
Complainant has not submitted evidence to establish that the Mark was
already well-known before Prior Registrant registered the Disputed Domain Name on November 27, 1999, about a year
after the date of Complainant’s registration of <allegiantair.com> and the date
the Mark was first used in commerce. In addition, the Mark and the domain name <allegiantair.com> had been in
use for about 10 years before Respondent acquired the Disputed Domain Name, the
duration of which is not considered to be sufficiently long to be recognized
without proof, to have become well-known.
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has not been satisfied.
DECISION
As stated above,
Complaint failed to establish
all three elements required under the ICANN Policy.
Even if Complainant had established all three
elements required under the ICANN Policy, ordering a transfer to Complainant,
and not the cancellation, of the Disputed Domain Name would unfairly prejudice
current or potential registrants of a domain name who use or may use the term “allegiant”
as part of their domain name. The Disputed
Domain Name is not “allegiantair.com.” It is just <allegiant.com>. From
the internet search, it was
found that there are several businesses that use “allegiant” in their trade
name. If that is the case, there can be many business entities/individuals that
want to register and use the domain name <allegiant.com> in their respective business fields. Merely the fact that Complainant submitted the Complaint ahead of other business
entities/individuals will not entitle the Complainant to monopolistically use
the domain name <allegiant.com>
(i.e., a domain name without “air”), excluding all others. There should be fair
competition among all business entities/individuals in various fields that are
using or want to use “allegiant” in their trade name in respective fields. Thus, the
Panel concludes that relief shall be DENIED.
Accordingly, it is ordered that Complainant’s request for transfer of <allegiant.com> domain name be DISMISSED.
Hong Oo Baak, Panelist
Dated:
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum