Compania Mexicana de Aviacion, S.A. de C.V. d/b/a Mexicana Airlines v. Domain Administration Limited c/o David Halstead
Claim Number: FA0805001195966
Complainant is Compania Mexicana de Aviacion, S.A. de C.V. d/b/a Mexicana
Airlines (“Complainant”), represented
by Edward A. Schlatter, of Knobbe Martens Olson & Bear LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <frecuenta.com>, registered with Fabulous.com Pty Ltd.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 30, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 30, 2008.
On June 1, 2008, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <frecuenta.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 June
11, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 1, 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@frecuenta.com by
e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 8, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <frecuenta.com> domain name is identical to Complainant’s FRECUENTA mark.
2. Respondent does not have any rights or legitimate interests in the <frecuenta.com> domain name.
3. Respondent registered and used the <frecuenta.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Compania
Mexicana de Aviacion, S.A. de C.V. d/b/a Mexicana Airlines, is one of the leading
airlines servicing
Respondent, Domain Administration Limited c/o David Halstead, registered the <frecuenta.com> domain name on October 19, 2002, which resolves to a website displaying third-party hyperlinks for services, some of which are in direct competition with Complainant. Respondent also has variation of Complainant’s marks and trademarks displayed on the website resolving from the disputed domain name.
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 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. 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant’s registration of its FRECUENTA mark with the CIPO predates Respondent’s registration of the <frecuenta.com> domain name. In Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), the panel found that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction. Likewise, the Panel finds that Complainant’s registration with the CIPO sufficiently establishes Complainant’s rights in its FRECUENTA mark pursuant to Policy ¶ 4(a)(i). See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require the complainant to demonstrate ‘exclusive rights,’ but only that the complainant has a bona fide basis for making the complaint in the first place).
Respondent’s <frecuenta.com> domain name fully incorporates Complainant’s FRECUENTA mark with only the addition of a generic top-level domain (“gTLD”) “.com.” It is well understood that gTLDs are irrelevant when evaluating if a domain name is identical or confusingly similar to a complainant’s mark. Therefore, the Panel finds that Respondent’s <frecuenta.com> domain name is identical to Complainant’s FRECUENTA mark under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant initially has the burden to demonstrate that Respondent lacks rights and legitimate interests in the disputed domain name by establishing a prima facie case, thus shifting the burden to Respondent. Respondent’s failure to respond furthers this presumption that Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has established a prima facie case that Respondent lacks rights and legitimate interests in the <frecuenta.com> domain name, and chooses to evaluate all of the evidence under Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Complainant alleges and the Panel infers that Respondent is
receiving click-through fees from the hyperlinks displayed on the website
resolving from the <frecuenta.com>
domain name, some of which are competing with services offered by Complainant. The Panel finds that such use does not
constitute a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use of the domain name under Policy ¶
4(c)(iii). See eBay Inc. v. Hong,
D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the
complainant’s entire mark in domain names makes it difficult to infer a
legitimate use); see also Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat.
Arb. Forum Sept. 30, 2003)
(“Respondent's demonstrated intent to divert Internet users seeking
Complainant's website to a website of Respondent and for Respondent's benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).”); see also TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002)
(finding that the respondent’s diversionary use of the complainant’s marks to
send Internet users to a website which displayed a series of links, some of
which linked to the complainant’s competitors, was not a bona fide
offering of goods or services).
Complainant contends that Respondent is not authorized nor otherwise licensed to use its FRECUENTA mark. Based on the uncontested record and the WHOIS contact information for Respondent of “Domain Administration Limited c/o David Halstead,” the Panel finds that Respondent is not commonly known by the <frecuenta.com> domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
The Panel finds that Policy ¶ 4(a)(ii)
has been met.
Respondent’s <frecuenta.com>
domain name is likely to create confusion as to Complainant’s affiliation and
association with the related website.
The Panel infers that Respondent is attempting to disrupt Complainant’s
business by its use and registration of a domain name that is identical to
Complainant’s FRECUENTA mark to offer links to services in competition with
Complainant. In Hewlett Packard Co. v. Full System, FA
94637 (Nat. Arb. Forum May 22, 2000), the panel found that the
respondent registered and used the domain name primarily for the purpose of
disrupting the business of the complainant by offering personal e-mail accounts
under the <openmail.com> domain name which was identical to the
complainant’s services under the OPENMAIL mark.
Similarly, the Panel finds that Respondent registered and uses the <frecuenta.com> domain name in bad
faith to disrupt Complainant’s business pursuant to Policy ¶ 4(b)(iii). See S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business); see
also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000)
(finding that the respondent has diverted business from the complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent registered and uses the disputed domain name to
attempt to commercially gain from Complainant’s goodwill and investment in the
FRECUENTA mark by attracting Internet users searching for Complainant to its
own website. The Panel
in
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <frecuenta.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 11, 2008
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