Continental Airlines Inc. v. Ted Chen
Claim Number: FA0809001226155
PARTIES
Complainant is Continental Airlines, Inc. (“Complainant”), represented by Michael
C. Henning, of Continental Airlines, Inc.,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <continentalexpress.com> (“the domain name at issue”), registered with Network Solutions, Inc. (“the Registrar”).
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.
Rodney C. Kyle as Panelist.
PROCEDURAL
HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on 24 September 2008; the Forum received a hard copy of the Complaint on 25 September 2008.
On 24 September 2008, the Registrar confirmed by e-mail to the Forum that the domain name at issue is registered with the Registrar and that Respondent is the current registrant of the domain name at issue. The Registrar has verified that Respondent is bound by the Registrar’s 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 26 September 2008, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of 16 October 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@continentalexpress.com by e-mail.
A timely Response was received and determined to be complete on 14 October 2008.
A timely Additional Submission, as a reply to the Response (the “Reply”), was received on 20 October 2008.
On 20 October 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Rodney C. Kyle as Panelist.
On 3 November 2008, the Panel asked the Forum to inform Complainant and Respondent of a three-day extension of the deadline for the Panel’s delivery of this decision. The Forum informed them of that extension.
RELIEF
SOUGHT
Complainant requests that the domain name at issue be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complaint makes three main sets of contentions.
FIRST MAIN SET
The first main set of Complaint contentions are by way of three points or sets of points: in accordance with Policy ¶ 4(a)(i),
(i) the domain name at issue was registered with the Registrar on 24 July 1997, the registrant of the domain name at issue is Respondent, and those aspects of that registration are evidenced by Complaint Exhibit 1, a WHOIS record of the domain name at issue;
(ii) since 1987, Complainant is the owner and user in commerce of CONTINENTAL EXPRESS as what has become a famous trademark in association with airline transportation services, evidenced by the trademark registration record that is Complaint Exhibit 2 and by the Complainant-sourced documents that are Complaint Exhibits 5 and 6, and, since 13 August 1996, is the owner of United States trademark registration 1,993,531 of CONTINENTAL EXPRESS in association with airline transportation services, evidenced by Complaint Exhibit 2; and
(iii) the domain name at issue is identical to that contended trademark.
SECOND MAIN SET
The second main set of Complaint contentions are that, in accordance with Policy ¶ 4(a)(ii), Respondent has no right or legitimate interest in respect of the domain name at issue. More particularly, the second main set of Complaint contentions are by four points or sets of points:
(i) Complainant has not granted any license, permission, or authorization to Respondent for the use of the contended trademark for any purpose;
(ii) contrary to Policy ¶ 4(c)(ii), there is no evidence of which Complainant is aware, whether the above-mentioned WHOIS record that is Complaint Exhibit 1 or any other evidence, showing that Respondent is commonly known by the domain name at issue;
(iii) contrary to Policy ¶¶ 4(c)(i) and (iii), Complainant has a website at <continental.com> (evidenced by the website extract that is Complaint Exhibit 8) for such things as selling Continental Express airline tickets and (as evidenced by the website extract that is Complaint Exhibit 7) the domain name at issue resolves to a domain parking website which provides various Internet links to travel-related products and services such as those of other airlines that compete with Complainant’s website; and
(iv) Respondent, through an alias or an agent, offered to sell the domain name at issue to Complainant’s Continental Express flights business partner for $7,500, and that offer is evidenced by Complaint Exhibit 9 which is a 29 August 2008 email to that partner.
THIRD MAIN SET
The third main set of Complaint contentions are that, in accordance with Policy ¶ 4(a)(iii), Respondent’s registration of the domain name at issue was in Policy ¶ 4(b) bad faith and Respondent is using the domain name at issue in Policy ¶ 4(b) bad faith. More particularly, the third main set of Complaint contentions are by four points or sets of points: Respondent
(i) chose the domain name at issue in order, contrary to Policy ¶ 4(b)(i), primarily to sell the domain name at issue for valuable consideration in excess of his out-of-pocket costs directly related to the domain name at issue, as particularized in point “iv” of the immediately preceding paragraph of this decision;
(ii) chose the domain name at issue in order, contrary to Policy ¶ 4(b)(ii), to prevent Complainant from reflecting the contended trademark in a corresponding domain name, in that Respondent has been subject to at least four other proceedings under the Policy— Société AIR FRANCE v. Ted Chen, D2007-0528 (WIPO May 25, 2007), American Century Proprietary Holdings, Inc v. Ted Chen, FA 0934415 (Nat. Arb. Forum April 26, 2007), General Electric Company v. Ted Chen, D2007-0399 (WIPO June 15, 2007), and Zurich American Insurance Company v. Ted Chen, D2007-0441 (WIPO May 28, 2007) — in which those four complainants have obtained orders for the transfer of numerous domain names;
(iii) chose the domain name at issue in order, contrary to Policy ¶ 4(b)(iii), primarily to disrupt the business of Complainant, as particularized in point “iii” of the immediately preceding paragraph of this decision, by creating an unwanted association with the services offered for sale at the competing websites and by presenting services in a manner that is not commensurate with the presentation expected from Complainant in association with the contended trademark, and therefore being likely to tarnish and dilute the contended trademark; and
(iv) used the domain name at issue in order, contrary to Policy ¶ 4(b)(iv), to intentionally attempt to attract Internet users to Respondent’s website for commercial gain, as particularized in point “iii” of the immediately preceding paragraph of this decision, by creating confusion with the contended trademark.
B. Respondent
The Response makes four main sets of contentions.
FIRST MAIN SET
The first main set of Response contentions does not dispute any of the first main set of Complaint contentions.
SECOND MAIN SET
The second main set of Response contentions disputes the Complaint contention that, in accordance with Policy ¶ 4(a)(ii), Respondent has no right or legitimate interest in respect of the domain name at issue. More particularly, the second main set of Response contentions are by two points or sets of points: Respondent has a right or legitimate interest in respect of the domain name at issue because
(i)
a corporation called
Continental Express Holdings Corp., of
(ii) Respondent purchased the domain name at issue from namejet.com by auction on 31 August 2008 for future development and use, such purchase being evidenced by the screenshot that is Response Exhibit 3, and namejet.com is an authorized seller that represented the Registrar in that auction of the domain name at issue.
THIRD MAIN SET
The third main set of Response contentions disputes the Complaint contention that, in accordance with Policy ¶ 4(a)(iii), Respondent’s registration of the domain name at issue was in Policy ¶ 4(b) bad faith and Respondent is using the domain name at issue in Policy ¶ 4(b) bad faith. More particularly, the third main set of Response contentions are by six points or sets of points: either or both of Respondent’s registration of the domain name at issue was not in Policy ¶ 4(b) bad faith, and Respondent is not using the domain name at issue in Policy ¶ 4(b) bad faith, because
(i) a domain name purchased by auction is necessarily purchased without Policy ¶ 4(b) bad faith;
(ii) even if point “(i)” of this paragraph is not true, points “(i)” and “(ii)” of the immediately preceding paragraph of this decision result in the domain name at issue having been purchased without Policy ¶ 4(b) bad faith;
(iii) Respondent had no prior knowledge of Complainant’s legal interests relating to the domain name at issue, in view of prior ownership of the domain name at issue and prior use of the domain name at issue to resolve to a website, which ownership and use were undisputed by Complainant and are particularized in point “i” of the immediately preceding paragraph of this decision;
(iv) Complainant was not a previous owner of the domain name at issue and Respondent did not register the domain name at issue in Policy ¶ 4(b) bad faith, as evidenced by the email from namejet.com which is Response Exhibit 5;
(v) Respondent did not email the contended offer to sell the domain name at issue to Complainant’s Continental Express flights business partner since Respondent did not own the domain name at issue prior to 30 August 2008 and so there is no way that Respondent would send such an email, as evidenced by Response Exhibit 5; and
(vi) Respondent did not use the domain name at issue to try to profit from Complainant’s mark because
(a) all of Respondent’s purchased domain names are pointed to parking providers who show ads and, especially as a result of Respondent having no prior knowledge of Complainant’s legal interests relating to the domain name at issue, Respondent initially had no cause to even attempt to control what ads were shown and instead Respondent initially deferred to Google as to what ads were shown and
(b) as evidenced by an email that is Response Exhibit 4, Respondent subsequently asked the provider to disable the landing page for the domain name at issue until Respondent can develop a website resolved by the domain name at issue.
FOURTH MAIN SET
The fourth main set of Response contentions is that, by the Complaint, Complainant has tried to reverse hijack the domain name at issue.
C. Additional Submissions
Other than repeating or attempting to amend aspects of the Complaint, the Reply basically makes four main sets of contentions:
(i) the first main set of Response contentions does not dispute any of the first main set of Complaint contentions and Respondent therefore admits the first main set of Complaint contentions;
(ii) even if the particulars of the second main set of Response contentions are true, they do not result in Respondent having any Policy ¶ 4(a)(ii) right, or Policy ¶ 4(a)(ii) legitimate interest, in respect of the domain name at issue;
(iii) the third main set of Response contentions does not dispute the Policy ¶ 4(b)(ii) Complaint contention that Respondent has been subject to at least four other proceedings under the Policy— Société AIR FRANCE v. Ted Chen, D2007-0528 (WIPO May 25, 2007), American Century Proprietary Holdings, Inc v. Ted Chen, FA 0934415 (Nat. Arb. Forum April 26, 2007), General Electric Company v. Ted Chen, D2007-0399 (WIPO June 15, 2007), and Zurich American Insurance Company v. Ted Chen, D2007-0441 (WIPO May 28, 2007) — in which those four complainants have obtained orders for the transfer of numerous domain names, so the entire Policy ¶ 4(b)(ii) Complaint contention is proven; and
(iv) particulars “(i)”, “(ii)”, “(iii)”, “(iv)” and “(vi)” of the third main set of Response contentions are not true
(a) in general, as to “(i)” and “(ii)” of those contentions,
(b) regarding Respondent lack of prior knowledge of Complainant’s legal
interests relating to the domain name at issue, as to “(iii)” of those contentions,
(c) regarding Respondent’s not registering the domain name at issue in Policy ¶ 4(b) bad faith, as to “(iv)” of those contentions, and
(d) regarding who controls what if any ads are shown on the parking page, as to “(vi)” of those contentions,
and so they do not result in the domain name at issue having not been registered in Policy ¶ 4(a)(iii) bad faith or in the domain name at issue not being used in Policy ¶ 4(a)(iii) bad faith.
FINDINGS
The Panel finds that
(i) the domain name at issue was registered with the Registrar on 24 July 1997 and the registrant of the domain name at issue is Respondent, Complainant is the owner and user in commerce since 1987 of CONTINENTAL EXPRESS as what has become a famous trademark in association with airline transportation services and since 13 August 1996 is the registrant of United States trademark registration 1,993,531 thereof, and the domain name at issue is identical to that trademark;
(ii) Respondent has no right or legitimate interest in respect of the domain name at issue; and
(iii) the domain name at issue has been registered and is being used in bad faith.
DISCUSSION
The Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) ¶ 15(a) instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Policy ¶ 4(a) requires that a 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 is registered to the respondent and 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.
Policy ¶ 4(a)(i) is proven: there is a domain name registered to Respondent and it is identical to a trademark in which Complainant has rights.
More particularly, the Panel agrees with the first main set
of Reply contentions, which is that the first main set of Response contentions
does not dispute any of the first main set of Complaint contentions and
Respondent therefore admits the first main set of Complaint contentions. As a
result, the Panel finds that the domain name at issue was registered with the
Registrar on 24 July 1997 and the registrant of the domain name at issue is
Respondent, Complainant is the owner and user in commerce since 1987 of
CONTINENTAL EXPRESS as what has become a famous trademark in association with
airline transportation services and since 13 August 1996 is the registrant of
United States trademark registration 1,993,531 thereof, and the domain name at
issue is identical to that trademark. As for the domain name at issue being
identical to that trademark, see
Policy 4(a)(ii) is proven: Respondent has no right or legitimate interest in respect of the domain name at issue.
More particularly, the Panel agrees with the second main set of Reply contentions, which is that even if the particulars of the second main set of Response contentions are true, they do not result in Respondent having any Policy ¶ 4(a)(ii) right, or any Policy ¶ 4(a)(ii) legitimate interest, in respect of the domain name at issue. Unlike the Complaint, the Response does not plead, let alone produce any evidence regarding, any right or any legitimate interest, provided for by the Policy ¶ 4(c) preamble or body. Policy ¶ 4(c) is basically directed from a domain name registrar to a domain name registrant and prospective mandatory administrative proceeding respondent, and includes that:
Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of [Policy ¶] 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Still more particularly,
(i) when, as in this case, “the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue” (Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) and to similar effect see e.g. Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) and Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002));
(ii) Complainant’s prima facie showing is by the second main set of Complaint contentions and associated Complaint exhibits since, even if particulars “(iv)” of that set of contentions are not considered in that regard, a prima facie showing is made by the other three sets of particulars in the second main set of Complaint contentions and by the Complaint exhibits associated with two of those other three sets of particulars; and
(iii) in turn, with the burden of production having shifted to Respondent, and both in view of the Response and in analogy with Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008), Policy ¶ 4(a)(ii) is satisfied because, even if the particulars of the second main set of Response contentions are true, they do not result in Respondent having any Policy ¶ 4(a)(ii) right, or any Policy ¶ 4(a)(ii) legitimate interest, in respect of the domain name at issue— cf. the repeatedly rejected contention that domain name registrations, per se, result in Policy ¶ 4(a)(ii) rights or Policy ¶ 4(a)(ii) legitimate interests e.g. in Thrifty, Inc. & Thrifty Car Sales, Inc. v. FrugalAutoSales.com, Inc., FA 190516 (Nat. Arb. Forum Oct. 13, 2003).
Policy 4(a)(iii) is proven: the domain name at issue has been registered and is being used in bad faith.
By way of background to that finding, Policy ¶ 4(b) is pertinent, especially for each of the examples in the main body of that paragraph. That paragraph is basically directed from a domain name registrar to a domain name registrant and prospective mandatory administrative proceeding respondent, and includes that:
For the purposes of [Policy ¶] 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
On the one hand, Policy ¶¶ 4(b)(i),
(ii), and (iii) basically define respective types of bad-faith registration and
provide that if any one of such types of registration has been ascertained by a
panel then bad-faith use is in turn evidenced through applying the respective
one of those three provisions. On the other hand, Policy ¶ 4(b)(iv) basically defines a type of bad-faith use and provides
that if such type of use is ascertained by a panel then bad-faith registration
is in turn evidenced through applying that provision.
More particularly, the third main set of Complaint contentions consists of four respective particulars (listed above in this decision as “(i)”, “(ii)”, “(iii)”, and “(iv)”) that respectively pertain to Policy ¶¶ 4(b)(i), (ii), (iii) and (iv). (In turn, to greater or lesser extents the Response disputes those contended particulars, to greater or lesser extents the Reply disputes the corresponding particulars contended in the Response, and to greater or lesser extents the Panel agrees with aspects of respective ones of those submissions.) Ultimately, the Panel finds that one of those four Policy ¶ 4(b) provisions is not proven but that the other three of them are proven.
Before turning to Policy ¶¶ 4(b)(i), (ii), (iii) and (iv), there are the first two points of the third main set of Response contentions to address: first, that a domain name purchased by auction is necessarily purchased without Policy ¶ 4(b) bad faith and second, that, even if that first point is not true, the Policy ¶ 4(a)(ii) right or legitimate interest contended by the second main set of Response contentions results in the domain name at issue having been purchased without Policy ¶ 4(b) bad faith. The Panel disagrees with the first point; it is as unavailing to Respondent, and as unsupported, as the above-mentioned contention that domain name registrations, per se, result in Policy ¶ 4(a)(ii) rights or Policy ¶ 4(a)(ii) legitimate interests. The Panel also disagrees with the second point, because even if the underlying facts contended by the second main set of Response contentions are true, the Policy ¶ 4(a)(ii) right or legitimate interest contended by the second main set of Response contentions are contended and not actual.
As for Policy ¶ 4(b)(i), it is not proven. Despite Respondent contentions, Complainant’s failure to prove Policy ¶ 4(b)(i) occurs not because it has been proven that there is no way that Respondent or an agent of Respondent, anticipating that Respondent would succeed in the namejet.com auction, would send the Complaint Exhibit 9 email on 29 August 2008 to Complainant’s Continental Express flights business partner, offering to sell the domain name at issue for $7,500, apparently a day or two before the namejet.com screenshot that is Response Exhibit 3 indicates that Respondent became the owner of the domain name at issue. Also, despite Respondent contentions, Complainant’s failure to prove ¶ 4(b)(i) occurs not because of anything that is evidenced by the email from namejet.com that is Response Exhibit 5. Rather, ¶ 4(b)(i) is not proven for lack of proving that the sender of the 29 August 2008 email was Respondent or an agent of Respondent; the contention that the email was sent by Respondent through an alias or an agent is apparently unsupported by one or more of any admission, notice, perception, or inference that is available to or required of the Panel.
As for Policy ¶ 4(b)(ii), it is proven. The Panel agrees with some but not all
of the third main set of Reply contentions. On one hand, the Panel agrees that
the third main set of Response contentions does not dispute the Policy ¶ 4(b)(ii) Complaint contention that Respondent has been subject
to at least four other proceedings under the Policy— Société AIR FRANCE v. Ted Chen, D2007-0528 (WIPO May 25, 2007), American
Century Proprietary Holdings, Inc v. Ted Chen, FA 0934415 (Nat. Arb. Forum
April 26, 2007), General Electric Company v. Ted Chen, D2007-0399 (WIPO June 15, 2007), and Zurich American Insurance Company v. Ted
Chen, D2007-0441 (WIPO May 28, 2007) — in which those four complainants
have obtained orders for the transfer of numerous domain names; to that extent,
Respondent admits as much. However, on the other hand, Respondent does not
thereby admit the remainder of the Policy ¶ 4(b)(ii)
Complaint contention that Respondent chose the domain name at issue in order to
prevent Complainant from reflecting the contended trademark in a corresponding
domain name; likewise, neither judicial notice nor judicial perception are
apparently available to or required of the Panel, regarding the remainder of
the Policy ¶ 4(b)(ii) Complaint contention. That said, though, the Panel infers
that the bad-faith registration intent required by Policy ¶ 4(b)(ii) is proven;
cf. Westcoast Contempo Fashions
Ltd. v.
As for Policy ¶ 4(b)(iii), it is proven. The Panel completely agrees with the
third point of the third main set of Complaint contentions and completely
disagrees with the third and fourth points of the third main set of Response
contentions: Complainant has a website at <continental.com> (evidenced by
the website extract that is Complaint Exhibit 8) for such things as selling
Continental Express airline tickets and (as evidenced by the website extract
that is Complaint Exhibit 7), the domain name at issue resolves to a domain
parking website which provides various Internet links to travel-related products
and services such as those of other airlines that compete with Complainant’s
website, and Respondent chose the domain name at issue primarily to disrupt the
business of Complainant by creating an unwanted association with the services
offered for sale at the competing websites and by presenting services in a
manner that is not commensurate with the presentation expected from Complainant
in association with Complainant’s trademark, and therefore being likely to
tarnish and dilute Complainant’s trademark; cf.
Tesco Pers. Fin. Ltd. v. Domain Mgmt.
Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) and David Hall Rare Coins v.
As for Policy ¶ 4(b)(iv), it is proven. The Panel completely agrees with the
fourth point of the third main set of Complaint contentions and completely
disagrees with the sixth point of the third main set of Response contentions:
there are the Complainant website and the respondent website each mentioned in
the immediately preceding paragraph of these reasons and Respondent used the
domain name at issue (which is identical to, and the use of which therefore
created confusion with, Complainant’s trademark) in order to intentionally
attempt to attract Internet users to Respondent’s website for commercial gain.
The sixth point of the third main set of Response contentions is largely that
Respondent is not responsible for the website content that resolves through the
domain name at issue; however, that contention does not avail Respondent
because, as found in decisions such as XM
Satellite Radio Inc. v. Kennedy, FA 796199 (Nat. Arb. Forum
Nov. 7, 2006) and St. Farm Mutual Auto. Insr.
Reverse Domain Name Hijacking
The findings set out above, that
Policy ¶¶ 4(a)(i), (ii), and (iii) have been proven,
preclude a finding of reverse domain
name hijacking.
DECISION
Having found all three elements required for the Complainant-requested relief to be granted under the Policy, the Panel concludes that the Complainant-requested relief shall be GRANTED.
Accordingly, it is Ordered that the <continentalexpress.com> domain name be TRANSFERRED from Respondent to Complainant.
Rodney
C. Kyle, B.Sc., LL.B., C.Arb.; Panelist
Dated: 6 November 2008
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