Kuwait Airways Corporation v. Mario
Noronha
Claim Number: FA0210000127713
PARTIES
Complainant
is Kuwait Airways Corporation, New
York, NY, USA (“Complainant”) represented by J. Gregory Lahr, of Condon
& Forsyth LLP. Respondent is Mario Noronha, Mangalore, INDIA
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <kuwaitairways.com>,
registered with Network Solutions.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on October 8, 2002; the Forum received a hard copy of the
Complaint on October 11, 2002.
On
October 10, 2002, Network Solutions confirmed by e-mail to the Forum that the
domain name <kuwaitairways.com>
is registered with Network Solutions and that Respondent is the current registrant
of the name. Network Solutions has
verified that Respondent is bound by the Network Solutions 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
October 18, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 7, 2002 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@kuwaitairways.com by e-mail.
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
November 25, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr.,
as 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 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 Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant’s submission makes the
following arguments:
1. Respondent’s <kuwaitairways.com>
domain name is identical to Complainant’s KUWAIT AIRWAYS trademark and
“Kuwait Airways” corporate identity.
2. Respondent does not have any rights or
legitimate interests in the <kuwaitairways.com> domain name.
3. Respondent registered and used the <kuwaitairways.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant’s submission to the Panel
indicates that Complainant operates under the KUWAIT AIRWAYS “corporate name
and trademark.”
Respondent registered the <kuwaitairways.com>
domain name on October 31, 2000. Complainant’s investigation into
Respondent’s use of the domain name indicates that the subject domain name
resolves to Complainant’s website, located at <kuwait-airways.com>.
Respondent is not authorized or licensed
to utilize Complainant’s “Kuwait Airways” moniker in any fashion or for any
purpose.
The Complaint contains e-mails that
discuss Respondent’s attempted sale of the domain name registration to
Complainant. Respondent makes suggestive comments such as “Make an offer,” and
more explicit demands such as:
Kuwait Airways can offer 10 business
class return tickets on their airline from [the] U.S.A. to my Client and take
full control of the domain name. Alternatively Kuwait Airways can pay US $ TEN
THOUSAND being the cost and the charges incurred.
DISCUSSION
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 the 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.
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 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 fails in establishing rights
in the KUWAIT AIRWAYS mark pursuant to Policy ¶ 4(a)(i).
Policy ¶ 4(a)(i) articulates an initial
burden on Complainant, specifically, a complainant must prove that “[the
respondent’s] domain name is identical or confusingly similar to a trademark or
service mark in which the complainant has rights” (emphasis added).
Although Complainant’s assertion that it holds a trademark reflecting the
“Kuwait Airways” corporate name is uncontested by Respondent, Complainant fails
to demonstrate with sufficient evidence its rights in the alleged mark.
Complainant neglected to include any evidence indicating a trademark
registration or application for the “Kuwait Airways” business moniker. Further,
Complainant did not assert common law rights in the “Kuwait Airways” mark, and
failed to submit any evidence suggesting extensive use or secondary source
identity. Under the UDRP, a complainant must fulfill its initial burden to
prove, by a preponderance of the credible, relevant and admissible evidence,
that the domain name is identical or confusingly similar to a mark in which it
has rights. See FRH Freies Rechenzerntrum v. Ingenieurburo FRH, FA
102945 (Nat. Arb. Forum Jan. 18, 2002) (determining that Complainant has not
proven by a preponderance of the relevant, admissible and credible evidence
that the domain name in question is identical to a trademark in which
Complainant has rights despite Complainant’s mark being the dominant feature of
Complainant’s trade name).
As stated, in initiating a proceeding
under the UDRP, Complainant bears the initial burden of presenting a sufficient
prima facie case showing rights in a mark. In the present dispute,
Complainant asserts rights in the KUWAIT AIRWAYS mark, yet fails to adequately
support its assertion with any evidence, statements or proof (e.g., business
letterhead, sales figures, advertising expenditures, date of origination,
number of consumers served). See Do the Hustle v. Tropic Web, D2000-0624
(WIPO August 21, 2000) (finding that paragraph 4(a) of the Policy sets out
three elements implying that Complainant has the burden of proof as to each of
the three elements); see also TotalFinaElf E&P USA, Inc. v. Farnes,
FA 117028 (Nat. Arb. Forum Sept. 16 2002) (finding that in order to bring a
claim under the Policy, Complainant must first establish a prima facie
case. Complainant’s initial burden is to provide proof of “valid, subsisting
rights in a mark that is similar or identical to the domain name in question”).
Additionally, establishing brand
significance and secondary source identification are paramount in illustrating
rights in a trade name. Complainant’s submission includes no evidence that
supports a finding that the consuming public has developed a sense of brand
identity with its “Kuwait Airways” corporate identity or corresponding
services. Although Complainant’s services may in fact be internationally
recognized, that is a finding that must be supported by evidence and not
self-serving assertions. UDRP precedent does not support merely protecting
Complainant’s corporate name, absent evidence of secondary source
identification or extensive use of the name in relation to specified services. See
Diversified Mortgage,
Inc. v. World Fin. Partners,
FA 118308 (Nat. Arb. Forum Oct. 30, 2002) (finding that the UDRP makes clear
that its “rules are intended only to protect trademarks, registered or common
law, and not mere trade names, due to the fact that trade names are not
universally protected as are trademarks”). Simply operating under a business
name does not, per se, constitute secondary source identification.
Complainant’s burden requires supporting evidence or information that indicates
consumers identify its business name as a source identifier.
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has not
been satisfied. Because satisfaction of each element listed under paragraph
4(a) is mandatory, it is not necessary to pursue analysis under Policy ¶¶
4(a)(ii) or (iii). See Creative Curb v. Edgetec Int’l Pty. Ltd., FA
116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must
prove all three elements under the Policy, Complainant’s failure to prove one
of the elements makes further inquiry into the remaining element unnecessary).
DECISION
Having failed to establish the elements
required under ICANN Policy, the Panel concludes that relief shall be hereby DENIED.
Accordingly, it is Ordered that the <kuwaitairways.com>
domain name REMAIN with Respondent.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 3, 2002
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