Airlines Reporting Corporation v. Worldwide Insurance Specialists, Inc.
Claim Number: FA0910001290712
Complainant is Airlines Reporting Corporation (“Complainant”), represented by Melise
R. Blakeslee, of Sequel Technology & IP Law, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <arcbonds.com> and <airlinereportingcorporationbonds.com>, registered with Godaddy.com, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 21, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 22, 2009.
On October 22, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <arcbonds.com> and <airlinereportingcorporationbonds.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 26, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 16, 2009 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@arcbonds.com and postmaster@airlinereportingcorporationbonds.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 20, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a technology
solutions company whose business involves requiring its affiliates to purchase
bonds that meet Complainant’s specific requirements.
More than 170 airlines and
railroads from around the world currently distribute and settle their products
through Complainant’s system, with more than $80 billion worth of travel
expenditures processed annually.
Complainant advertises its
services under the ARC service mark, registered with the United States Patent
and Trademark Office (“USPTO”) on December 20, 1988 (Reg. No. 1,517,504), and
under the AIRLINE REPORTING CORPORATION service mark, registered with the USPTO on January 3, 1989 (Reg. No.
1,519,226).
Complainant has used the ARC
and AIRLINE REPORTING CORPORATION service marks continuously in commerce
since at least 1984.
Respondent is not commonly known by the disputed domain names, and Respondent has never been the owner or licensee of either the ARC or the AIRLINE REPORTING CORPORATION marks.
Respondent registered the domain names <airlinereportingcorporationbonds.com> and <arcbonds.com> on August 31, 2005.
The disputed domain names resolve to a website that advertises and sells bonds that are unrelated to Complainant’s services.
Respondent’s <arcbonds.com> domain name is confusingly similar to Complainant’s ARC mark.
Respondent’s <airlinereportingcorporationbonds.com> domain name is confusingly similar to Complainant’s AIRLINE REPORTING CORPORATION mark.
Respondent does not have any rights to or legitimate interests in the <arcbonds.com> and <airlinereportingcorporationbonds.com> domain names.
Respondent gains commercially from the sale of services on the website that resolves from the disputed domain names, and Respondent is using the disputed domain names for commercial gain by creating a likelihood of confusion with Complainant’s mark.
Respondent registered and uses the <airlinereportingcorporationbonds.com> and <arcbonds.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to service marks in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain names; and
(3) the domain names were registered and are being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the AIRLINE REPORTING
CORPORATION and ARC service marks for purposes of Policy ¶ 4(a)(i) through its registrations of the marks with the
USPTO. See Trip Network
Inc. v. Alviera, FA 914943 (Nat. Arb. Forum
Complainant contends that Respondent’s <arcbonds.com> domain name is confusingly similar to its ARC service mark. The <arcbonds.com> domain name differs from Complainant’s mark only in that the descriptive term “bonds” has been added to the mark, as has the generic top-level domain (gTLD) “.com”. The addition of a descriptive term does not suffice to distinguish a domain name from a mark for purposes of Policy ¶ 4(a)(i). See Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that a respondent’s domain name <marriott-hotel.com> was confusingly similar to a complainant’s MARRIOTT mark).
Moreover, under Policy ¶ 4(a)(i), the addition of a gTLD is irrelevant when considering whether a domain name is confusingly similar to a competing mark. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003):
It
has been established that the addition of a generic top-level domain is
irrelevant when considering whether a domain name is identical or confusingly
similar under the Policy.
Therefore, the Panel finds that the <arcbonds.com> domain name is not sufficiently distinguished from Complainant’s ARC mark, and, as a result, this domain name is confusingly similar to Complainant’s ARC mark pursuant to Policy ¶ 4(a)(i).
Complainant also submits that
Respondent’s <airlinereportingcorporationbonds.com>
domain name is confusingly similar to its AIRLINE
REPORTING CORPORATION mark. The <airlinereportingcorporationbonds.com>
domain name differs from Complainant’s
mark only in that the descriptive term “bonds” has been added to the mark, the
spaces have been removed from the mark, and the generic top-level domain (gTLD)
“.com” has been added in forming the domain name. Adding a descriptive term and removing the
spaces from a mark fails to distinguish a domain name from the mark. See Vance Int’l, Inc. v. Abend, FA 970871
(Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to a
complainant’s VANCE mark, which described that complainant’s business, a
respondent “very significantly increased” the likelihood of confusion with that
complainant’s mark); see also Bama Rags, Inc. v.
Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that
<davemathewsband.com> is a common misspelling of the DAVE MATTHEWS BAND mark
and that the domain name is therefore confusingly similar to the mark). As we have already
noted, under Policy ¶ 4(a)(i), the addition of a gTLD
is irrelevant when considering whether a domain name is confusingly similar to
a competing mark. See Nev.
State Bank, supra. Therefore, the <airlinereportingcorporationbonds.com> domain name is not sufficiently distinguished from
Complainant’s AIRLINE REPORTING CORPORATION
mark by the indicated alterations to the mark, and, as a consequence, Respondent’s
<airlinereportingcorporationbonds.com>
domain name is confusingly similar to
Complainant’s AIRLINE REPORTING CORPORATION
mark under Policy ¶ 4(a)(i).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied as to both domain names.
Complainant contends that Respondent lacks rights to and legitimate interests in the disputed domain names. Under Policy ¶ 4(a)(ii), if a complainant makes out a prima facie case against a respondent, that respondent then has the burden of showing evidence that it does have rights to or legitimate interests in disputed domain names. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right to or legitimate interest in a contested domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists);
Complainant has made out a prima facie case under Policy ¶ 4(a)(ii), while Respondent, for its part, has failed to submit a Response to the proceedings. We are therefore free to presume that Respondent has no rights to or interests in the disputed domain names that are cognizable under the Policy. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004):
Complainant’s
submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel
accepts as true all reasonable allegations . . . unless clearly contradicted by
the evidence.
We nonetheless elect to examine the record before us to determine, by reference to the considerations set out in Policy ¶ 4(c) whether there is in it any basis for concluding that Respondent has such rights or interests.
We begin by observing that Complainant contends, and
Respondent does not deny, that Respondent is not commonly known by either of the
disputed domain names,
and that Respondent has never been the owner or licensee of either of the ARC or
AIRLINE REPORTING CORPORATION marks. Moreover,
the pertinent WHOIS records for the disputed domain names list Respondent only as
“Worldwide Insurance Specialists, Inc.” On this state of the record, we conclude that
Respondent is not commonly known by the disputed
domain names pursuant to Policy ¶ 4(c)(ii). See, for example, 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.”
We also note that there is no dispute as to Complainant’s allegation to the effect that Respondent is using the disputed domain names to host a website that features links to third-party websites selling services unrelated to Complainant’s services. Respondent’s use of the disputed domain names as alleged is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain names under Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that a respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that a respondent’s commercial use of a disputed domain name which was confusingly similar to a complainant’s mark suggests that that respondent lacked rights to or legitimate interests in the domain name).
The Panel thus finds that the requirements of Policy ¶ 4(a)(ii) have been satisfied as to both of the disputed domain names.
Complainant contends that Respondent gains commercially from the sale of services on the website that resolves from the disputed domain names and that Respondent is using the disputed domain names for commercial gain by creating a likelihood of confusion with Complainant’s mark. From a review of the uncontested evidence presented, we accept these contentions. Respondent’s use of the domains as alleged is evidence of Respondent’s registration and use of the disputed domain names in bad faith. See Am. Online Inc. v. Shenzhen JZT Computer Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that <gameicq.com> and <gameicq.net> are “obviously connected with services provided with the world-wide business of ICQ” and that the use of the domain names by someone with no connection to the product suggests opportunistic bad faith); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002): "While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion."
In addition, it appears that Respondent registered both the <arcbonds.com> and <airlinereportingcorporationbonds.com> domain names with at
least constructive knowledge of Complainant’s rights in the ARC and AIRLINE
REPORTING CORPORATION service marks by virtue of Complainant’s prior
registrations of those marks with the United States Patent and Trademark
Office. Registration of confusingly
similar domain names despite such constructive knowledge is, without more,
evidence of bad faith registration and use of a domain name pursuant to Policy
¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct.
24, 2002); see also Orange Glo
Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is hereby Ordered that the disputed domain names <arcbonds.com> and <airlinereportingcorporationbonds.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 7, 2009
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