Delta Corporate Identity, Inc. and Delta
Air Lines, Inc. v. 1-800 Communications, Inc.
Claim Number: FA0211000132450
PARTIES
Complainant
is Delta Corporate Identity, Inc. and Delta Air Lines, Inc., Atlanta, GA (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry, Digital Brands Practice. Respondent is 1-800 Communications, Inc., Hicksville, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwdeltaairline.com>,
registered with Dotster, Inc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on November 11, 2002; the Forum received a hard copy of the
Complaint on November 12, 2002.
On
November 13, 2002, Dotster, Inc. confirmed by e-mail to the Forum that the
domain name <wwwdeltaairline.com>
is registered with Dotster, Inc. and that Respondent is the current registrant
of the name. Dotster, Inc. has verified
that Respondent is bound by the Dotster, 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
November 14, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 4, 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@wwwdeltaairline.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
December 19, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed the Honorable Charles K.
McCotter, Jr. (Ret.) 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
The
<wwwdeltaairline.com>
domain name is confusingly similar to Complainant's DELTA mark.
Respondent
has no rights or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name
in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
FINDINGS
Complainant uses its DELTA mark
throughout the world to represent its airline services. Complainant has registered the mark with the
United States Patent and Trademark Office.
Complainant has also registered the DELTA mark worldwide. Complainant has registered the DELTA AIR
LINES mark in the United States and other countries.
Complainant serves 205 United States
cities in 45 States, as well as 44 cities in 28 foreign countries. Complainant’s annual revenues are nearly $15
billion and its advertising expenditures are many millions of dollars. Complainant’s DELTA mark is known world-
wide and Complainant has invested millions of dollars in its development. Complainant operates a website at
<delta.com> and at <deltavacations.com>.
Respondent registered the disputed domain
name <wwwdeltaairline.com> on April 11, 2000. Complainant is using the disputed domain
name to redirect Internet users to <hoteldiscount.com> in order to
advertise its competing travel services.
Respondent does not have permission or a license from Complainant to use
the DELTA mark.
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.
Identical and/or Confusingly Similar
Complainant has established that it
has rights in the DELTA and DELTA AIR LINES marks through registration with the
United States Patent and Trademark Office and continuous worldwide use.
Respondent’s <wwwdeltaairline.com>
domain name is confusingly similar to Complainant’s DELTA and DELTA AIR LINES
marks because the addition of “www” does not add any distinct features capable
of overcoming a ¶ 4(a)(i) confusingly similar analysis. The addition of the “www” before DELTA in
the domain name takes advantage of a common typing error by Internet users when
typing domain names into the URL.
Therefore, the addition of “www” does not prevent Internet user
confusion, but actually heightens disorder because Internet users may not be
aware that they failed to type the period between Complainant’s mark and the
“www” designation. See Bank of Am. Corp. v. InterMos, FA 95092
(Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name
<wwwbankofamerica.com> is confusingly similar to Complainant’s registered
trademark BANK OF AMERICA because it “takes advantage of a typing error
(eliminating the period between the www and the domain name) that users
commonly make when searching on the Internet”).
Furthermore, the addition of the
descriptive term “airline” to the DELTA mark does not add any distinct features
because it describes Complainant’s services.
See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business); see
also Marriott Int’l v. Café au
lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s
domain name <marriott-hotel.com> is confusingly similar to Complainant’s
MARRIOTT mark).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has failed to respond;
therefore, it is assumed that Respondent lacks rights and legitimate interests
in the disputed domain name. When
Complainant asserts a prima facie case against Respondent, the burden of
proof shifts to Respondent to show that it has rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once Complainant asserts that Respondent has no rights or legitimate
interests in respect of the domain, the burden shifts to Respondent to provide
credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a Response, Respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name).
Furthermore, because Respondent has not
submitted a Response, it is appropriate for the Panel to accept all reasonable
allegations and inferences in the Complaint as true. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (failure to respond allows all reasonable inferences of fact in
the allegations of Complainant to be deemed true); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw
adverse inferences from Respondent’s failure to reply to the Complaint).
Respondent is using the disputed domain
name in order to divert Internet users to a website that competes with
Complainant’s travel services. This
type of use is not considered to be a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See
Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum
Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to
confuse and divert Internet traffic is not a legitimate use of the domain
name); see also N. Coast Med.,
Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no
bona fide use where Respondent used the domain name to divert Internet users to
its competing website).
Based on the fame of Complainant’s DELTA
mark it would be difficult for Respondent to prove that it is commonly known as
WWWDELTAAIRLINE or <wwwdeltaairline.com>. Respondent has not come forward with any
evidence to establish that is commonly known by the disputed domain name,
therefore the Panel finds that Respondent has no rights or legitimate interests
in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000)
(finding no rights or legitimate interests where one “would be hard pressed to
find a person who may show a right or legitimate interest” in a domain name
containing Complainant's distinct and famous NIKE trademark).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Respondent is using a domain name that is
confusingly similar to Complainant’s mark in order to divert Internet users to
a website that competes with Complainant’s travel services. This type of behavior is considered to be
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii)
because it is a disruption of Complainant’s business. See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business); see
also Mission Kwa Sizabantu v. Rost,
D2000-0279 (WIPO June 7,2000) (defining “competitor” as "…one who acts in
opposition to another and the context does not imply or demand any restricted
meaning such as commercial or business competitor”).
Furthermore, it can be inferred that
Respondent is profiting from the Internet traffic it diverts to
<hoteldiscount.com>. Therefore,
Respondent’s use of a confusingly similar domain name is creating a likelihood
of confusion for Respondent’s commercial gain which is evidence of bad faith use
pursuant to Policy ¶ 4(b)(iv). See
Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if
Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy 4(b)(iv)); see also G.D. Searle & Co. v.
Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that
Respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to
attract Internet users to its commercial website).
Furthermore, based on the fame of
Complainant’s mark it can be inferred that Respondent had knowledge of
Complainant’s rights when it registered the disputed domain name. Registration of a domain name, despite
actual or constructive knowledge of Complainant’s rights, is evidence of bad
faith registration pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum
Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when
Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively”); see also Entrepreneur Media, Inc. v. Smith,
279
F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an
alleged infringer chooses a mark he knows to be similar to another, one can
infer an intent to confuse").
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 the requested relief
shall be hereby GRANTED.
Accordingly, it is Ordered that the
domain name <wwwdeltaairline.com>
be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter,
(Ret.), Panelist
Dated: December 27, 2002
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