Metropolitan Washington Airports Authority v. vikas Rao
Claim Number: FA1009001344360
PARTIES
Complainant is Metropolitan Washington Airports Authority (“Complainant”), represented by Alain J. Lapter, of Bean, Kinney & Korman, P.C., Virginia, USA. Respondent is vikas Rao (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <washingtonflyerdulles.com>, registered with GoDaddy.com, 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.
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 1, 2010.
On September 2, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <washingtonflyerdulles.com> domain name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name. 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 September 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 23, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@washingtonflyerdulles.com. Also on September 3, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on September 23, 2010.
On October 12, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Alan L. Limbury as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant offers taxi and other ground transportation services to and from the DC-area airports, including Dulles Airport. It has used the WASHINGTON FLYER trademark since the early 1980s and registered that mark with the United States Patent and Trademark Office, No. 1,357,214, on August 27, 1985. The mark appears prominently on numerous taxis and is otherwise heavily promoted. Millions of travelers pass through Dulles Airport annually.
The domain name was registered on April 15, 2009. It resolves to a commercial website that offers taxi and other ground transportation services to and from the DC-area airports, including Dulles Airport.
Complainant says the domain name is identical or confusingly similar to its WASHINGTON FLYER trademark and that Respondent has no rights or legitimate interests with respect to the domain name, which was registered and is being used in bad faith.
Complainant says Respondent has received no authorization or licence from Complainant to use its WASHINGTON FLYER mark. Respondent is not commonly known by the domain name since the WHOIS information lists the registrant as “Vikas Rao.” The domain name is being used to divert Internet users away from Complainant’s website to a competing commercial website. This is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Such appropriation of Complainant’s mark places Respondent in the position of a competitor and disrupts Complainant’s business by diverting Internet users seeking Complainant to Respondent’s competing website. Respondent incorporated Complainant’s mark into the domain name intentionally to attract Internet users seeking Complainant to Respondent’s website by creating a likelihood of confusion between Complainant and Respondent.
Complainant cites two instances of actual customer confusion, to the point of having been misled into believing they were dealing with Complainant, that have been drawn to its attention by the customers concerned.
B. Respondent
Respondent says Complainant maintains its presence on the Internet through its website located at <www.washfly.com>, whereas the domain name is completely different with reference both to its name and web hosting presentation. The web hosting is neither identical nor confusingly similar to Complainant’s mark. And customers can have fairly good judgment in the selection of services for their convenience.
Respondent claims rights and legitimate interests in the domain name because it reflects the registered name of the company associated with the domain name. Respondent says the domain name is connected with the operation of an honest and fair transportation business that engages in healthy competition.
He says the domain name was not registered or used in bad faith. It was registered and the resolving website was created in good faith and with the intention to have honest, fair, and healthy competition in the transportation business.
Respondent says he is not representing Washington Flyer Dulles. He is a web developer with nothing to do with the business of transportation. He took the job from the company to register the domain name and develop and maintain the website.
FINDINGS
Complainant has established all the elements necessary to entitle it to relief.
DISCUSSION
The Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) ¶ 15(a) 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.”
Policy ¶ 4(a) 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 the Respondent 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.
The issue to be determined under this heading is not whether the domain name is identical or confusingly similar to Complainant’s website at <www.washfly.com>, nor whether the website presentation of the domain name is identical or similar to that of Complainant. Rather, it is whether the domain name is identical or confusingly similar to a trademark in which Complainant has rights.
Complainant clearly has rights in the registered trademark WASHINGTON FLYER.
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone: Wal-Mart Stores, Inc. v. Traffic Yoon, D2006-0812 (WIPO Sept. 20, 2006). The top level domains “.com”, “.net” and “org” are to be disregarded: See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007). Likewise the content of the Respondent’s websites must be disregarded: See A&F Trade Mark, Inc. and Abercrombie & Fitch Stores, Inc v. Justin Jorgenson, D2001-0900 (WIPO Sept. 19, 2001).
Confusion in this context, in the sense of bewilderment or failing to distinguish between things, may be regarded as a state of wondering whether there is an association, rather than a state of erroneously believing that there is one. An appropriate formulation might be: “Is it likely that, because of the similarity between the domain name on the one hand and the complainant’s trademark on the other hand, people will wonder whether the domain name is associated in some way with the complainant?”: SANOFI-AVENTIS v. Jason Trevenio, D2007‑0648 (WIPO July 11, 2007).
The addition of the word “dulles”, being the name of one of the major DC-area airports, to Complainant’s mark does not distinguish the domain name sufficiently to prevent it from being confusingly similar to that mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because “the mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
Accordingly, Complainant has established this element of its case.
Complainant’s assertions set out above suffice to establish a prima facie case of absence of rights or legitimate interests in the domain name on the part of Respondent. Accordingly, the burden shifts to Respondent to provide evidence of his right or legitimate interests under Policy ¶ 4(c): see for example Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, D2004-0753 (WIPO Nov. 11, 2004).
Policy ¶ 4(c) sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of Policy ¶ 4(a)(ii), i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Respondent says the domain name reflects the registered name of the company associated with the domain name. Presumably this is a reference to a company called Washington Flyer Dulles which operates the ground transportation services promoted on the website to which the domain name resolves. Assuming this to be so, in the face of the evidence that the Complainant has been operating just such a business under the WASHINGTON FLYER mark for over 25 years, there is no evidence before the Panel from which it could be concluded that the business described by Respondent is bona fide, so as to attract the operation of the Policy ¶ 4(c)(i). Policy ¶ 4(c)(ii) and (iii) clearly do not apply.
Accordingly Respondent has failed to rebut the prima facie case of absence of rights or legitimate interests in the domain name and Complainant has established this element of its case.
As for Respondent’s statement that he is not representing Washington Flyer Dulles, since he is a web developer with nothing to do with the business of transportation and that he took the job from the company to register the domain name and develop and maintain the website, to relieve a respondent from responsibility in such circumstances would be to undermine the proper application of Policy. A domain name registrant is responsible for the use to which the domain name is put and cannot escape responsibility by claiming to have been a mere agent or to lack knowledge of the circumstances of registration or use of the domain name. An agent acts on behalf of his or her principal. Accordingly the intentions and knowledge of the principal may be imputed to the agent.
After 25 years of use by Complainant of the WASHINGTON FLYER mark in relation to ground transportation in the DC-area, it appears to the Panel more probable than not, to put it mildly, that both Respondent, whose address is in Virginia, and any principal for whom he may have been acting, were well aware of Complainant’s trademark rights when the domain name was registered, and that they fully intended, by using the domain name, to attract Internet users seeking Complainant to Respondent’s website by creating a likelihood of confusion between Complainant and Respondent. Indeed, Complainant has provided evidence of two instances in which that happened. Under Policy ¶ 4(b)(iv), this is evidence of both registration and use of the domain name in bad faith.
Respondent says the domain name was registered and the resolving website was created in good faith and with the intention to have honest, fair, and healthy competition in the transportation business. However, it is not honest, fair or healthy competition to attract customers by misleading them into believing they are dealing with your competitor.
If Respondent was indeed acting merely as agent for a company called Washington Flyer Dulles, that company more likely than not had the purpose of disrupting the business of a competitor, namely Complainant. Since the intention of the principal is to be imputed to the agent, this demonstrates bad faith registration and use by Respondent according to Policy ¶ 4(b)(iii).
Accordingly, Complainant has established this element of its case.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <washingtonflyerdulles.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury,
Panelist
Dated: October 21, 2010
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