Southwest Airlines Co. v. Private person / Petrenko Igor
Claim Number: FA 1359899
Complainant is Southwest Airlines Co. (“Complainant”), represented by Remy M. Davis, Texas, USA. Respondent is Private person / Petrenko Igor (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <swocargo.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically November 22, 2010; the National Arbitration Forum received payment November 22, 2010.
On November 22, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <swocargo.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com registration agreement and thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 23, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 13, 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@swocargo.com. Also on November 23, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 20, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <swocargo.com>, is confusingly similar to Complainant’s SWA mark.
2. Respondent has no rights to or legitimate interests in the <swocargo.com> domain name.
3. Respondent registered and used the <swocargo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Southwest Airlines Co., is a domestic air carrier in the United States and has been offering its transportation services for more than thirty years. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the SWA mark (Reg. No. 2,313,710 issued February 1, 2000).
Respondent, Private person / Petrenko Igor, registered the <swocargo.com> domain name October 3, 2010. The disputed domain name resolves to a fraudulent website that almost exactly mirrors Complainant’s authentic site and attempts to collect Internet users’ personal information by requesting that the Internet users create an account.
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."
Given 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 will draw such inferences as the Panel 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 the 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 Complainant to 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 owns a trademark registration with the USPTO for the SWA mark (Reg. No. 2,313,710 issued February 1, 2000). The Panel finds that this USPTO trademark registration is sufficient to prove Complainant’s rights in the SWA mark for the purposes of Policy ¶ 4(a)(i), although the mark is not registered in the country of Respondent’s residence or business operations. See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant alleges that Respondent’s <swocargo.com> domain name is confusingly similar to Complainant’s SWA mark. Complainant asserts that the disputed domain name merely exchanges the letter “o” for the letter “a” and adds the descriptive term “cargo” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that misspelling Complainant’s mark by a single letter is insufficient to distinguish the disputed domain name from Complainant’s mark according to Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar). The Panel also finds that adding a descriptive term to Complainant’s mark does not overcome confusing similarity. The Panel finds that this is especially true where the added term is descriptive of Complainant’s business and the resulting disputed domain name closely resembles both a domain name registered by Complainant and a mark for which Complainant has a pending trademark registration: <swacargo.com> (Ser. No. 85,031,652 filed May 6, 2010). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). Similarly, the addition of the gTLD “.com” does not distinguish the disputed domain name under a Policy ¶ 4(a)(i) analysis. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
Thus, the Panel finds that Respondent’s <swocargo.com> domain name is confusingly similar to Complainant’s SWA mark pursuant to Policy ¶ 4(a)(i); Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii) requires Complainant to make a prima facie case to support its allegations that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has done so, the burden of proof shifts to Respondent to demonstrate that it does have such rights and legitimate interests in the disputed domain name. In the instant proceedings, the Panel finds that Complainant made a prima facie case. Respondent’s failure to respond allows the Panel to take Complainant’s allegations as true and find that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). This Panel, however, still considers the evidence presented in light of the Policy ¶ 4(c) factors before making an independent determination on whether Respondent has rights or legitimate interests in the disputed domain name.
Complainant contends that it has not authorized Respondent to use its SWA mark in any way. The WHOIS information for the disputed domain name lists the registrant as “Petrenko Igor,” a name which has no apparent association to the disputed domain name. The Panel thus finds that Respondent is not commonly known by the <swocargo.com> domain name and accordingly lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant asserts as well that Respondent’s resolving website at the <swocargo.com> domain name is a nearly an exact replication of Complainant’s authentic website and thus that Respondent attempts to pass the site off as Complainant’s. Complainant urges that an inference may be drawn that Respondent intends to confuse Internet users into believing that Respondent’s site is Complainant’s authentic website, even providing the option for Internet users to option an account. Complainant alleges that this account creation is a way for Respondent to fraudulently acquire Internet users’ personal information and that it is not a bona fide offering of goods or services according to Policy ¶ 4(c)(i) and that it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel agrees. See MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) (finding the respondent lacked rights and legitimate interests in the disputed domain name when the respondent copied the complainant’s websites in their entirety at the disputed domain names); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant urges that Respondent uses the <swocargo.com> domain name to attract Internet users that seek Complainant’s services by diverting them to Respondent’s resolving website. Complainant argues that Respondent intends to confuse and deceive Internet users by using a confusingly similar variation of Complainant’s mark in the disputed domain name and by passing itself off as Complainant. Complainant asserts that Respondent is engaged in this fraudulent scheme for profit because the misleading resolving website allows Respondent to collect Internet users’ personal and financial information when they set up an account. The Panel therefore finds that Respondent’s activities in connection with the <swocargo.com> domain name indicate bad faith registration and use according to Policy ¶ 4(b)(iv). See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that where the complainant’s mark was appropriated at registration, and a copy of the complainant’s website was used at the domain name in order to facilitate the interception of the complainant’s customer’s account information, the respondent’s behavior evidenced bad faith use and registration of the domain name).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <swocargo.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 3, 2011.
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