Metropolitan Washington Airports Authority v. Uniwebmart Inc
Claim Number: FA1103001376118
Complainant is Metropolitan Washington Airports Authority (“Complainant”), represented by Alain J. Lapter of Bean Kinney & Korman, P.C., Virginia, USA. Respondent is Uniwebmart Inc (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <washingtonflyer-dulles.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 4, 2011; the National Arbitration Forum received payment on March 4, 2011.
On March 4, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <washingtonflyer-dulles.com> domain name is registered with GoDaddy.com, Inc. and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 10, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 2011 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@washingtonflyer-dulles.com. Also on March 10, 2011, 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 April 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
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" 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. Respondent’s <washingtonflyer-dulles.com> domain name is confusingly similar to Complainant’s WASHINGTON FLYER mark.
2. Respondent does not have any rights or legitimate interests in the <washingtonflyer-dulles.com> domain name.
3. Respondent registered and used the <washingtonflyer-dulles.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Metropolitan Washington Airports Authority, is an independent body created by the Commonwealth of Virginia and the District of Columbia to operate and maintain Ronald Reagan Washington National Airport (Reagan) and Washington Dulles International Airport (Dulles). Complainant owns the WASHINGTON FLYER mark and has used the mark since 1983 in the identification of its ground transportation services to and from Dulles airport. Complainant holds registered trademarks for its WASHINGTON FLYER mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,356,548 issued Aug. 27, 1985).
Respondent, Uniwebmart Inc, registered the <washingtonflyer-dulles.com> domain name on December 10, 2010. The disputed domain names redirects Internet users to a commercial website which offers ground transportation to Dulles and Reagan airports in direct competition with Complainant’s ground transportation services.
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 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 that 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 asserts that it has established its rights in the WASHINGTON FLYER mark. In Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005), the panel found that complainant had registered its mark with national trademark authorities and that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).” See also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”) Here, Complainant holds a trademark registration for its WASHINGTON FLYER mark with the USPTO (e.g., Reg. No. 1,356,548 issued Aug. 27, 1985). Therefore, the Panel concludes that Complainant has demonstrated its rights in the WASHINGTON FLYER mark under Policy ¶ 4(a)(i) through its federal trademark registration.
Complainant contends that Respondent’s <washingtonflyer-dulles.com> domain name is confusingly similar to its WASHINGTON FLYER mark. Complainant’s entire mark is used within the disputed domain name and the domain name differs only through the deletion of the space between words of the mark, the addition of a hyphen, the addition of the descriptive word “dulles,” and the affixation of the generic top-level domain (“gTLD”) “.com.” The Panel finds that the deletion of a space between words of a mark and the addition of a gTLD do not adequately distinguish the disputed domain name from Complainant’s mark. See Bond & Co. Jewelers, Inc. v. Texas Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). Also, the Panel finds that the insertion of a hyphen does not serve to differentiate the disputed domain name from Complainant’s mark. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Finally, the Panel finds the addition of the descriptive word “dulles,” which references Complainant’s services provided for Dulles airport, does not serve to avoid a finding of confusing similarity. See Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).”). Given these findings, the Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s WASHINGTON FLYER mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant maintains that Respondent lacks rights and legitimate interests in the <washingtonflyer-dulles.com> domain name. In Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007), the panel determined that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. Here, Complainant made a prima facie showing in support of its claims against Respondent. Respondent failed to submit a timely response to the Complaint. The Panel may interpret this to mean that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel will look at the record to see if Respondent has any rights or legitimate interests under Policy ¶ 4(c) before coming to any conclusions.
Complainant argues that Respondent is not commonly known by the <washingtonflyer-dulles.com> domain name. The WHOIS information identifies Respondent as “uniwebmart inc,” which is not similar to the disputed domain name in any way. Complainant further asserts that it has not granted any license or consent to Respondent to use its WASHINGTON FLYER mark within the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the <washingtonflyer-dulles.com> 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 Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s resolving website is used to operate a ground transportation business offering services to the Dulles and Reagan airports in direct competition with Complainant’s ground transportation business. The Panel finds that Respondent’s use of the confusingly similar domain name to direct Internet users to its own website, which directly competes with Complainant’s business, is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that the respondent, as a competitor of the complainant, had no rights or legitimate interests in a domain name that utilized the complainant’s mark for its competing website).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant argues that Respondent’s disputed domain name disrupts its business. Respondent registered and uses the <washingtonflyer-dulles.com> domain name to operate a ground transportation service to airports, which competes with services offered by Complainant. Internet users intending to utilize Complainant’s services may find Respondent’s website instead because of the confusingly similar domain name and give Respondent their business as a result. The Panel finds that Respondent’s use of the disputed domain name to compete with Complainant and divert Complainant’s customers does disrupt Complainant’s business and is evidence of bad faith use and registration under Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Respondent’s resolving website is a commercial site which offers ground transportation services to airports and directly competes with Complainant’s airport ground transportation business. Internet users looking for Complainant online may find Respondent’s website and become confused as to Complainant’s sponsorship of the disputed domain name and featured services. Respondent attempts to gain from this confusion by generating business and customers for its own profit. The Panel finds that this use of the disputed domain name constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <washingtonflyer-dulles.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 4, 2011
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