International Air Transport Association v. The Intrepid Traveler / Kelly Monaghan
Claim Number: FA1107001398672
Complainant is International Air Transport Association (“Complainant”), represented by Leanne Stendell of Haynes and Boone, LLP, Texas, USA. Respondent is The Intrepid Traveler / Kelly Monaghan (“Respondent”), Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <iatanumbers.com>, <iatanumber.com>, and <iata-number-secrets.com>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Jonas Gulliksson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 14, 2011; the National Arbitration Forum received payment on July 14, 2011.
On July 15, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <iatanumbers.com>, <iatanumber.com>, and <iata-number-secrets.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, 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 July 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 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@iatanumbers.com, postmaster@iatanumber.com, and postmaster@iata-number-secrets.com. Also on July 19, 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.
A timely Response was received and determined to be complete on August 8, 2011.
On August 10, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jonas Gulliksson as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is the owner of the well-known lATA trademarks. Complainant owns dozens of trademark registrations for its lATA mark throughout the world. Complainant argues that the disputed domain names are confusingly similar to marks in which Complainant has exclusive rights, because they incorporate Complainant’s trademarks in its entirety. The addition of non-distinctive matter, such as the words "number," "numbers," or "secrets," a hyphen, or the gTLD ".com," does not change the likelihood of confusion, particularly where, as here, the generic terms "number" and "numbers" relate explicitly to services offered under the Complainant's trademarks
Complainant argues that Respondent has no rights or legitimate interests in respect of the disputed domain names because respondent has never used, nor made any demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services. Users accessing www.iatanumbers.com, www.iatanumber.com, or www.iata-number-secrets.com arrive at identical websites that offer a "report" about "travel agent numbers." The sites invite users to input an e-mail address with the text, "Want to be a Travel Agent? Before You Go Any Further, Let's...CUT THE CONFUSION!" Users who provide e-mail addresses receive a presentation that discusses the travel industry, including lATA numbers, and culminates in an advertisement for the registrant's training course, The Home-Based Travel Agent Success Manual, that instructs individuals on how to become home-based travel agents. While the sites purport to inform visitors about travel agent certification methods and becoming a travel agent, their true purpose is to promote and sell copies of the registrant's directly competitive travel agent courses as an alternative to becoming certified by Complainant and/or taking Complainant's own travel-agent training courses.
Complainant argues that Respondent registered and used the disputed domain names in bad faith. Respondent uses the disputed domain names to create confusion with the Complainant’s trademark IATA and to divert customers from Complainant's legitimate sites, for Respondent's own commercial gain. Respondent has evident knowledge of Complainant’s trademark, which is well-known according to Complainant.
B. Respondent
Respondent argues that the disputed domain names are not confusingly similar to marks in which Complainant has exclusive rights. Complainant’s trademark IATA is not well-known and it is not unique.
Respondent argues that its advertisement for his training course, “The Home-Based Travel Agent Success Manual” constitutes a bona fide
offering of goods and services and that Respondent thus has rights and legitimate interests in respect of the disputed domain names.
Respondent contends that it has not registered and used the disputed domain names in bad faith. Respondent registered and is using the domain names solely for the legitimate business purpose of educating the public and offering his training course.
Respondent asserts that it does not seek to divert customers from
Complainant’s sites because Complainant does not sell anything “remotely similar to Respondent’s product.” There is nothing on Respondent’s site that in any way seeks to convince a visitor that Respondent and Complainant are one and the same or that the product offered by Respondent is in any way attached to or endorsed by Complainant.
Respondent has never offered the domains in question for sale, either to
Complainant or any other party. Respondent’s sole motivation is to educate visitors on a question that causes wide-spread confusion among people seeking to become home-based travel agents and guide those visitors to Respondent’s training course.
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."
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, International Air Transport Association, claims that it owns rights in the IATA mark under Policy ¶ 4(a)(i) through its registration of such mark in several countries. Complainant submits a chart which claims to identify its registered trademarks with governmental agencies worldwide. Such trademark registrations include the following:
The Panel finds that the evidence submitted by Complainant affirmatively establishes Complainant’s rights in the IATA mark under Policy ¶ 4(a)(i), including those that carry a design feature in the mark. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”). The Panel further agrees with the Complainant that the IATA trademark is a well-known trademark.
Complainant further argues that the <iatanumbers.com>, <iatanumber.com>, and <iata-number-secrets.com> domain names are confusingly similar to its IATA mark. Complainant notes that each domain name incorporates its IATA mark entirely while adding the generic terms “numbers,” “number,” or “secrets,” while one domain name also adds a hyphen. Further, Complainant contends that the addition of the generic top-level domain (“gTLD”) “.com” does not change the likelihood of confusion with its IATA mark. The Panel agrees and finds that Respondent’s <iatanumbers.com>, <iatanumber.com>, and <iata-number-secrets.com> domain names are confusingly similar to Complainant’s IATA mark under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant contends that Respondent, “is not currently known, and has never been known as ‘iatanumbers.com,’ ‘iatanumber.com,’ ‘iata-number-secrets.com,’ or any variation thereof.” The Panel notes that the WHOIS information identifies the domain names registrant as “The Intrepid Traveler / Kelly Monaghan,” which is not similar to the domain names at issue. Further, Complainant argues that it has never consented to Respondent’s registration or use of the disputed domain names or the IATA marks. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See 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).
Complainant goes on to argue that Respondent’s use of the disputed domain names also does not confer rights or legitimate interests on Respondent. Complainant first notes that all three domain names resolve to an identical website. Complainant contends that when Internet users arrive at the resolving website they are presented with information asking them to enter an email address with the text, “Want to be a Travel Agent? Before You Go Any Further, Let’s…CUT THE CONFUSION!” Complainant asserts that after they enter an email address users receive a presentation that discusses the travel industry, including IATA registration numbers, which eventually culminates in an advertisement for Respondent’s training course titled, The Home-Based Travel Agent Success Manual. Internet users are then prompted to purchase the home-based study kit. Further, Complainant argues that throughout the website and presentation Respondent critiques and disparages the travel industry as a whole and Complainant in particular in order to sell its training manual. Complainant alleges that the training and certification program offered by Respondent directly competes with Complainant’s own offerings while discouraging Internet users and the general public from joining Complainant’s association. The Panel finds that Respondent’s marketing and sales of competing travel industry materials and certification programs for travel agents does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Complainant argues that Respondent is commercially benefiting by creating a likelihood of confusion with its IATA marks. Complainant has asserted that Respondent’s sole purpose in registering the domain names is to redirect Internet users who are searching for Complainant and its travel agent training course to Respondent’s competing website. The Panel finds that Respondent’s use of the disputed domain names to sell travel agency related goods and services is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name). The Panel finds that the disputed domain names are likely to create confusion in the minds of the general public as to the ownership of the website.
Complainant asserts that Respondent had actual and/or constructive notice of Complainant and its rights in the mark prior to registration of the domain name. Complainant contends that since Respondent was in the travel agent industry and subsequently registered the disputed domain names containing its mark with disparaging information, that Respondent had to know of its rights in the IATA marks. Although constructive knowledge has generally not been held sufficient to support a finding of bad faith, the Panel finds this fact contributing to the finding that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Respondent asserts in his response that he registered and is using the domain names solely for the legitimate business purpose of educating the public and offering his training course. Complainant contends that Respondent’s business is centered around disparaging Complainant and others in the travel industry in order to sell Respondent’s own products. Complainant argues that throughout its website and presentation Respondent offers disparaging remarks and criticism to point out that its own products and services should be used instead of Complainant’s. In this assertion, Complainant argues that Respondent’s registration and use of the confusingly similar domain names was done in bad faith pursuant to Policy ¶ 4(a)(iii). The Panel accepts that it is, in principle, legitimate to operate a domain name for the purposes of lawful criticism of a trademark owner. The Panel does not, however, believe that this right extends to occupying a domain name similar to a sign identifying a trademark owner, for the purpose of offering a training course for commercial gain.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <iatanumbers.com>, <iatanumber.com>, and <iata-number-secrets.com> domain name be TRANSFERRED from Respondent to Complainant.
Jonas Gulliksson, Panelist
Dated: August 24, 2011
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