Scheduled Airlines Traffic Offices, Inc. v. Ghulam Ali / Softsolutions
Claim Number: FA1210001469292
Complainant is Scheduled Airlines Traffic Offices, Inc. (“Complainant”), represented by Travis Bachman, Minnesota, USA. Respondent is Ghulam Ali / Softsolutions (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <satotravelinfo.com>, registered with ONLINENIC, 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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 26, 2012; the National Arbitration Forum received payment on October 26, 2012.
On October 29, 2012, ONLINENIC, INC. confirmed by e-mail to the National Arbitration Forum that the <satotravelinfo.com> domain name is registered with ONLINENIC, INC. and that Respondent is the current registrant of the name. ONLINENIC, INC. has verified that Respondent is bound by the ONLINENIC, 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 November 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 2012 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@satotravelinfo.com. Also on November 1, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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 issues 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.
i. SATO (USPTO Reg. No. 1,766,257 registered Apr. 20, 1993);
ii. SATOTRAVEL (USPTO Reg. No. 2,690,293 registered Feb. 25, 2003);
iii. SATO (OHIM Reg. No. 2403772 registered Mar. 20, 2003); and
iv. SATOTRAVEL (OHIM Reg. No. 2403756 registered April 3, 2003).
i. Respondent is not a licensee or subsidiary of Complainant. Respondent has not been authorized to use Complainant’s SATO or SATOTRAVEL marks, and Respondent is not commonly known by the disputed domain name.
ii. Respondent’s disputed domain name takes users to a site composed of poorly written text, which seems to be an attempt to roughly approximate Complainant’s own legitimate site, including contact information for employees of Complainant, surrounded by hyperlinks for other “sponsored link” advertisements.
iii. Respondent’s attempts to imitate Complainant in an effort to trick Internet users into believing that the site is affiliated with Complainant is evidence that Respondent lacks a legitimate interest in the domain name.
i. Respondent is using the disputed domain name to divert web traffic from Complainant’s official website and profit from click-through traffic to other sites, including those of Complainant’s competitors, thereby disrupting Complainant’s business in bad faith.
ii. Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the site. Respondent is using the disputed domain name in connection with a website containing links to numerous sponsored link advertisements, for the purpose of commercially gaining.
iii. Respondent’s attempt to mislead Internet users by imitating Complainant’s own website is also evidence of Respondent’s bad faith registration and use of the domain name.
iv. Respondent had actual and constructive knowledge of Complainant and its rights in the SATO and SATOTRAVEL marks, thereby evidencing bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds that the Complainant is entitled to the relief requested.
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.
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.”).
Complainant claims that it owns that following trademark registrations with the USPTO and the OHIM as follows:
SATO (USPTO Reg. No. 1,766,257 registered Apr. 20, 1993);
SATOTRAVEL (USPTO Reg. No. 2,690,293 registered Feb. 25, 2003);
SATO (OHIM Reg. No. 2403772 registered Mar. 20, 2003); and
SATOTRAVEL (OHIM Reg. No. 2403756 registered April 3, 2003).
The Panel finds that Complainant’s trademark registrations, although not in the country of Respondent, are sufficient for Complainant to establish rights in the marks under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant asserts that Respondent’s <satotravelinfo.com> domain name is confusingly similar to the SATO and SATOTRAVEL marks. Complainant asserts that the first non-distinguishing element is the generic term “info.” Complainant further notes that the second non-distinguishing element is the gTLD “.com.” The Panel finds that the addition of the term “info” and the gTLD “.com” to the SATOTRAVEL mark does not remove the disputed domain name from the realm of confusing similarity. 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); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, the Panel finds that Respondent’s <satotravelinfo.com> domain name is confusingly similar to the SATOTRAVEL mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not a licensee or subsidiary of Complainant, and that Respondent has not been authorized to use Complainant’s SATO or SATOTRAVEL marks, and Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information does not offer Respondent a safe haven under Policy ¶ 4(c)(ii), as the registrant is identified as “Ghulam Ali / Softsolutions,” which the Panel determines is dissimilar from the <satotravelinfo.com> domain name. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Further, Complainant argues that Respondent’s disputed domain name takes users to a site composed of poorly written text, which seems to be an attempt to roughly approximate Complainant’s own legitimate site, including contact information for employees of Complainant, surrounded by hyperlinks for other “sponsored link” advertisements. The Panel finds such use of the disputed domain is not 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 ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees. . . . is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Lastly, Complainant argues that Respondent’s attempts to imitate Complainant in an effort to trick Internet users into believing that the site is affiliated with Complainant is evidence that Respondent lacks a legitimate interest in the domain name. The Panel notes that Respondent’s website features the name and contact information of Complainant’s employees, as well as the SATO and SATOTRAVEL mark being utilized throughout the domain name. The Panel finds that Respondent is attempting to pass itself off as Complainant. Such use of the disputed domain name is not 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 Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”).
Complainant has proven this element.
Complainant argues that Respondent is using the disputed domain name to divert web traffic from Complainant’s official website and profit from click-through traffic to other sites, including those of Complainant’s competitors, thereby disrupting Complainant’s business in bad faith, and that several of the third-party links featured on the resolving website are for travel related entities. The Panel finds that as such, Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”).
Complainant also asserts that Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the site. Complainant notes that Respondent is using the disputed domain name in connection with a website containing links to numerous sponsored link advertisements, for the purpose of commercially gaining. The Panel agrees and finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Further, Complainant argues that Respondent’s attempt to mislead Internet users by imitating Complainant’s own website is also evidence of Respondent’s bad faith registration and use of the domain name. As noted above, Respondent’s website extensively uses the SATO and SATOTRAVEL marks while also featuring the contact information for Complainant’s employees. The Panel finds such conduct to be passing off, and the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Smiths Group plc v. Snooks, FA 1372112 (Nat. Arb. Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Lastly, Complainant argues that Respondent had actual and constructive knowledge of Complainant and its rights in the SATO and SATOTRAVEL marks, thereby evidencing bad faith under Policy ¶ 4(a)(iii). The Panel disregards Complainant's arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant regarding Respondent's actual knowledge, however, and concludes that Respondent registered the <satotravelinfo.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Complainant has proven this element.
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 <satotravelinfo.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: December 12, 2012
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