America West Airlines v. Patrick Ory
Claim
Number: FA0302000146942
Complainant is
America West Airlines, Tempe, AZ, USA (“Complainant”) represented
by Bruce E. Samuels, of Lewis and Roca, LLP. Respondent is
Patrick Ory, Cancun, Mexico (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <americawest-airlines.com>, registered
with Computer Services Langenbach GmbH d/b/a Joker.Com.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 27, 2003; the Forum received a hard copy of the
Complaint on February 28, 2003.
On
March 6, 2003, Computer Services Langenbach GmbH d/b/a Joker.Com confirmed by
e-mail to the Forum that the domain name <americawest-airlines.com>
is registered with Computer Services Langenbach GmbH d/b/a Joker.Com and that
Respondent is the current registrant of the name. Computer Services Langenbach
GmbH d/b/a Joker.Com has verified that Respondent is bound by the Computer
Services Langenbach GmbH d/b/a Joker.Com 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
March 6, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 26, 2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@americawest-airlines.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
April 1, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr. as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 <americawest-airlines.com>
domain name is confusingly similar to Complainant’s AMERICA WEST and AMERICA
WEST AIRLINES marks.
2. Respondent does not have any rights or
legitimate interests in the <americawest-airlines.com> domain name.
3. Respondent registered and used the <americawest-airlines.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
America West Airlines, is a low-fare, full-service airline. Complainant’s airline
service includes 92 destinations across the United States, Mexico and Canada
with more than 800 daily departures.
Complainant
holds three U.S. Patent and Trademark Office (“USPTO”) service mark
registrations for the AMERICA WEST AIRLINES mark, specifically, 1,376,326;
2,065,046; and 2,081,265. Complainant has been continuously operating and
offering services under the AMERICA WEST AIRLINES mark since 1983.
Additionally,
Complainant holds USPTO Reg. No. 1,445,610 for the AMERICA WEST service mark, which is registered on the
Principal Register of the USPTO. Complainant’s registration indicates that
first use of the AMERICA WEST mark was made in 1983.
Complainant
operates a website at <americawest.com>, from which it offers a variety
of services and information. Complainant has also registered
<americawestairlines.com>, which diverts Internet users to the
<americawest.com> domain name and corresponding website. Complainant has
expended substantial resources promoting and developing its AMERICA WEST and
AMERICA WEST AIRLINES marks, and as a result, the marks have acquired
significant secondary source identification for Complainant.
Respondent,
Patrick Ory, registered <americawest-airlines.com> on February 21,
2001. Complainant’s investigation of Respondent’s use of the subject domain
name reveals that, upon keying the domain name into the browser, Internet users
are directed to a website that offers airline tickets, car rentals and hotel
reservations. Respondent’s website prominently displays Complainant’s AMERICA
WEST AIRLINES mark on its website, as well as the marks of other well-known
airlines. Respondent’s “About Us” section of the website states:
“Americawest-airlines.com website was first launched in August 2000 and has
been an important player in the travel industry ever since. . . . We are happy
to be the travel center for 5,000 people every day. . . . America West Airlines
is a partner of the America West Airlines.”
Complainant also
provides evidence indicating that Respondent has been engaged in previous UDRP
disputes involving domain name registrations of famous marks. More
specifically, Respondent was implicated in the following domain name disputes,
listed without limitation: <national-carrental.com>, NCRAS Mgmt. v.
Ory, D2001-1287 (WIPO Dec. 28, 2001); <singapore-airlines.com>, Singapore
Airlines Ltd. v. Hotel Price, D2001-0595 (WIPO June 19, 2001);
<delta-airlines-fares.com>, Delta Corp. Identity, Inc. v. Ory, FA
109375 (Nat. Arb. Forum May 22, 2002); and <klm-airlines.com>,
<us-airways.net>, <virgin-airlines.com>,
<british-air-ways.com>, <nwa-airlines.com>,
<national-airlines.com> and <twaairlines.org>.
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.
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 has
established rights in the AMERICA WEST AIRLINES mark through registration with
the USPTO and continuous use of the mark in commerce since 1983.
Respondent’s <americawest-airlines.com>
domain name is confusingly similar to Complainant’s AMERICA WEST AIRLINES
mark. Respondent’s domain name incorporates Complainant’s well-known mark in
its entirety, and deviates from Complainant’s mark only by the addition of a
hyphen. The absence or presence of minor punctuation marks, such as hyphens,
does not alter the fact that Respondent’s domain name is confusingly similar to
Complainant’s mark. Many disputes involving hyphens have concluded that the
domain name is in fact identical to the mark that is being infringed upon. See
Chernow Communications Inc. v.
Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence
of punctuation marks, such as hyphens, does not alter the fact that a name is
identical to a mark”); see also Teradyne
Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the
“addition of a hyphen to the registered mark is an insubstantial change. Both
the mark and the domain name would be pronounced in the identical fashion, by
eliminating the hyphen”).
Additionally,
top-level domains, such as “.com,” are inconsequential when conducting an
analysis under Policy ¶ 4(a)(i). See Pomellato
S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant’s
submission to the Panel asserts that Respondent does not have any rights or
legitimate interests in the domain name. Because Respondent failed to submit a
Response, Complainant’s assertions are unopposed and the Panel is permitted to
accept all reasonable inferences contained in the Complaint as true. See
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows
all reasonable inferences of fact in the allegations of Complainant to be
deemed true); see also Bayerische Motoren Werke AG v. Bavarian AG,
FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a
Response the Panel is free to make inferences from the very failure to respond
and assign greater weight to certain circumstances than it might otherwise do).
Uncontested
evidence indicates that Respondent’s domain name directs Internet users to a
website that advertises airline tickets, hotel and car reservations – services
identical to those that Complainant offers. Respondent’s opportunistic use of
Complainant’s mark in the domain name relies on instigating and exacerbating
Internet confusion in order to profit commercially. By making unauthorized use
of a famous mark in order to create Internet interest, Respondent fails to
establish rights in the domain name under Policy ¶¶ 4(c)(i) or (iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc.,
FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial
use of the domain name to confuse and divert Internet traffic is not a
legitimate use of the domain name); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct.
2, 2000) (finding no bona fide use where Respondent used the domain name to
divert Internet users to its competing website).
No evidence
before the Panel suggests that Respondent is commonly known by the domain name
pursuant to Policy ¶ 4(c)(ii). Complainant’s evidence indicates that Respondent
habitually registers domain names that infringe on others’ marks (e.g.,
National Car Rental, Alamo Car Rental, Delta Air Lines, Virgin Atlantic
Airways, and British Airways). Because of the circumstances surrounding
Respondent’s registration of the subject domain name, Respondent fails to
establish rights under the Policy. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28,
2001) (finding sufficient proof that Respondent was not commonly known by a
domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because
of Complainant’s well-established use of the mark).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses
Complainant’s AMERICA WEST AIRLINES mark to misdirect consumers and potential
customers to a website that offers identical services, namely, airline tickets,
hotel bookings and car rentals. Respondent’s use of the famous AMERICA WEST
AIRLINES mark to compete with Complainant and promote Complainant’s competitors
causes Internet user confusion, harms the goodwill of the AMERICA WEST AIRLINES
mark and also dilutes Complainant’s mark. Therefore, Respondent’s actions
constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See
Mission Kwa Sizabantu v. Rost,
D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in
opposition to another and the context does not imply or demand any restricted
meaning such as commercial or business competitor”); see also Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that
domain names were registered and used in bad faith where Respondent and
Complainant were in the same line of business in the same market area).
Additionally,
Complainant’s submission reveals that Respondent habitually infringes on
others’ trademarks. Respondent’s pattern of bad faith behavior implicates
Policy ¶ 4(b)(ii); thus, Respondent has registered and used the domain name in
bad faith because it has prevented others from reflecting their marks in a
corresponding domain name. See Toyota
Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9,
2000) (finding that “Registration of a domain name [by Respondent that
incorporates another’s trademark] goes further than merely correctly using in
an advertisement the trade mark of another in connection with that other’s
goods or services: it prevents the trade mark owner from reflecting that mark
in a corresponding domain name”); see also Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum
Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by
registering multiple domain names that infringe upon others’ famous and
registered trademarks).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <americawest-airlines.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
April 3, 2003
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