United Air Lines, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT
Claim Number: FA1210001469439
Complainant is United Air Lines, Inc. (“Complainant”), represented by Michael C. Henning of United Air Lines, Inc., Texas, USA. Respondent is Privacy Ltd. Disclosed Agent for YOLAPT (“Respondent”), Isle of Man.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <untiedair.com>, registered with FABULOUS.COM PTY LTD.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 30, 2012; the National Arbitration Forum received payment on October 30, 2012.
On October 30, 2012, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <untiedair.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY LTD. 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@untiedair.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 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <untiedair.com> domain name, the domain name at issue, is confusingly similar to Complainant’s UNITED and UNITED AIRLINES marks.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, United Air Lines, Inc., is one of the largest commercial airline operators and transportation service providers in the world and operates an average of 5,557 flights a day to 378 airports on six continents. Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the UNITED AIRLINES mark (Reg. No. 1,750,451, registered February 2, 1993), for the UNITED mark (Reg. No. 676,462, registered March 31, 1959), for the UNITED AIRLINES & Design mark (Reg. No. 1,598,941, registered December 21, 1999), and for the UNITED & Design mark (Reg. No. 2,301,726, registered December 21, 1999). Complainant also owns several trademark registrations with the United Kingdom Intellectual Property Office (“UKIPO”) for the UNITED AIRLINES mark (Reg. No. 1,361,812, registered April 5, 1994), and for the UNITED mark (Reg. No. 1,292,812, registered August 26, 1994). Respondent’s <untiedair.com> domain name is confusingly similar to Complainant’s UNITED AIRLINES mark because it incorporates the entirety of the mark but transposes the letters “I” and “t” in “united,” abbreviates “airlines” to “air,” and includes the generic top-level domain (“gTLD”) “.com.” Respondent is not commonly known by the disputed domain name, where the WHOIS information identifies “Privacy Ltd. Disclosed Agent for YOLAPT“ as the registrant. Complainant has not granted any license, permission, or authorization to use the UNITED or UNITED AIRLINES marks or any family of marks for any purpose. Respondent’s disputed domain name resolves to a domain parking web site that directs Internet users to competitors of Complainant. Respondent’s disputed domain name transposes two letters in Complainant’s UNITED mark, which constitutes typosquatting. Respondent, at the time that it registered the disputed domain name, had constructive and actual knowledge of Complainant’s rights in the UNITED and UNITED AIRLINES marks and is a serial cybersquatter with a history of registering domain names that incorporate or are confusingly similar to other trademarked company names. Respondent chose the typosquatted <untiedair.com> domain name to disrupt Complainant’s business by diverting Internet users to a parked website that offers links to Complainant’s competitors. Respondent has registered the disputed domain name with the intention of attracting, for its own commercial gain, Internet users to Respondent’s website by creating confusion with Complainant’s UNITED AIRLINES mark. Respondent registered <untiedair.com> on April 13, 2004.
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, United Air Lines, Inc., is one of the largest commercial airline operators and transportation service providers in the world and operates an average of 5,557 flights a day to 378 airports on six continents. Complainant owns several trademark registrations with the USPTO for the UNITED AIRLINES mark (Reg. No. 1,750,451, registered February 2, 1993), for the UNITED mark (Reg. No. 676,462, registered March 31, 1959), for the UNITED AIRLINES & Design mark (Reg. No. 1,598,941, registered December 21, 1999), and for the UNITED & Design mark (Reg. No. 2,301,726, registered December 21, 1999). Complainant also owns several trademark registrations with the UKIPO for the UNITED AIRLINES mark (Reg. No. 1,361,812, registered April 5, 1994), and for the UNITED mark (Reg. No. 1,292,812, registered August 26, 1994). Complainant’s registrations with the USPTO and UKIPO prove sufficient rights in the UNITED AIRLINES and UNITED marks. See Royal Bank of Scot. Group plc v. Soloviov, FA 787983 (Nat. Arb. Forum Nov. 3, 2006) (“Complainant’s trademark registrations for the NATWEST mark with the United Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant to Policy ¶4(a)(i).”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <untiedair.com> domain name is confusingly similar to Complainant’s UNITED AIRLINES mark because it incorporates the entirety of the marks but transposes the letters “I” and “t” in “united.” Respondent’s transposition of two letters in the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”). Respondent’s disputed domain name is also confusingly similar to Complainant’s marks even though it abbreviates “airlines” to “air.” Respondent’s abbreviation of “airlines” to “air” does not distinguish Respondent’s disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (“Notwithstanding the analysis by Respondent, ‘modprops’ is a contraction or shorthand for ‘Modern Props.’ ‘Mod’ cononotes [sic] ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning.”). Lastly, Respondent’s disputed domain name includes Complainant’s marks and the gTLD “.com.” The addition of a gTLD does not eliminate the confusing similarity between Respondent’s <untiedair.com> domain name and Complainant’s UNITED AIRLINES mark under Policy ¶ 4(a)(i). See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Therefore, Respondent’s <untiedair.com> domain name is confusingly similar to Complainant’s UNITED AIRLINES mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not commonly known by the disputed domain name, where the WHOIS information identifies “Privacy Ltd. Disclosed Agent for YOLAPT“ as the registrant. Complainant has not granted any license, permission, or authorization to Respondent to use the UNITED AIRLINES mark or any family of marks for any purpose. Respondent does not provide evidence showing that it is commonly known by the disputed domain name. Therefore, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <untiedair.com> domain name resolves to a domain parking web site that directs Internet users to competitors of Complainant. Respondent’s website features links to Complainant’s competitors, such as <delta.com>, <jetblue.com>, and <kayak.com>. Accordingly, Respondent’s 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 Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”); see also State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”).
Respondent’s <untiedair.com> domain name transposes letters “i” and “t” in Complainant’s UNITED mark, which constitutes typosquatting. Respondent’s use of typosquatting evidences that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is a serial cybersquatter and has a history of registering domain names that incorporate or are confusingly similar to other trademarked company names. Respondent has been subject to at least 31 other UDRP proceedings before the National Arbitration Forum where it was ordered to transfer domain names to the rightful trademark holders. See Sears Brands, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain Admin, FA 1074743 (Nat. Arb. Forum Oct. 17, 2007); see also Dream Execution Tech. Co. Ltd. v. Disclosed Agent for YOLAPT, FA 1218178 (Nat. Arb. Forum Sept. 29, 2008); see also The Finish Line, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain Admin, FA 1260276 (Nat. Arb. Forum June 23, 2009). Respondent’s repeated pattern of registering domain names prevents the rightful owners from reflecting their marks. Accordingly, Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii) as evidenced through its past adverse UDRP proceedings. See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)).
Respondent chose the typosquatted <untiedair.com> domain name to disrupt Complainant’s business by diverting Internet users to a parked website that offers links to Complainant’s competitors. For example, Respondent’s disputed domain name links to a website featuring links to “Continental Airlines,” “Delta Airlines,” and “Jetblue Airlines.” Respondent’s use of the disputed domain name is likely to tarnish and disparage the reputation and goodwill associated with the UNITED and UNITED AIRLINES marks, both by creating an unwanted association with the services offered for sale at the competing websites and by presenting services in a manner that is not commensurate with the presentation expected from Complainant. Respondent’s use of the disputed domain name shows bad faith use and registration of the domain name by disrupting Complainant’s business under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent, at the time that it registered the disputed domain name, had constructive and actual knowledge of Complainant’s rights in the UNITED AIRLINES mark. Respondent’s constructive knowledge of Complainant’s rights in the UNITED AIRLINES mark is demonstrated by Complainant’s registration of the trademarks with the USPTO and UKIPO and by Complainant’s substantial presence on the Internet. While some panels have concluded that constructive notice is not sufficient to support a bad faith finding, due to the fame of Complainant's mark and Respondent’s use of the disputed domain name to offer links to competing travel and airfare sites, it is clear that Respondent had actual knowledge of the mark and Complainant's rights. Thus, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <untiedair.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 13, 2012
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