national arbitration forum

 

DECISION

 

Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. PrivacyProtect.org / Domain Admin

Claim Number: FA1212001475694

 

PARTIES

Complainant is Alaska Air Group, Inc. and its subsidiary, Alaska Airlines (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <alakskaair.com>, <alaskeair.com>, <alasksaair.com>, and <horizanair.com>, registered with Url Solutions Inc., Homestead Limited Dba Namevault.Com, Url Solutions Inc..

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 12, 2012; the National Arbitration Forum received payment on December 12, 2012.

 

On January 4, 2013, Url Solutions Inc., Homestead Limited Dba Namevault.Com, Url Solutions Inc. confirmed by e-mail to the National Arbitration Forum that the <alakskaair.com>, <alaskeair.com>, <alasksaair.com>, and <horizanair.com> domain names are registered with Url Solutions Inc., Homestead Limited Dba Namevault.Com, Url Solutions Inc. and that Respondent is the current registrant of the names.  Url Solutions Inc., Homestead Limited Dba Namevault.Com, Url Solutions Inc. has verified that Respondent is bound by the Url Solutions Inc., Homestead Limited Dba Namevault.Com, Url Solutions 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 January 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2013 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@alakskaair.com, postmaster@alaskeair.com, postmaster@alasksaair.com, postmaster@horizanair.com.  Also on January 15, 2013, 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 March 28, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

  1. Complainant alleges:

1.    Complainant owns rights in the following marks through its registrations with the United States Patent and Trademark Office (“USPTO”);

a.    ALASKA AIRLINES (Reg. No. 1,561,416 registered October 17, 1989)

b.    HORIZON AIR (Reg. No. 1,754,242 registered February 23, 1993), (Reg. No. 2,240,963 registered April 20, 1999), and (Reg. No. 3,118,834 registered July 25, 2006).

2.    Complainant owns websites located at <alaskaairlines.com> and <horizonair.com>.

3.    Respondent’s <alakskaair.com>, <alaskeair.com>, <alasksaair.com>, <horizanair.com> domain names are confusingly similar to complainant’s ALASKA AIRLINES and HORIZON AIR marks.

a.    Respondent’s disputed domain names are examples of typosquatting.

4.    Respondent has no rights or legitimate interests in the <alakskaair.com>, <alaskeair.com>, <alasksaair.com>, and <horizanair.com> domain names.

a.    Respondent is not commonly known by any of the disputed domain names.

b.    Complinant has not authorized Respondent to use its marks in any way and Respondent is not affiliated with Complainant.

c.    Respondent is using the the disputed domain names to redirect unsuspecting Internet users to websites featuring competing links to third parties.

d.    Respondent presumably recieves pay-per-click fees from the resolving websites.

e.    Respondent is not using the disputed domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use.

f.      Respondent registered the disputed domain names after Complainant had already established registrations for its marks with the USPTO.

5.    Respondent’s disputed domain names were registered and are being used in bad faith.

a.    Evidence of Respondent’s typosquatting behavior is bad faith in and of itself.

b.    Respondent is taking advantage of Complainant’s well known marks and profiting through pay-per-click fees.

c.    Respondent is attracting and misleading potential consumers of Complainant’s to Respondent’s site in order to commercially profit.

d.    Respondent is diverting potential customers away from Complainants business and to third party businesses, thereby disrupting Complainant’s business.

e.    The disputed domain names resolve to pages that feature Complainant’s registered marks spelled correctly.

  1. Respondent did not submit a response.

1.    The Panel notes that Respondent registered the disputed domain names on the following dates;

a.    <horizanair.com> July 11, 2000

b.    <alasksaair.com> October 6, 2003

c.    <alaskeair.com> August 23, 2003

d.    <alakskaair.com> September 24, 2004

 

Preliminary Issue: Multiple Complainants

 

In the instant proceedings, there are two Complainants.  Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.”  The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”

 

There are two (2) Complainants in this matter: Alaska Air Group, Inc. and its subsidiary Alaska Airlines. Complainant alleges that Alaska Airlines and its sister carrier Horizon Air are both subsidiaries of Alaska Air Group. Complainant argues that it has widespread consumer recognition for its marks and has provided transportation services and online travel information and reservation all over the world.

 

Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other.  For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:

 

It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.

 

In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names.  Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.  But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).

 

The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and it elects to treat them all as a single entity in this proceeding.

 

FINDINGS

1.    Respondent’s <alakskaair.com>, <alaskeair.com>, <alasksaair.com>:, and <horizanair.com>  domain names are confusingly similar to Complainant’s ALASKA AIRLINES and HORIZON AIR marks.

2.    Respondent does not have any rights or legitimate interests in the <alakskaair.com>, <alaskeair.com>, <alasksaair.com>:, and <horizanair.com> domain names.

3.    Respondent registered or used the <alakskaair.com>, <alaskeair.com>, <alasksaair.com>:, and <horizanair.com> domain names in bad faith.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

 

Complainant contends that it has rights in the ALASKA AIRLINES and HORIZON AIR marks under Policy ¶ 4(a)(i) through its registrations with the USPTO;

ALASKA AIRLINES (Reg. No. 1,561,416 registered October 17, 1989) HORIZON AIR (Reg. No. 1,754,242 registered February 23, 1993), (Reg. No. 2,240,963 registered April 20, 1999), and (Reg. No. 3,118,834 registered July 25, 2006).

Previous panels have traditionally found that evidence of a trademark registration with the USPTO satisfies the requirement of demonstrating rights in a given mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”) Previous panels have also found that a complainant does not have to register the mark in the country in which a respondent operates, only a showing of registration in some jurisdiction is required. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Based on Complainant’s trademark registrations, the Panel finds that Complainant has established rights in the ALASKA AIRLINES and HORIZON AIR marks under Policy ¶ 4(a)(i).

 

Complainant argues that the  <alakskaair.com>, <alaskeair.com>, <alasksaair.com>, and <horizanair.com> domain names are confusingly similar to Complainant’s ALASKA AIRLINES and HORIZON AIR marks. Complainant claims that all of the disputed domain names add the generic top-level domain (gTLD) “.com” to the confusingly similar version of Complainant’s mark. The Panel notes that all of the disputed domain names remove the spaces between the words. Regarding the individual variations between the disputed domain names and Complainant’s ALASKA AIRLINES mark, the Panel notes that the <alakskaair.com> domain name adds an additional “k” in “Alaska” and removes the “lines” from “airlines.” The Panel notes that the <alaskeair.com> domain name changes the last “a” in “Alaska” to an “e” and removes the “lines” in airlines. The Panel notes that the <alasksaair.com> domain name adds the letter “s” and also removes the term “lines.” Regarding the variations between the <horizanair.com> domain name and the HORIZON AIR mark the Panel notes that Respondent replaces the “o” with an “a” in “horizon.” The Panel notes that previous panels have found that these variations are insufficient to differentiate a disputed domain name from a given registered mark. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD  is “unable to create a distinction capable of overcoming a finding of confusing similarity”); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”); see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)); see also Bond & Co. Jewelers, Inc. v. Tex. 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)); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). The Panel agrees and finds that Respondent’s <alakskaair.com>, <alaskeair.com>, <alasksaair.com>, and <horizanair.com> domain names are confusingly similar to Complainant’s ALASKA AIRLINES and HORIZON AIR marks pursuant to Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

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 commonly known by the <alakskaair.com>, <alaskeair.com>, <alasksaair.com>, and <horizanair.com> domain names under Policy ¶ 4(c)(ii). Complainant references the WHOIS information to indicate that the Registrant is listed as “PrivacyProtect.org.” Complainant further argues that it has never authorized or licensed Respondent to use its mark in any way. The Panel determines that there is no connection between Respondent and the <alakskaair.com>, <alaskeair.com>, <alasksaair.com>, and <horizanair.com> domain names or Complainant’s ALASKA AIRLINES and HORIZON AIR marks. 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names as it does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant argues that Respondent is redirecting Internet users to websites featuring third party links to websites that compete with Complainant’s business. Complainant claims that Respondent presumably receives pay-per-click fees from the links present on the resolving websites. The Panel notes that the <alakskaair.com> domain name features links such as “Alaska Airlines,” “Cheapest Airline Tickets,” “Frontier Airlines Tickets,” and “Airline Ticket Specials.” The Panel notes that the <alaskeair.com> domain name features links such as, “Alaska Airlines Flights,” “Super Cheap Air Tickets,” and “Priceline Airline Deals.” The Panel notes that the <alasksaair.com> domain name features links such as “Alaska Airlines,” “Air Alaska Reservations,” “Cheap Flight Tickets,” and “Delta Air Lines.” Previous panels have found that using a confusingly similar domain name to profit from links for third parties competing with Complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors.  The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”) Based on Complainant’s contentions and previous UDRP cases, the Panel finds that Respondent’s use of the disputed domain names to feature pay-per-click links for competing services does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii).

 

Registration and Use in Bad Faith

 

Complainant claims that Respondent registered and is using the <alakskaair.com>, <alaskeair.com>, <alasksaair.com>, and <horizanair.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iii). Complainant argues that Respondent is using the disputed domain names to resolve to pages featuring Complainant’s marks and providing links to third party businesses competing with Complainant. Previous UDRP panels have found bad faith registration and use when a respondent uses a confusingly similar domain name to divert Internet users to a site featuring competing links for the purpose of disrupting a complainant’s business. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”) The Panel, therefore, finds that Respondent registered and uses the <alakskaair.com>, <alaskeair.com>, <alasksaair.com>, and <horizanair.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iii).

 

Complainant claims that Respondent has registered and is using the  <alakskaair.com>, <alaskeair.com>, <alasksaair.com>, and <horizanair.com> disputed domain names in  bad faith pursuant to Policy 4(b)(iv). Complainant claims that Respondent is using the disputed domain names to attract and mislead consumers for its own commercial gain. Complainant argues that Respondent’s disputed domain names resolve to parked webpages featuring links that directly compete with Complainant’s business and commercially benefit Respondent. The Panel notes that the <alakskaair.com>, <alaskeair.com>, and <alasksaair.com> domain names feature links to Complainant’s business. Previous panels have frequently found bad faith registration under Policy 4(b)(iv) when a respondent registers a confusingly similar domain name containing complainant’s mark in order to attract consumers to a website offering links to competing third-party websites in order to profit from those links. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). Thus, the Panel finds that Respondent registered and uses the <alakskaair.com>, <alaskeair.com>, <alasksaair.com>, and <horizanair.com> disputed domain names in bad faith pursuant to Policy  4(b)(iv) when attracting consumers and financially profiting from the confusion between the disputed domain name and registered mark.

Complainant claims that Respondent’s typosquatting behavior is evidence of bad faith in and of itself. Previous panels have found bad faith in typosquatting when a respondent creates a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site through respondent’s use of the domain name. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel, therefore, finds that Respondents use of typosquatting is bad faith use and registration.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <alakskaair.com>, <alaskeair.com>, <alasksaair.com>, and <horizanair.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

                                                                       

                                                                        John J. Upchurch, Panelist

                                                                        Dated:  April 10, 2013

 

 

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