Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Kiansu Thoi
Claim Number: FA1301001482121
Complainant is Alaska Air Group, Inc. and its subsidiary, Alaska Airlines (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Kiansu Thoi (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <herizonair.com>, <hoizonair.com>, <horisonair.com>, <horizinair.com>, <horrizonair.com>, <horzionair.com>, and <horzonair.com>, registered with DOMAIN.COM, LLC.
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 January 25, 2013; the National Arbitration Forum received payment on January 25, 2013.
On January 28, 2013, DOMAIN.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <herizonair.com>, <hoizonair.com>, <horisonair.com>, <horizinair.com>, <horrizonair.com>, <horzionair.com>, and <horzonair.com> domain names are registered with DOMAIN.COM, LLC and that Respondent is the current registrant of the names. DOMAIN.COM, LLC has verified that Respondent is bound by the DOMAIN.COM, LLC 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 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 19, 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@herizonair.com, postmaster@hoizonair.com, postmaster@horisonair.com, postmaster@horizinair.com, postmaster@horrizonair.com, postmaster@horzionair.com, and postmaster@horzonair.com. Also on January 30, 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 February 27, 2013, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <herizonair.com>, <hoizonair.com>, <horisonair.com>, <horizinair.com>, <horrizonair.com>, <horzionair.com>, and <horzonair.com> domain names, the domain names at issue, are confusingly similar to Complainant’s HORIZON AIR mark.
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and used the domain names at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant utilizes its HORIZON AIR mark in connection with travel information and reservations activities including tour packages. Complainant owns United States Patent & Trademark Office (“USPTO”) trademark registrations for the HORIZON AIR mark. See, e.g., Reg. No. 2,240,963 registered on Apr. 20, 1999; Reg. No. 3,118,834 registered Jul. 25, 2006. Respondent formed each of the disputed domain names by either adding, substituting, or deleting a single character in the HORIZON AIR mark. The addition of the generic top-level domain (“gTLD”) “.com” to these domain names does nothing to negate confusing similarity. Respondent is not now nor has ever been commonly known by any of the disputed domain names. The WHOIS information suggests that Respondent is known by something other than the domain names. Respondent has not been sponsored by or otherwise have an affiliation with Complainant and Complainant has not otherwise permitted Respondent to use its marks in domain names. Respondent is not using the domain names in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Respondent’s domain names all resolve to inactive websites. Respondent is engaged in typosquatting, which is apparent from the fact that each of the domain names embodies common misspellings of the HORIZON AIR mark. Respondent is a recalcitrant, serial typosquatter. A search through NAF and WIPO databases reveals that Respondent has engaged in an ongoing pattern of such conduct. Respondent’s inactive use of the domain name constitutes bad faith use and registration. Respondent’s typosquatting behavior is in itself evidence of a bad faith use and registration.
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.”).
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.” The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any 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.”
The two Complainants in this matter are Alaska Air Group, Inc., and Alaska Airlines. Complainant states that Alaska Airlines is a subsidiary entity to the Alaska Air Group, Inc. Complainants argue that they together own the marks at issue and have spent millions of dollars in advertisement and promotion of the mark.
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 uncontroverted evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and the Panel will treat them all as a single entity in this proceeding.
Identical or Confusingly Similar
Complainant has USPTO trademark registrations for the HORIZON AIR mark. See, e.g., Reg. No. 2,240,963 registered on Apr. 20, 1999; Reg. No. 3,118,834 registered Jul. 25, 2006. USPTO registration is a satisfactory showing of rights under the Policy, even though Respondent is located in Vietnam. See 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.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, Complainant has rights in the HORIZON AIR mark pursuant to Policy ¶ 4(a)(i).
Respondent formed each of the disputed domain names by either adding, substituting, or deleting a single character in the HORIZON AIR mark. The addition of the gTLD “.com” to these domain names does nothing to negate confusing similarity. The Panel notes that each of the <herizonair.com>, <hoizonair.com>, <horisonair.com>, <horizinair.com>, <horrizonair.com>, <horzionair.com>, and <horzonair.com> domain names are created by single-character alterations to the HORIZON AIR mark, deleting the spacing from the HORIZON AIR mark, and featuring a gTLD. Such alterations are trivialities that fail to pierce through the confusing similarity between the domain name and the mark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). Therefore, all of the disputed domain names are confusingly similar to the HORIZON AIR 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.”).
Complainant has not permitted Respondent to use its mark, nor has Respondent been sponsored or granted an affiliation with Complainant. All of the domain names are registered to one “Kiansu Thoi.” Previous panels have concluded that a respondent is not commonly known by a disputed domain name when nothing in the record can illustrate a connection. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Accordingly, Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii).
Respondent is not using the domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use based on the fact that Respondent’s domain names all resolve to inactive websites. All of the domain names resolve to a blank white screen. Previous panels have concluded that there cannot be a legitimate noncommercial use or bona fide offering of goods or services behind a respondent’s decision to host a blank webpage at a domain name’s resolving website. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Accordingly, Respondent’s disputed domain names cannot constitute a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use in hosting blank webpages.
Respondent is engaged in a classic example of typosquatting. This is apparent from the fact that each of the domain names embodies common misspellings of the HORIZON AIR mark. All of the domain names are intentional misspellings of the HORIZON AIR mark, and therefore illustrate that Respondent is devoid of rights or legitimate interests under Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
A search through NAF and WIPO databases reveals that Respondent has engaged in an ongoing pattern of such conduct. The Panel notes that Complainant has provided copies of these UDRP decisions. See Charming Shoppes, Inc. v. Kiansu Thoi, FA 1347369 (Nat. Arb. Forum Nov. 2, 2010); REDCATS USA, L.P v. Kiansu Thoi, FA 1446418 (Nat. Arb. Forum June 25, 2012). Previous UDRP decisions can be sufficient to illustrate a respondent’s bad faith use and registration of the disputed domain name. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Respondent’s inactive use of the domain name constitutes bad faith use and registration because previous panels have found that bad faith does not require a positive act on the part of the respondent. Respondent has registered these domain names for over half a decade, yet the domain names resolve to blank webpages. The Panel agrees that Respondent’s inactive use after such a long period of time illustrates a bad faith use and registration under Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent is a recalcitrant, serial typosquatter. Complainant concludes by arguing that Respondent’s typosquatting behavior is in itself evidence of a bad faith use and registration. All of the disputed domain names are the product of a common misspelling of the HORIZON AIR mark. This typoquatting behavior illustrates bad faith use and registration. See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’ . . . through Respondent’s persistent practice of ‘typosquatting’”). Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iiii).
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 <herizonair.com>, <hoizonair.com>, <horisonair.com>, <horizinair.com>, <horrizonair.com>, <horzionair.com>, and <horzonair.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 4, 2013
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