Compania Mexicana de
Aviacion, S.A. de C.V. d/b/a Mexicana Airlines v. Bigfoot Ventures LLC
Claim Number: FA0805001195961
PARTIES
Complainant is Compania Mexicana de Aviacion, S.A. de
C.V. d/b/a Mexicana Airlines (“Complainant”), represented by Edward A. Schlatter, of Knobbe Martens Olson & Bear LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vtp.com>, registered with Domaindiscover.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On June 2, 2008, Domaindiscover confirmed by e-mail to the
National Arbitration Forum that the <vtp.com> domain name is registered
with Domaindiscover and the Respondent is
the current registrant of the name. Domaindiscover has verified Respondent is bound
by the Domaindiscover 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 June 9, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 30, 2008 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@vtp.com by e-mail.
A timely Response was received and determined to be complete on
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <vtp.com> domain name is identical to Complainant’s VTP mark.
2. Respondent does not have any rights or legitimate interests in the <vtp.com> domain name.
3. Respondent registered and used the <vtp.com> domain name in bad faith.
B. Respondent makes the following assertions:
1. Respondent disputes that Complainant has satisfied Policy 4(a)(i) because it has not proven that it had superior rights in the VTP mark prior to registration of the domain name at issue by Respondent’s predecessor in interest.
2. Respondent has rights and legitimate interests in the domain name at issue.
3. Respondent registered and has used the domain name at issue in good faith.
FINDINGS
Complainant does business as Mexicana
Airlines and has done so for 85 years in
Respondent points out that the original
registrant of <vtp.com> did so
in January of 1998 at a point in time when Complainant had only obtained a
Costa Rican trademark registration. Also, Respondent takes issue with the
unsupported claim of common law trademark status prior to the Costa Rican
registration. Respondent purchased this domain name at issue in May of 2008 in
a bulk sale of domain names and disavows any knowledge of Complainant’s use of
the mark VTP prior to purchase of the domain name at issue. As to rights and legitimate interests, it
appears that the website associated with the domain name at issue has been
parked for the short time since the domain was purchased by Respondent in May
of this year. As to bad faith
registration and use, Respondent asserts lack of knowledge of any of
Complainant’s registrations or its common law use.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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 contends that Respondent’s <vtp.com> domain
name is identical to Complainant’s VTP mark. Respondent’s
disputed domain name includes Complainant’s mark in its entirety, adding only the
generic top-level domain (“gTLD”) “.com.” The addition a gTLD is
irrelevant in distinguishing a disputed domain name from a mark. See SCOLA
v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the
domain name at issue is identical to [the] complainant’s SCOLA mark, as the
only alteration to the mark is the addition of the generic top-level domain
“.com.”); see also W. Union Holdings, Inc. v. XYZ, D2005-0945 (WIPO Oct.
20, 2005) (finding <wuib.com> identical to the complainant’s mark because
the generic top-level domain (gTLD) “.com” after the name WUIB is part of the
Internet address and does not add source-identifying significance). The
Panel finds the disputed domain name is identical to Complainant's VTP mark.
Complainant has evidenced the
registration of its VTP mark with the Registry of Intellectual Property in
Additionally,
Complainant alleges it has acquired common law rights in its VTP mark dating
back to 1977. Complainant
contends it has continuously used its VTP mark in connection with travel
packages, air travel and travel booking services since
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(a)(ii),
and then the burden shifts to Respondent to show it does have rights or
legitimate interests in the disputed domain name. 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.”).
The Panel finds that the Complainant has made its prima facia case.
Respondent is not commonly known by the <vtp.com> domain name. The WHOIS information lists Respondent as “Bigfoot Ventures LLC,” and Complainant states it has not authorized Respondent to use its VTP mark. Therefore, Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Complainant has provided the Panel with evidence of the content resolving from the disputed domain name, and the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business. Respondent’s use of the disputed domain name is not 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). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
In addition, the
website resolving from the disputed domain name contains a link entitled “The
domain vtp.com is for sale….”
Complainant has provided evidence that this link redirects the Internet
user to a website which offers the disputed domain name for sale at a price of
$148,000. Respondent’s offer to sell the
disputed domain name demonstrates Respondent lacks rights and legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v.
Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under
the circumstances, the respondent’s apparent willingness to dispose of its
rights in the disputed domain name suggested that it lacked rights or
legitimate interests in the domain name); see
also Hewlett-Packard Co. v. High
Performance Networks, Inc., FA 95083 (Nat. Arb. Forum
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name
displays a link offering the disputed domain name for sale for $148,000. Under the circumstances, Respondent’s use of
the disputed domain name in this manner is evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v.
AchievementTec, Inc., FA 192316 (Nat. Arb. Forum
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). See H-D
Michigan Inc. v. Buell, FA 1106640
(Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names
resolve to websites that list links to competitors of Complainant, evidence
that Respondent intends to disrupt Complainant’s business, a further indication
of bad faith pursuant to Policy ¶ 4(b)(iii).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
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 <vtp.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
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