National Arbitration Forum

 

DECISION

 

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, California, USA.  Respondent is Bigfoot Ventures Ltd. (“Respondent”), represented by Jeffrey W. Berkman, New York, USA.

 

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 May 30, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 30, 2008.

 

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 June 27, 2008.

 

 

On July 2, 2008, 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.

 

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 Latin America and around the world.  It claims to have continuously used the VTP mark in connection with travel packages since at least December of 1977 and claims common law trademark use from that date.  Complainant asserts it has invested substantial resources in marketing its products and services under its VTP mark.  Over the past three years, Complainant states it has sold over 300,000 travel packages through the website resolving to its <vtp.com.mx> domain name.  Complainant has provided the Panel with copies of advertisements for Complainant’s products and services containing its VTP mark.   In addition, Complainant has secured registration of the mark in many countries commencing with Costa Rica in August of 1997. Complainant states that it has not authorized the Respondent to use the VTP mark, that Respondent is not commonly known by the <vtp.com> domain and that the Respondent’s website, in part, profits from click through travel related referrals to competitors of Complainant.  Finally, Complainant notes that Respondent is advertising the domain name at issue for sale for $148,000, thus further indicating bad faith registration and use.

 

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.

 

Identical and/or Confusingly Similar

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 Costa Rica on August 20, 1997.  Additionally, Complainant has provided evidence of the registration of its VTP mark with the United States Patent and Trademark Office (“USPTO”) on July 19, 2005 (Reg. No. 2,970,100) and with multiple other governmental authorities including; Australia, Canada, Chile, Colombia, Ecuador, El Salvador, Honduras, New Zealand and the European Union.  These registrations sufficiently establish Complainant’s rights in its VTP mark pursuant to Policy ¶ 4(a)(i).  See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).

 

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 December 15, 1977.  The evidence of this common law use in the Complaint is non-existent and such a claim should have been supported by dated exemplars and/or an affidavit or declaration, at a minimum.  Complainant states it is in the business of travel services to and from Mexico and the Latin America region.  Complainant asserts it has invested substantial resources in marketing its products and services under its VTP mark.  Over the past three years, Complainant states it has sold over 300,000 travel packages through its <vtp.com.mx> domain name. Notwithstanding the weak case presented by Complainant as to common law trademark rights, it appears that it had Costa Rican rights in VTP prior to the original registration of the domain name at issue.

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

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 July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

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 Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).

 

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 July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).

 

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: July 14, 2008

 

 

 

 

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