America West Airlines, Inc. v. Ilyoup Paik a/k/a David Sanders
Claim Number: FA0310000206396
Complainant is America West Airlines, Inc. (“Complainant”), represented by Bruce E. Samuels, of Lewis and Roca, LLP 40 N. Central Avenue, Phoenix, AZ 85004. Respondent is Ilyoup Paik a/k/a David Sanders (“Respondent”) 378 North Dixie Avenue, Layton, Utah 80488.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <awvacations.com>, registered with OnlineNic, Inc.
The undersigned certifies that he acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 30, 2003; the Forum received a hard copy of the Complaint on November 3, 2003.
On November 3, 2003, OnlineNic, Inc. confirmed by e-mail to the Forum that the domain name <awvacations.com> is registered with OnlineNic, Inc. and that Respondent is the current registrant of the name. OnlineNic, Inc. has verified that Respondent is bound by the OnlineNic, Inc. 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 November 7, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 28, 2003 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 email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On December 8, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 <awvacations.com> domain name is confusingly similar to Complainant’s AMERICA WEST VACATIONS mark.
2. Respondent does not have any rights or legitimate interests in the <awvacations.com> domain name.
3. Respondent registered and used the <awvacations.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
America West Airlines has operated since August 1, 1983. Today it is the ninth largest airline, offering coast-to-coast service, including service to 92 destinations across the U.S., Mexico, and Canada. In 1990, America West began arranging travel tours under the mark America West Vacations.
America West holds many registrations with the United States Patent and Trademark Office (“USPTO”), including AMERICA WEST AIRLINES (Reg. Nos. 1376326, 2065046, 2081265, in use since 1983), AMERICA WEST (Reg. No. 1445610, in use since 1983), and AMERICA WEST VACATIONS (Reg. No. 2361406, in use since 1990). It holds the domain name registrations in the <americawestvacations.com> and <americawest.com> websites.
Respondent registered the domain name <awvacations.com> on September 5, 2002. This domain name resolved in the <farespace.com> website, which displays various links to on-line airline reservation sites including Orbitz, Priceline, and Hotwire.
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."
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.
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.
Complainant has rights in the AMERICA WEST VACATIONS mark. Complainant has held trademark registrations with the USPTO for the AMERICA WEST VACATIONS mark at least since 2000, first using the mark in commerce in 1990.
Respondent’s <awvacations.com> domain name is confusingly similar to Complainant’s AMERICA WEST VACATIONS mark. The difference between the two is the shortening of “America West” into “AW.” Airlines commonly abbreviate their marks in creating domain names (e.g. <aa.com>, <nwa.com>, <ual.com>). A domain name that partially abbreviates a mark does not distinguish it from the trademark. See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Coca-Cola Co. v. Busch, 44 F.Supp. 405, 410 (E.D.Pa. 1942) (“the abbreviation of the trade-mark which the public has used and adopted as designating the product of the [trademark owner] is equally as much to be protected as the trademark itself”).
Accordingly, the Panel finds that the <awvacations.com> domain name is confusingly similar to Complainant’s AMERICA WEST VACATIONS mark under Policy ¶ 4(a)(i).
In light of Respondent’s failure to respond to this Complaint, the Panel accepts all reasonable allegations to be true. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with Respondent to demonstrate that it has rights or legitimate interests).
Using a domain name that is confusingly similar to Complainant’s mark, Respondent refers Internet use to online ticket brokers. Respondent is not licensed to use this mark, nor is this use fair within the meaning of the Policy. Complainant alleges that Respondent’s use of the domain name encumbers its ability to sell airline tickets. Respondent’s use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services).
Respondent has registered the domain name under the name “Ilyoup Paik a/k/a David Sanders.” Given the WHOIS domain name registration information, Respondent is not commonly known by the domain name. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered and used the <awvacations.com> domain name to create a likelihood of confusion with Complainant’s AMERICA WEST VACATIONS mark for commercial gain. Internet users who go to the domain are redirected to <farespace.com>, which Complainant alleges is a competitor. Additionally, because the resultant website offers the same services and products of the Complainant, the Panel can infer that Respondent had notice of Complainant’s right in the mark. Respondent has registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv). See Northwest Airlines, Inc. v. Koch, FA 95688 (Nat. Arb. Forum Oct. 27, 2000) (“the selection of a domain name <northwest-airlines.com> which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith”); see also Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy 4(b)(iv)); see also America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same chat services via his website as Complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <awvacations.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 22, 2003
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