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 postmaster@awvacations.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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