America West Airlines v. Yong Li
Claim
Number: FA0311000208018
Complainant is America West Airlines (“Complainant”), represented
by Christy Hubbard, of Lewis and Roca LLP,
40 N. Central Avenue, Phoenix, AZ 85004.
Respondent is Yong Li (“Respondent”), P.O. Box 904, Beijing, China
100029.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <americanwestvacations.com> and <amwestair.com>,
registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com
(hereinafter “Dotregistrar.Com”)
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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on November 3, 2003; the Forum received a hard copy of the
Complaint on November 6, 2003.
On
November 4, 2003, Dotregistrar.Com confirmed by e-mail to the Forum that the
domain names <americanwestvacations.com> and <amwestair.com>
are registered with Dotregistrar.Com and that Respondent is the current
registrant of the names. Dotregistrar.Com has verified that Respondent is bound
by the Dotregistrar.Com 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@americanwestvacations.com and
postmaster@amwestair.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 6, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <americanwestvacations.com>
and <amwestair.com> domain names are confusingly similar to
Complainant’s AMERICA WEST VACATIONS and AMERICA WEST AIRLINES marks.
2. Respondent does not have any rights or
legitimate interests in the <americanwestvacations.com> and <amwestair.com>
domain names.
3. Respondent registered and used the <americanwestvacations.com>
and <amwestair.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
America West Airlines, has registered a series of marks incorporating its
AMERICA WEST mark (U.S. Reg. No. 1,445,610) on the Principal Register of the
U.S. Patent and Trademark Office, including the AMERICA WEST AIRLINES mark (e.g.
U.S. Reg. No. 1,376,326, registered on December 17, 1985) and the AMERICA
WEST VACATIONS mark (e.g. U.S. Reg. No. 2,361,406, registered on June
27, 2000). Complainant has operated air transportation services under its
AMERICA WEST marks since 1983, and is currently the ninth largest commercial
air carrier in the United States. Since 1990, Complainant has expanded its air
transportation services to include the arrangement of travel tours under the
AMERICA WEST VACATIONS mark. Complainant has spent millions of dollars
promoting these registered marks.
Respondent, Yong
Li, registered the <americanwestvacations.com> and <amwestair.com>
domain names on July 1, 2002, and June 21, 2002, respectively. Respondent uses
the disputed domain names to either direct users to the
<super-casino.com> domain name, which sells subscriptions to online
casinos, or to the <vipfares.com> domain name, which sells travel
packages that compete with those provided under the AMERICA WEST VACATIONS
mark. Pop-up advertising is also hosted at the <americanwestvacations.com>
domain name.
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
established rights in the AMERICA WEST VACATIONS and AMERICA WEST AIRLINES
marks through registration of the marks on the Principal Register of the U.S.
Patent and Trademark Office, as well as through widespread use of the marks in
commerce. Complainant’s registrations of the marks in the United States are
sufficient to prove that it has rights in the marks under the Policy, despite
the fact that Respondent is from China. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption); see also Koninklijke
KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the
Policy does not require that the mark be registered in the country in which
Respondent operates. It is sufficient
that Complainant can demonstrate a mark in some jurisdiction).
Respondent’s <americanwestvacations.com>
domain name is confusingly similar to Complainant’s AMERICA WEST VACATIONS
mark. Respondent has merely added the letter “n” to the word “America,” a
slight alteration of Complainant’s mark that does nothing to dispell any
confusing similarity between the mark and the disptued domain name. See Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding that
Respondent’s domain name, <americanonline.com>, is confusingly similar to
Complainant’s famous AMERICA ONLINE mark); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18,
2000) (finding that, by misspelling words and adding letters to words, a
Respondent does not create a distinct mark but nevertheless renders the domain
name confusingly similar to Complainant’s marks).
Respondent’s <amwestair.com>
domain name is confusingly similar
to Complainant’s AMERICA WEST AIRLINES mark. Here, Respondent has used the
popular abbreviations for the words “America” (namely, “Am”) and “Airlines”
(namely, “Air”). By abbreviating Complainant’s mark, Respondent has not created
a domain name that is sufficiently dissimilar from Complainant’s mark to
overcome a finding for Complainant on Policy ¶ 4(a)(i). 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 Minn. State Lottery v. Mendes, FA 96701
(Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain
name is confusingly similar to Complainant’s MINNESOTA STATE LOTTERY registered
mark); see also Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum
June 2, 2003) (“Notwithstanding the analysis by Respondent, ‘modprops’ is a
contraction or shorthand for ‘Modern Props.’ ‘Mod’ cononotes [sic] ‘modern’
regardless of any other dictionary meanings, so the names are substantially
similar in meaning).
Accordingly, the
Panel finds that the <americanwestvacations.com> domain name is
confusingly similar to Complainant’s AMERICA WEST VACATIONS mark and the <amwestair.com>
domain name is confusingly similar
to Complainant’s AMERICA WEST AIRLINES mark under Policy ¶ 4(a)(i).
Respondent uses
the disputed domain names to redirect Internet users to either an online casino
(from which Respondent presumably gains referral fees) or to a website which
offers travel packages which compete with Complainant’s travel packages (again,
the inference being that Respondent receives referral fees for such
misdirection). These uses of Complainant’s AMERICA WEST marks do not qualify as
a bona fide offering of goods or services, and do not rise to the level of
legitimate noncommercial or fair use of the domain names. Thus, Policy ¶¶
4(c)(i) and (iii) are not applicable in this dispute. See Imation Corp. v.
Streut, FA 125759 (Nat. Arb. Forum Nov. 8, 2002) (finding no rights or
legitimate interest where Respondent used the disputed domain name to redirect
Internet users to an online casino); see also Oly Holigan, L.P. v. Private, FA 95940 (Nat. Arb. Forum Dec. 4,
2000) (finding no rights or legitimate interest in a misspelled domain name as
Respondent was merely using it to redirect Internet users to, inter alia,
an online casino); see also TM Acquisition Corp. v. Sign Guards, FA
132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that Respondent’s diversionary
use of Complainant’s marks to send Internet users to a website which displayed
a series of links, some of which linked to competitors of Complainant, was not
a bona fide offering of goods or services)
The fact that Respondent appears to be known only as “Yong Li” and has submitted no evidence to the Panel
contradicting this appearance permits the Panel to infer that Respondent is not
“commonly known by” the disputed domain names, rendering Policy ¶ 4(c)(ii)
inapplicable in this dispute as well. 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 RMO, Inc. v.
Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require
a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail").
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<americanwestvacations.com> and <amwestair.com> domain names under Policy ¶ 4(a)(ii).
Both of the
disputed domain names bear a very strong resemblance to Complainant’s family of
AMERICA WEST marks. This, coupled with Complainant’s widespread use of its
marks and its successful registration of the marks, compells the Panel to infer
that Respondent intentionally attempted to capitalize on the goodwill
surrounding Complainant’s marks when it registered the disputed domain names.
By using the disputed domain names to misdirect Internet users to online
casinos and websites which offer commercial travel packages, Respondent
appropriated the goodwill of Complainant’s marks for commercial gain. Thus, as
Respondent is intentionally attempting to attract Internet users to these
commercial websites through the creation of a likelihood of confusion with
Complainant’s marks, Respondent’s registration and use of the disputed domain
names equates to bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum
June 3, 2003) (“Since the disputed domain names contain entire versions of Complainant’s
marks and are used for something completely unrelated to their descriptive
quality, a consumer searching for Complainant would become confused as to
Complainant’s affiliation with the resulting search engine website” in holding
that the domain names were registered and used in bad faith pursuant to Policy
¶ 4(b)(iv)); see also Am. Online,
Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000)
(finding bad faith where Respondent registered and used an infringing domain
name to attract users to a website sponsored by Respondent).
The Panel thus
finds that Respondent registered and used the <americanwestvacations.com>
and <amwestair.com> domain
names in bad faith, and that Policy ¶ 4(a)(iii) is 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 <americanwestvacations.com> and <amwestair.com>
domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf, (Ret.) Panelist
Dated:
December 29, 2003
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