Aero California S.A. DE C.V. v. Franco
Peduto
Claim
Number: FA0504000464578
Complainant is Aero California S.A. DE C.V. (“Complainant”),
represented by David H. Coburn, of Steptoe & Johnson LLP,
1330 Connecticut Ave. NW, Washington, DC 20036. Respondent is Franco
Peduto (“Respondent”), Box 103, Asti, AT, IT.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <aerocalifornia.org>, registered with Bizcn.com.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
18, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 22, 2005.
On
April 21, 2005, Bizcn.com confirmed by e-mail to the National Arbitration Forum
that the domain name <aerocalifornia.org> is registered with Bizcn.com
and that Respondent is the current registrant of the name. Bizcn.com has verified that Respondent is
bound by the Bizcn.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
April 25, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 16, 2005 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@aerocalifornia.org by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
May 18, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Sandra Franklin
as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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 <aerocalifornia.org>
domain name is identical to Complainant’s AERO CALIFORNIA mark.
2. Respondent does not have any rights or
legitimate interests in the <aerocalifornia.org> domain name.
3. Respondent registered and used the <aerocalifornia.org>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Aero California S.A. DE C.V., is a well-known provider of air transportation
services within Mexico and between the United States and Mexico for passengers,
mail and property. Aero California has
provided these services under the AERO CALIFORNIA mark since as early as 1982.
Complainant
holds a registration with the United States Patent and Trademark Office for the
AERO CALIFORNIA mark (Reg. No. 2,328,013 issued March 14, 2000).
Respondent
registered the <aerocalifornia.org> domain name on September 1,
2004. Respondent is using the disputed
domain name to divert Internet users to a website that offers links to services
that are in direct competition with Complainant’s business.
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
asserted in this proceeding that it has rights in the AERO CALIFORNIA mark
through registration with the United States Patent and Trademark Office. The Panel finds that registration of
Complainant’s mark is prima facie evidence that Complainant has rights
in the mark pursuant to Policy ¶ 4(a)(i).
See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb.
Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a
presumption that they are inherently distinctive and have acquired secondary
meaning.”); see also 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. The respondent has the burden of refuting this assumption).
The <aerocalifornia.org>
domain name registered by Respondent is identical to Complainant’s AERO
CALIFORNIA mark because the domain name incorporates Complainant’s mark in its
entirety, and merely omits the space between word “Aero” and the word
“California.” The omission of the space
in the mark is insufficient to negate the fact that Respondent’s domain name is
identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Shirmax Retail Ltd. v. CES Mktg Group
Inc., AF-0104 (eResolution Mar. 20, 2000) (refusing to interpret Policy ¶
4(a)(i) in the conjunctive rather than disjunctive sense in holding that “mere
identicality of a domain name with a registered trademark is sufficient to meet
the first element [of the Policy], even if there is no likelihood of confusion
whatsoever”); see also Porto
Chico Stores, Inc. v. Otavio Zambon, D2000-1270 (WIPO Nov. 15, 2000)
(stating that the issue of identicality or confusing similarity is to be
resolved “by comparing the trademark and the disputed domain name, without
regard to the circumstances under which either may be used”); see also Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16,
2000) (finding that the domain name <wembleystadium.net> is identical to
the WEMBLEY STADIUM mark).
Furthermore, the
addition of the generic top-level domain “.org” to Complainant’s registered
AERO CALIFORNIA mark is irrelevant in determining confusing similarity and does
not distinguish the domain name pursuant to Policy ¶ 4(a)(i). See Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar); see also Microsoft Corp.
v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name
<microsoft.org> was identical to the complainant’s mark); see also Koninklijke Philips Elecs. NV v. Goktas,
D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name
<philips.org> was identical to the complainant’s PHILIPS mark); see
also BMW AG v. Loophole,
D2000-1156 (WIPO Oct. 26, 2000) (finding that there was “no doubt” that the
domain name <bmw.org> was identical to the complainant’s well-known and
registered BMW trademarks).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent has no rights or legitimate interests in the <aerocalifornia.org>
domain name, containing Complainant’s AERO CALIFORNIA mark in its
entirety. Once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to show that it does have rights to or legitimate interests in the domain
name. Thus, due to Respondent’s failure
to respond to the Complaint, the Panel assumes that Respondent does not have
rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant
has asserted that the respondent has no rights or legitimate interests with
respect to the domain name, it is incumbent on the 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
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(finding that once the complainant asserts that the respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to the
respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure
to respond can be construed as an admission that they have no legitimate
interest in the domain names).
Furthermore, the
Panel finds that Complainant has made the prima facie showing. Therefore, since Respondent has not
responded to the Complaint, the Panel is entitled to accept all reasonable
allegations and inferences in the Complaint as true. See Bayerische Motoren Werke AG v. Bavarian AG,
FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that, in the absence of a
response, the panel is free to make inferences from the very failure to respond
and assign greater weight to certain circumstances than it might otherwise do);
see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc.,
FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure
to respond allows all reasonable inferences of fact in the allegations of the
complaint to be deemed true).
Respondent is
using the <aerocalifornia.org> domain name to redirect Internet
users to a website that offers links to services that are in direct competition
with Complainant’s business. The Panel
assumes that Respondent earns pay-per-click fees for linking users to the
featured website. Respondent’s use of a
domain name that is confusingly similar to Complainant’s AERO CALIFORNIA mark
to divert Internet users interested in Complainant’s products and services to a
commercial website that offers links to Complainant’s competitors is not in
connection with 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). See
eBay Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that
the "use of Complainant’s entire mark in infringing domain names makes it
difficult to infer a legitimate use"); see also Disney Enters.,
Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that
the respondent’s diversionary use of the complainant’s mark to attract Internet
users to its own website, which contained a series of hyperlinks to unrelated
websites, was neither a bona fide offering of goods or services nor a
legitimate noncommercial or fair use of the disputed domain names); see also
Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb.
Forum June 24, 2002) (holding that the respondent’s use of the disputed domain
name to redirect Internet users to commercial websites, unrelated to the
complainant and presumably with the purpose of earning a commission or
pay-per-click referral fee did not evidence rights or legitimate interests in
the domain name).
Complainant
asserts that Respondent has no relationship with the <aerocalifornia.org>
domain name and that Complainant has not authorized Respondent to use
Complainant’s well-known AERO CALIFORNIA mark.
Complainant insists that it has had no connection with Respondent. Since Respondent has failed to provide any
evidence establishing that it is commonly known by the disputed domain name,
the Panel finds that Respondent has not established rights or legitimate
interests in 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 interests
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).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <aerocalifornia.org> domain name to intentionally
attract Internet users interested in searching for Complainant’s business that
inadvertently type the generic top-level domain “.org” instead of “.com.” Additionally, Respondent presumably benefits
from these diversions through referral fees from links to other commercial
websites, some of which are in competition with Complainant. Therefore, the Panel determines that Respondent’s
attempts to divert Internet users for commercial gain by attracting Internet
users to Respondent’s website through a likelihood of confusion with
Complainant’s mark is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that the respondent registered and used the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov.
22, 2002) (finding that if the respondent profits from its diversionary use of
the complainant's mark when the domain name resolves to commercial websites and
the respondent fails to contest the complaint, it may be concluded that the
respondent is using the domain name in bad faith pursuant to Policy ¶
4(b)(iv)); see also Drs. Foster
& Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where the respondent directed Internet users seeking the
complainant’s site to its own website for commercial gain).
Complainant uses
its AERO CALIFORNIA mark to market and provide a wide variety of services,
including air transportation for passengers, mail and property. Respondent is using the <aerocalifornia.org>
domain name to link to websites that offer competing services. Thus, the Panel finds that Respondent’s use
of a domain name identical to Complainant’s registered marks to offer, inter
alia, services in direct competition with Complainant is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iii). See 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); see also
EthnicGrocer.com, Inc. v. Unlimited Latin
Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation
from the complainant's marks suggests that the respondent, the complainant’s
competitor, registered the names primarily for the purpose of disrupting the
complainant's business).
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 <aerocalifornia.org> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
May 31, 2005
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