Aero California S.A. DE C.V. v.
Domainmonkey-1144 c/o DNS Administrator
Claim
Number: FA0504000464590
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 Domainmonkey-1144 c/o DNS Administrator (“Respondent”), Modern Empire Internet Ltd.,
26H Block 7 Beverly Garden, Tseung Kwan O NA NA, HK.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <aerocalifornia.net>, registered with Domain
Monkeys Llc
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically April
18, 2005; the National Arbitration Forum received a hard copy of the Complaint April
22, 2005.
On
April 19, 2005, Domain Monkeys Llc confirmed by e-mail to the National
Arbitration Forum that the domain name <aerocalifornia.net> is
registered with Domain Monkeys Llc and that Respondent is the current
registrant of the name. Domain Monkeys Llc verified that Respondent is bound by the Domain Monkeys Llc registration
agreement and thereby has 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 28, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 18, 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.net 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 24, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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. The domain name that Respondent
registered, <aerocalifornia.net>, is identical to Complainant’s
AERO CALIFORNIA mark.
2. Respondent has no rights to or legitimate
interests in the <aerocalifornia.net> domain name.
3. Respondent registered and used the <aerocalifornia.net>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Aero California S.A. DE C.V. (“Aero California”), is a well-known provider of
air transportation services within Mexico and between Mexico and the United
States. Aero California has provided these services under the AERO CALIFORNIA
mark since 1982 in Mexico and has used the mark in commerce in the United
States since 1989.
Complainant’s
mark has become famous and recognized in the United States and Mexico, and is
relied upon by the trade and public as identifying Complainant from others.
Complainant registered the AERO CALIFORNIA mark with the United States Patent
and Trademark Office (“USPTO”) (Reg. No. 2,325,491 issued March 7, 2000).
Complainant also registered the mark with the Mexican Industrial Property
Office in 1998.
Respondent
registered the <aerocalifornia.net> domain name on August 18,
2004. The disputed domain name resolves to a website that features links to
competing services, products.
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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 to 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 established
using extrinsic proof in this proceeding that it has rights in the AERO
CALIFORNIA mark through registration of the mark with the USPTO and by
continuous use of the mark in commerce since 1982. See Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark); see also 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.”).
The domain name
that Respondent registered, <aerocalifornia.net>, is identical to
Complainant’s AERO CALIFORNIA mark. The mere addition of the generic top-level
domain “.net” is not enough to distinguish Respondent’s domain name from
Complainant’s mark pursuant to Policy ¶ 4(a)(iii). See Kabushiki Kaisha Toshiba v. Shan Computers,
D2000-0325 (WIPO June 27, 2000) (finding that the domain name
<toshiba.net> is identical to Complainant’s trademark TOSHIBA); see also Little Six, Inc. v. Domain For Sale, FA
96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is
plainly identical to Complainant’s MYSTIC LAKE trademark and service mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established its rights and interests and alleges that Respondent has no such
rights. Respondent failed to respond to
the Complaint. Thus, the Panel accepts all reasonable allegations and
assertions set forth by Complainant as true and accurate. See Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In
the absence of a response, it is appropriate to accept as true all allegations
of the Complaint.”).
Complainant
asserts that Respondent has no rights or legitimate interests in the disputed
domain name and Respondent, in not submitting a response, failed to rebut this
assertion. Thus, the Panel interprets Respondent’s failure to respond as evidence
that Respondent lacks rights and legitimate interests in the <aerocalifornia.net>
domain name pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
Respondent is
using the <aerocalifornia.net> domain name, which is identical to
Complainant’s AERO CALIFORNIA mark, to operate a website that features links to
competing products and services. Such competing use is not a use in connection
with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and
it is not a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat.
Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed
domain name to redirect Internet users to a financial services website, which
competed with the complainant, was not a bona fide offering of goods or
services); see also Winmark Corp. v. In The Zone, FA 128652 (Nat. Arb.
Forum Dec. 6, 2002) (finding that the respondent had no rights or legitimate
interests in a domain name that used the complainant’s mark to redirect
Internet users to a competitor’s website).
Furthermore,
nothing in the record indicates that Respondent is commonly known by the <aerocalifornia.net>
domain name and Complainant alleges that it has not authorized Respondent to
register domain names featuring Complainant’s AERO CALIFORNIA mark. Respondent
has offered no proof of rights or license to use the mark. Thus, the Panel concludes that Respondent
has not established legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See 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); see
also Tercent Inc. v. Lee 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
alleges that Respondent acted in bad faith in registering and using a domain
name containing Complainant’s protected mark.
Respondent is using the <aerocalifornia.net> domain name,
which is identical to Complainant’s AERO CALIFORNIA mark, to operate a website
that features links to competing services and products. The Panel finds that
such competing use constitutes disruption and is evidence that Respondent
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(a)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business); see
also Puckett v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business
from Complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
competing air-travel providers. Since Respondent’s domain name is identical to
Complainant’s AERO CALIFORNIA mark, consumers accessing Respondent’s domain
name may be wrongfully confused as to an implication that Complainant is
affiliated with the resulting website. Thus, Respondent’s commercial use of the
domain name constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See 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 State Fair of
Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding
bad faith where the respondent registered the domain name <bigtex.net> to
infringe on the complainant’s goodwill and attract Internet users to the
respondent’s website).
Furthermore,
Respondent registered the <aerocalifornia.net> domain name with
actual or constructive knowledge of Complainant’s rights in the AERO CALIFORNIA
mark due to Complainant’s registration of the mark with the USPTO and
Complainant’s aggressive promotion of the mark in commerce. Moreover, the Panel
infers that Respondent registered the domain name with actual knowledge of
Complainant’s mark due to the obvious connection between the content advertised
on Respondent’s website and Complainant’s business. Registration of a domain
name identical to a mark, despite actual or constructive knowledge of another’s
rights in the mark, is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration); see also Orange Glo Int’l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24,
2002) (finding that because the link between the complainant’s mark and the
content advertised on the respondent’s website was obvious, the respondent
“must have known about the Complainant’s mark when it registered the subject
domain name”).
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.net> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 7, 2005
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