Independence Air, Inc. v. Tropical
Studios Maui Inc. a/k/a Mike Kerstein a/k/a This Name For Sale
Claim
Number: FA0508000538016
Complainant is Independence Air, Inc. (“Complainant”),
represented by James L. Bikoff, of Silverberg Goldman & Bikoff, LLP, 1101 30th St., N.W., Suite 120, Washington, DC 20007. Respondent is Tropical Studios Maui Inc. a/k/a Mike Kerstein a/k/a This Name For Sale (“Respondent”),
408 Front Street, Lahaina, HI 96761.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <1-independence-airlines.com>, registered
with Enom, Inc.
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 August
11, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 12, 2005.
On
August 11, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the <1-independence-airlines.com> domain name is
registered with Enom, Inc. and that Respondent is the current registrant of the
name. Enom, Inc. has verified that Respondent is bound by the Enom, 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
August 15, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 6, 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@1-independence-airlines.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 13, 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 <1-independence-airlines.com>
domain name is confusingly similar to Complainant’s INDEPENDENCE AIR mark.
2. Respondent does not have any rights or
legitimate interests in the <1-independence-airlines.com> domain
name.
3. Respondent registered and used the <1-independence-airlines.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Independence Air, Inc., is a low-fare air carrier formerly known as Atlantic
Coast Airlines. Complainant begin
operating in the United States in 1989 and has since become well-known in the
air travel industry and among its consumers.
Complainant also provides air service to forty-six cities in the United
States, employees approximately 4700 aviation professionals and had a net
income of $82.8 million for the year ending December 31, 2003.
Complainant has
registered its INDEPENDENCE AIR mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 2,972,298 issued July 19, 2004) (filing date October
24, 2003). In addition, Complainant has
several pending trademark applications.
Respondent
registered the <1-independence-airlines.com> domain name on July 4, 2005. Respondent’s domain name resolves to a
website that features links to airline and air travel services that directly
compete with those of Complainant.
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. The Panel is entitled to
accept all reasonable allegations and inferences set forth in the Complaint as
true unless the evidence is clearly contradictory. See 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; 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.”).
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
asserts that it has established rights in the INDEPENDENCE AIR mark through
registration with the USPTO. See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb.
Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO
establishes Complainant's rights in the mark.”).
Additionally, Respondent’s <1-independence-airlines.com> domain
name is confusingly similar to Complainant’s mark, as the domain name fully
incorporates Complainant’s INDEPENDENCE AIR mark in its entirety and adds the
number “1, ” the term “lines” and multiple hyphens. Such changes are not enough to overcome a finding of confusing
similarity pursuant to Policy 4(a)(i). See Gen. Elec. Co. v. Bakhit, D2000-0386 (WIPO June 22, 2000)
(finding that placing a hyphen in domain name between “General” and “Electric”
is confusingly similar to the complainant’s mark); see also Pep Boys Manny, Moe, and
Jack v. E-Commerce Today,
Ltd., AF-0145 (eResolution May 3, 2000) (finding that a hyphen between
words of the complainant’s registered mark is confusingly similar); see also Am. Online, Inc.
v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that
the respondent’s domain name <go2AOL.com> was confusingly similar to the
complainant’s AOL mark).
Furthermore, the
addition of the top-level domain “.com” is irrelevant in determining whether
the <1-independence-airlines.com> domain name is confusingly
similar to Complainant’s mark. See Blue
Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000)
(holding that the domain name <robohelp.com> is identical to the
complainant’s registered ROBOHELP trademark, and that the "addition of
.com is not a distinguishing difference"); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO
Apr. 22, 2000) (finding that "the addition of the generic top-level domain
(gTLD) name ‘.com’ is . . . without legal significance
since use of a gTLD is required of domain name registrants").
Complainant
asserts that Respondent does not have rights or legitimate interests in the <1-independence-airlines.com>
domain name. When a complainant
establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii), the burden shifts to the respondent to prove
that it has rights or legitimate interests.
Due to Respondent’s failure to respond to the Complaint, the Panel
infers that Respondent does not have rights or legitimate interests in the
disputed domain name. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once the complainant asserts that the respondent does not have 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
or legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com,
D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the
mere assertion by the complainant that the respondent does not have rights or
legitimate interests is sufficient to shift the burden of proof to the
respondent to demonstrate that such rights or legitimate interests do exist); see also 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).
Moreover,
Respondent is not commonly known by the <1-independence-airlines.com> domain name. Thus, the Panel may conclude that Respondent has not established rights
or 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 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); see also Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because respondent is not commonly
known by the disputed domain name or using the domain name in connection with a
legitimate or fair use); see also
Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug.
29, 2000) (finding that the respondent has no rights or legitimate interests in
domain names because it is not commonly known by the complainant’s marks and
the respondent has not used the domain names in connection with a bona fide offering of goods and services
or for a legitimate noncommercial or fair use).
Furthermore,
Respondent is using the <1-independence-airlines.com> domain name to operate a website that
features commercial links to Respondent’s own website. The Panel may find that Respondent’s use of
a domain name that is confusingly similar to Complainant’s mark to divert
Internet users to third-party websites for Respondent’s own commercial gain
does not constitute a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii).
See 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); see also Yahoo! Inc. v. Web Master, FA 127717
(Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a
confusingly similar domain name to operate a pay-per-click search engine, in
competition with the complainant, was not a bona
fide offering of goods or services); see
also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because the respondent's sole purpose in
selecting the domain names was to cause confusion with the complainant's
website and marks, its use of the names was not in connection with the offering
of goods or services or any other fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
third-party commercial website.
Respondent registered and used the disputed domain name in bad faith
under Policy ¶ 4(b)(iv), as Respondent is using the <1-independence-airlines.com>
domain name to intentionally attract, for commercial gain, Internet users
to its website, by creating a likelihood of confusion with Complainant as to
the source, sponsorship, affiliation or endorsement of its website. See
H-D Michigan, Inc. v. Petersons Auto,
FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name
was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the
respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet users to its fraudulent website by
using the complainant’s famous marks and likeness); see also 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).
Furthermore,
Respondent has used the <1-independence-airlines.com> domain name, which contains
Complainant’s INDEPENDENCE AIR mark, to redirect Internet users to third-party
websites featuring links to airline and air travel services that directly
compete with Complainant’s business.
This suggests that Respondent had actual knowledge of Complainant’s
rights in the mark when it registered the domain name and chose the disputed
domain name based on the goodwill Complainant has acquired in its INDEPENDENCE
AIR mark. Furthermore, Complainant’s
registration of the INDEPENDENCE AIR mark with the USPTO bestows upon
Respondent constructive notice of Complainant’s rights in the mark. Respondent’s registration of a domain name
containing Complainant’s mark in spite of Respondent’s actual or constructive
knowledge of Complainant’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 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”); 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.”).
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 <1-independence-airlines.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
September 26, 2005
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