Delta Corporate Identity, Inc. and Delta
Air Lines, Inc. v Ahndongkyun Communications
Claim
Number: FA0509000557821
Complainants are
Delta Corporate Identity, Inc. and Delta Air Lines, Inc. (collectively,
“Complainant”), represented by Ryan M.
Kaatz, of Ladas & Parry, Digital Brands Practice, 224 South Michigan Avenue, Chicago,
IL 60604. Respondent is Ahndongkyun Communications (“Respondent”),
356-7, Pungsan-dong, Hanam Si, Gyeonggi-Do, 465170.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <fflysong.com>, <flysongg.com>,
<flyysong.com>, <flyssong.com>, <flysonng.com>,
and <flysoong.com>, registered with Cydentity, Inc.
d/b/a Cypack.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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on September
9, 2005; the National Arbitration Forum received a hard copy of the Complaint
on September 9, 2005. The Complaint was
submitted in both Korean and English.
On
September 12, 2005, Cydentity, Inc. d/b/a Cypack.com confirmed by e-mail to the
National Arbitration Forum that the <fflysong.com>, <flysongg.com>,
<flyysong.com>, <flyssong.com>, <flysonng.com>,
and <flysoong.com> domain names are registered with Cydentity,
Inc. d/b/a Cypack.com and that Respondent is the current registrant of the
names. Cydentity, Inc. d/b/a Cypack.com has verified that Respondent is bound
by the Cydentity, Inc. d/b/a Cypack.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
September 13, 2005, a Korean language Notification of Complaint and
Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of October 3, 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@fflysong.com, postmaster@flysongg.com, postmaster@flyysong.com, postmaster@flyssong.com,
postmaster@flysonng.com, and postmaster@flysoong.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
October 6, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Louis E.
Condon 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.
Pursuant
to Rule 11(a) the Panel determines that the language requirement has been
satisfied through the Korean language Complaint and Commencement Notification
and, absent a Response, determines that the remainder of the proceedings may be
conducted in English.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <fflysong.com>,
<flysongg.com>, <flyysong.com>, <flyssong.com>,
<flysonng.com>, and <flysoong.com> domain names are
confusingly similar to Complainant’s SONG mark.
2. Respondent does not have any rights or
legitimate interests in the <fflysong.com>, <flysongg.com>,
<flyysong.com>, <flyssong.com>, <flysonng.com>,
and <flysoong.com> domain names.
3. Respondent registered and used the <fflysong.com>,
<flysongg.com>, <flyysong.com>, <flyssong.com>,
<flysonng.com>, and <flysoong.com> domain names in
bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Co-complainant
Delta Corporate Identity, Inc. and Co-complainant Delta Air Lines, Inc., are
known collectively as a worldwide leader in air transportation services for
persons, property, and mail. Under the
diverse portfolio of brands and affiliates, Complainant’s services include
in-flight entertainment services, vacation planning services, education and
training in flight instruction and aviation sciences, and the tracking and
monitoring of baggage, cargo, mail, and freight.
One brand in
particular, Song Airlines, is a “low-fare, high style” air service, which
provides unique luxury services for low prices. In connection with these services, Complainant has registered the
SONG mark (Reg. No. 2,811,872 issued February 3, 2004) with the United States
Patent and Trademark Office (“USPTO”).
Respondent
registered the <flyssong.com> and <flysoong.com>
domain names on January 4, 2005 and the <fflysong.com>, <flysongg.com>,
<flyysong.com>, and <flysonng.com> domain names on
January 9, 2005. Each of the disputed
domain names resolve to similar web sites that feature links to various
websites offering competing airline and travel services.
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 has
established rights in the SONG mark pursuant to Policy ¶ 4(a)(i) through
registration with the USPTO. See 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.”); see also 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.”).
Complainant
contends that Respondent’s <fflysong.com>, <flysongg.com>,
<flyysong.com>, <flyssong.com>, <flysonng.com>,
and <flysoong.com> domain names are confusingly similar to
Complainant’s SONG mark. Each of the
disputed domain names feature Complainant’s mark, or some misspelled variation
thereof, along with the generic term “fly,” or some misspelled variation thereof. Furthermore, the term “fly” is descriptive
of the business in which Complainant engages.
Panels have found that the addition of descriptive terms is insufficient
to properly distinguish disputed domain names from established marks pursuant
to Policy ¶ 4(a)(i). See Space
Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding
confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business); see also Christie’s Inc. v. Tiffany’s Jewelry
Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain
name <christiesauction.com> is
confusingly similar to the complainant's mark since it merely adds the word
“auction” used in its generic sense).
Moreover, the Panel finds that the addition of letters to Complainant’s
mark or to the term “fly” is insufficient to distinguish Respondent’s domain
names from Complainant’s mark, thus rendering the domain names confusingly
similar pursuant to Policy ¶ 4(a)(i). See
Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1,
2000) (holding that the deliberate introduction of errors or changes, such as
the addition of a fourth “w” or the omission of periods or other such “generic”
typos do not change respondent’s infringement on a core trademark held by the
complainant); 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 the complainant’s marks).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent does not have rights or legitimate interests in the <fflysong.com>,
<flysongg.com>, <flyysong.com>, <flyssong.com>,
<flysonng.com>, and <flysoong.com> domain names. Once Complainant makes a prima facie
case in support of its allegations, the burden shifts to Respondent to prove
that it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). 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 names. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that, where the complainant has asserted that respondent does not have
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 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 a right or
legitimate interest does exist).
Respondent is
using the confusingly similar <fflysong.com>, <flysongg.com>,
<flyysong.com>, <flyssong.com>, <flysonng.com>,
and <flysoong.com> domain names to operate websites that feature
links to various commercial websites offering competing airline and travel
services, from which Complainant presumably receives referral fees. The Panel finds that such diversionary use
for Respondent’s own commercial gain is neither a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii).
See Bank of Am. Corp. v. Nw. Free Cmty.
Access, FA 180704 (Nat. Arb. Forum Sept.
30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking
Complainant's website to a website of Respondent and for Respondent's benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it
is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see
also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum
Dec. 6, 2003) (“Diverting customers, who are looking for products relating to
the famous SEIKO mark, to a website unrelated to the mark is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a
noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Furthermore, no
affirmative evidence has been submitted to suggest that Respondent is either
commonly known by any of the disputed domain names or authorized to register
domain names that feature Complainant’s mark.
As a result, the Panel finds that Respondent has failed to show rights
or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) the respondent is not a licensee of the complainant; (2) the
complainant’s prior rights in the domain name precede the respondent’s
registration; (3) the respondent is not commonly known by the domain name in
question); see also Compagnie de
Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding
no rights or legitimate interest 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the disputed domain names, which are confusingly similar to Complainant’s
mark, to operate a website featuring links to various competing websites from
which Respondent presumably receives referral fees. Such use will likely cause confusion among Internet users as to
Complainant’s sponsorship of or affiliation with the resulting website. The Panel finds that Respondent registered
and used the disputed domain names in bad faith pursuant to Policy ¶
4(b)(iv). See Identigene, Inc. v. Genetest Labs.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use
of the domain name at issue to resolve to a website where similar services are
offered to Internet users is likely to confuse the user into believing that the
complainant is the source of or is sponsoring the services offered at the
site); see also Perot Sys. Corp.
v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith
where the domain name in question is obviously connected with the complainant’s
well-known marks, thus creating a likelihood of confusion strictly for
commercial gain).
Finally,
Respondent registered the <fflysong.com>, <flysongg.com>,
<flyysong.com>, <flyssong.com>, <flysonng.com>,
and <flysoong.com> domain names with actual or constructive
knowledge of Complainant’s rights in the SONG mark. Complainant’s registration of the SONG mark with the USPTO
confers constructive knowledge of Complainant’s rights in the mark upon
Respondent. See 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 Victoria’s
Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal
Register registration [of a trademark or service mark] is constructive notice
of a claim of ownership so as to eliminate any defense of good faith adoption”
pursuant to 15 U.S.C. § 1072).
Furthermore, due to the obvious connection between the content on
Respondent’s website and the business in which Complainant engages, the Panel
infers that Respondent had actual knowledge of Complainant’s rights in the SONG
mark at the time of registration.
Registration of a confusingly similar domain name with actual or
constructive knowledge of Complainant’s rights constitutes bad faith registration
and use pursuant to Policy ¶ 4(a)(iii).
See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb.
Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when
Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively.”); see also 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”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <fflysong.com>, <flysongg.com>, <flyysong.com>,
<flyssong.com>, <flysonng.com>, and <flysoong.com>
domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
October 19, 2005
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