Delta
Corporate Identity, Inc. and Delta Air Lines, Inc. v. U21 Communications, Inc.
Claim
Number: FA0510000582987
Complainant is 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 U21 Communications, Inc (“Respondent”), C.P.O. Box No. 3033, Seoul, 100630, KR.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <deltaairlines.net>, registered with Korea Information Certificate Authority, Inc. d/b/a DomainCA.com.
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 October 20, 2005; the National Arbitration Forum received a hard copy of the Complaint October 24, 2005.
On Oct 31, 2005, Korea Information Certificate Authority, Inc. d/b/a DomainCA.com confirmed by e-mail to the National Arbitration Forum that the <deltaairlines.net> domain name is registered with Korea Information Certificate Authority, Inc. d/b/a DomainCA.com and that Respondent is the current registrant of the name. Korea Information Certificate Authority, Inc. d/b/a DomainCA.com verified that Respondent is bound by the Korea Information Certificate Authority, Inc. d/b/a DomainCA.com 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 November 1, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 21, 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@deltaairlines.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 28, 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, <deltaairlines.net>, is identical to Complainant’s DELTA AIR LINES mark.
2. Respondent has no rights to or legitimate interests in the <deltaairlines.net> domain name.
3. Respondent registered and used the <deltaairlines.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant was founded in 1928 and is a worldwide leader in air transportation services for persons, property and mail. Together with its affiliates, Complainant’s services include the provision of arena facilities for exhibitions, education and training in flight instruction and aviation science, tracking and monitoring baggage, cargo, mail, freight, package shipments and aircraft parts, in-flight entertainment services and vacation-planning services.
Complainant owns registrations with the United States Patent and Trademark Office (“USPTO”) for the DELTA (Reg. No. 654915 issued November 19, 1957) and DELTA AIR LINES (Reg. No. 523,611 issued April 4, 1950) marks.
Respondent registered the <deltaairlines.net> domain name February 14, 2002. The domain name resolves to a generic search engine website that provides links to various travel-related websites, including several of Complainant’s direct competitors.
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. 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 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 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 provided extrinsic evidence in this proceeding
to establish its registration of the DELTA AIR LINES mark with the USPTO, which
the Panel determines to be sufficient to establish Complainant’s rights in the
mark for purposes of Policy ¶ 4(a)(i). 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.”).
Complainant argues that the disputed domain name, <deltaairlines.net>, incorporates Complainant’s DELTA AIR LINES mark in its entirety, adding only the generic top-level domain (“gTLD”) “.net.” It has been widely held under the Policy that the addition of gTLD to a complainant’s entire mark is irrelevant to a Policy ¶ 4(a)(i) analysis. Thus, the Panel concludes that the disputed domain name is identical to Complainant’s mark. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he 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 . . . ."); 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 the complainant’s MYSTIC LAKE trademark and service mark).
Thus, the Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have rights to or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (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 “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
Complainant contends that Respondent is using the <deltaairlines.net>
domain name to operate a generic search engine website that prominently
displays links to websites offering airline tickets of various airlines,
including Complainant’s direct competitors.
Respondent’s use of Complainant’s DELTA AIR LINES mark to attract
Internet users to Respondent’s website, presumably for the purpose of earning
referral fees for diverted traffic, is not a use in connection with a bona
fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a
legitimate noncommercial or fair use of a domain name under Policy ¶
4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see also Or. State Bar v. A Special
Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's
advertising of legal services and sale of law-related books under Complainant's
name is not a bona fide offering of goods and services because Respondent is
using a mark confusingly similar to the Complainant's to sell competing
goods.”); see also Coryn Group, Inc. v. Media Insight, FA 198959
(Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the
domain names for a bona fide offering of goods or services nor a
legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website that offered services that competed with
those offered by the complainant under its marks).
Furthermore, Complainant asserts that Respondent is not commonly known by the <deltaairlines.net> domain name and has not been authorized or licensed by Complainant to use Complainant’s DELTA AIR LINES mark for any purpose. The Panel finds nothing in the record contradicts Complainant’s assertions, including the WHOIS information, which identifies Respondent as “U21 Communications, Inc.” Thus, Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also 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 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).
Accordingly, the Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent is using the <deltaairlines.net> domain name to operate a commercial website that links Internet users to some of Complainant’s competitors in the airline travel business. Furthermore, Respondent likely profits through referral fees for diverting Internet users to competitors’ websites. Respondent’s use of Complainant’s registered DELTA mark to attract Complainant’s customers to Complainant’s competitors via Respondent’s directory website for Respondent’s financial gain is evidence that Respondent registered and used the disputed domain name in bad faith under 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Consequently, the Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <deltaairlines.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 9, 2005
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