Delta Corporate Identity, Inc. and Delta Air Lines, Inc. v. Forum LLC
Claim Number: FA0511000590697
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 Forum LLC (“Respondent”), P.O. Box 2331, Roseau, Roseau 00152 DM.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <deltaskymiles.com> and <deltareservation.com>, registered with Fabulous.com Pty Ltd.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 31, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 2, 2005.
On November 1, 2005, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <deltaskymiles.com> and <deltareservation.com> domain names are registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the names. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 November 3, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 23, 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@deltaskymiles.com and postmaster@deltareservation.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 1, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Delta Air Lines, Inc., founded in 1928, and its affiliate, Delta Corporate Identity, Inc. are separately and collectively described in this proceeding as “Complainant.”
Complainant is known as a worldwide leader in air transportation services for persons, property and mail.
Complainant is the owner of the DELTA family of marks through registration with the United States Patent and Trademark Office (“USPTO”) originally dating from 1950.
Complainant’s marks have obtained worldwide fame, and Complainant has invested millions of dollars in the development of goodwill and consumer recognition in its marks.
Respondent registered the <deltaskymiles.com> and <deltareservation.com> domain names on July 23, 2003, and January 23, 2005, respectively.
Respondent is using the disputed domain names to redirect Internet users to a website featuring links titled “Delta,” “United Airline,” “British Airway” and “Frequent Flyer.”
These links lead to websites advertising airline mileage programs and offering airline tickets for sale.
The same links also direct Internet users to websites of Complainant’s competitors.
Respondent’s <deltaskymiles.com> and <deltareservation.com> domain names are confusingly similar to Complainant’s DELTA family of marks.
Respondent does not have any rights or legitimate interests in the <deltaskymiles.com> and <deltareservation.com> domain names.
Respondent registered and is using the domain names <deltaskymiles.com> and <deltareservation.com> in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are each confusingly similar to a mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of either of the domain names at issue in this proceeding; and
(3) Each of the subject domain names has been registered and is being used by Respondent in bad faith.
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); 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 DELTA 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.”
Complainant asserts, without contradiction by Respondent, that the domain names <deltaskymiles.com> and <deltareservation.com> are confusingly similar to Complainant’s DELTA mark pursuant to Policy ¶ 4(a)(i), inasmuch as the domain names incorporate Complainant’s mark in its entirety, with the addition of the generic or descriptive terms “skymiles” and “reservation.” Other panels have many times ruled that the mere addition of a generic or descriptive term to a registered mark does not negate the confusing similarity of a respondent’s domain names pursuant to Policy ¶ 4(a)(i). See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000); to the same effect, see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001).
Furthermore, the addition of the generic top-level domain “.com” does not negate the confusing similarity of Respondent’s domain names to Complainant’s DELTA mark pursuant to Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”)
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts, and Respondent does not deny, that
Respondent does not have rights or legitimate interests in the <deltaskymiles.com>
and <deltareservation.com> domain names. 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 such rights or legitimate interests. Due to Respondent’s failure to respond to
the Complaint, the Panel is entitled to and does infer that Respondent does not
have rights or legitimate interests in the disputed domain names. See
Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000); 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.”
Additionally, Respondent has not offered any evidence suggesting that Respondent is commonly known by the <deltaskymiles.com> and <deltareservation.com> domain names. For this additional reason, the Panel concludes that Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003).
Moreover, it is undisputed that Respondent is using the <deltaskymiles.com> and <deltareservation.com> domain names to redirect Internet users to a website featuring links to third party commercial websites, including those offering airline services in competition with Complainant. The Panel finds that Respondent’s use of domain names that are confusingly similar to Complainant’s mark to divert Internet users for Respondent’s 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 MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000); also on the point, see Am. Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
Complainant asserts, without contravention by Respondent, that Respondent intentionally registered domain names confusingly similar to Complainant’s well-known DELTA mark for Respondent’s commercial gain, and that Respondent’s domain names divert Internet users who seek Complainant’s services to Respondent’s commercial website through the use of the disputed domain names. Such a practice constitutes bad faith registration and use of the subject domain names pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002).
Moreover, Complainant contends, and Respondent does not
dispute, that Respondent registered the domain names in question with actual or
constructive knowledge of Complainant’s rights in the DELTA mark by virtue of
Complainant’s prior registration of that mark with the United States Patent and
Trademark Office. Registration of a
confusingly similar domain name despite such actual or constructive knowledge
is, without more, evidence of bad faith registration and use of the domain name
pursuant to Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
For these reasons, 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 the relief requested shall be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <deltaskymiles.com> and <deltareservation.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 9, 2005
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