Delta Corporate Identity, Inc. and Delta Air
Lines, Inc. v. Alanadi Yonetimi c/o Delta Media Center
Claim Number: FA0511000603096
PARTIES
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 Alanadi Yonetimi c/o Delta Media Center (“Respondent”), Perpa B blok no: 204/2
Okmeydani Istanbul, TR 34820.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <deltasong.com>,
registered with Moniker Online Services,
Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 28, 2005; the National Arbitration Forum received a
hard copy of the Complaint on November 30, 2005.
On November 29, 2005, Moniker Online Services, Inc. confirmed by e-mail
to the National Arbitration Forum that the <deltasong.com>
domain name is registered with Moniker Online Services, Inc. and that the
Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is
bound by the Moniker Online Services, 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 December 1, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 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@deltasong.com by e-mail.
The National Arbitration Forum received from Respondent a timely
response to the Complaint, via electronic submission, by the response
submission deadline of December 21, 2005, but did not receive a hard copy format
of the response pursuant to ICANN Supplemental Rule #5(a).
On December 28, 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends, among other things, that:
1. Complainant, founded in
1928, is a worldwide leader in air transportation services for people, property
and mail.
2. Complainant markets its air
transportation services under the brand names Delta and Song, among others.
3. Complainant’s DELTA service
mark was first registered with the United States Patent and Trademark Office
(“USPTO”) in 1957, while its SONG service mark was first registered with the
USPTO in February of 2004, and both marks have since been used continuously in
commerce in connection with Complainant’s air transport services.
4. Delta is the world’s second-largest
airline in terms of passengers carried, while Song is a low-fare, high-style
air service operated by Complainant since April of 2003.
5. Respondent registered the disputed
domain name <deltasong.com> in
July of 2005.
6. Respondent’s domain name is
confusingly similar to Complainant’s marks.
7. Respondent is using the
subject domain name to divert Internet users to websites that feature links
titled “flights,” “airline tickets” and “airline reservations.”
8. Some of the same links direct
Internet users to websites of Complainant’s competitors.
9. Respondent presumably
acquires a “click-through” fee for each Internet user misdirected to
Respondent’s website by means of the disputed domain name.
10. Complainant addressed a
cease-and-desist letter to Respondent with regard to its use of the subject
domain name, but Respondent never responded to that communication.
11. Complainant has never
licensed or otherwise consented to Respondent’s registration or other use of
the disputed domain name.
12. Respondent is not commonly
known by the subject domain name.
B. Respondent
Respondent contends, among other things, that:
1. The disputed domain name,
taken as a whole, is not confusingly similar to either of Complainant’s service
marks.
2. The circumstances cited by
Complainant in support of its contentions occurred after Respondent ceased to
be the owner of the disputed domain name.
3. Respondent registered and
used the subject domain name before it had notice of the instant dispute.
FINDINGS
a.
The domain name
registered by the Respondent is confusingly similar to service marks in which
Complainant has rights;
b.
Respondent has
no rights or legitimate interests in respect of the domain name; and
c.
The subject domain name has been registered and used by
Respondent in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
2.
the 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.
Preliminary Procedural Issue
Respondent filed a timely Response to the Complaint in this
proceeding. However, that Response was
not filed in conformity with governing rules because it was not filed in both
electronic form and in hard copy, as required, and it was not accompanied by
any proofs in support of the contentions made therein. Nonetheless, in the interests of justice,
the Panel has determined to consider the unsupported contentions asserted in
the Response in reaching this Decision.
The application of
Policy ¶ 4(a)(i) to the facts of this proceeding begins with an assessment of
the threshold question whether Complainant has rights in a mark or marks which
rights are or may be threatened improperly by Respondent’s registration and use
of the disputed domain name. This
threshold question must be answered in the affirmative because Complainant has
demonstrated both that it has registered its marks DELTA and SONG with the
pertinent authorities and that those registrations predate Respondent’s
registration and use of the disputed domain name. See Innomed Techs.,
Inc. v. DRP Svcs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (Registration
of the … mark with the USPTO establishes Complainant’s rights in the mark).
We turn, then, to the question of
identity-confusing similarity. Under
this heading, Respondent appears to argue that, because its domain name fuses
the two separate marks of Complainant into an amalgamated domain name, it may
be said that the domain name as a whole is not confusingly similar to either of
its constituent parts. This argument is
specious, as is demonstrated by the panel decision in Nintendo of America Inc v. Pokemon, D2000-1230 (WIPO Nov. 23,
2000), in which the respondent there attempted to defend the joinder of the
complainant’s POKEMON and PIKACHU marks into the domain name
<pokemonpikachu.com>. The panel
in that situation found no difficulty in determining the illicitly confusing
character of the fused domain name, and this Panel reaches the same
conclusion.
Therefore, the Panel finds that Respondent’s
mark-plus-mark domain name is confusingly similar to Complainant’s marks,
whether they are taken singly or together.
It should be noted that the addition to
Respondent’s domain name of a generic top-level domain reference (in this
instance, “.com”) does not change this determination. 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 significance since use of a gTLD is required of domain
name registrants.”).
Accordingly, Complainant has satisfied the
proof requirements of Policy ¶ 4(a)(i).
The issue of Respondent’s rights or interests
in the disputed domain name arises under Policy ¶ 4(a)(ii). This topic too may
be dispensed with quickly, inasmuch as Complainant has superior rights in its
cited marks by virtue of their prior registration with the USPTO, and because
Respondent does not deny Complainant’s allegation that no license or other
consent to the use of those marks has been granted to Respondent. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27,
2000).
It is significant in this regard that
Respondent makes no effort to deny Complainant’s additional assertion that
Respondent is not commonly known by the subject domain name. Id. On the same point, see also
Policy ¶ 4(c)(ii).
Further on this issue, it is pertinent to our
inquiry under Policy ¶ 4(a)(ii) that Complainant alleges that, in exchange for
click-through fees, Respondent uses the disputed domain name to divert Internet
traffic to web sites featuring air transport services offered by Complainant’s
competitors, an assertion which Respondent does not deny. Such conduct does not constitute either a bona fide offering of goods or services
within the meaning of Policy ¶
4(c)(i) or a fair use under Policy ¶
4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu,
FA157321 (Nat. Arb. Forum June 23, 2003); see also MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000).
Moreover, Respondent’s contention that the
behavior asserted by Complainant occurred after Respondent ceased to be the
owner of the subject domain name is unpersuasive. Among other things, Respondent has not offered any evidence
showing when it ceased to be the owner of the domain name or to whom ownership
was ceded. Thus Respondent’s bald
assertion that the facts alleged by Complainant occurred after Respondent ceded
domain name ownership to another stands merely as an admission, first, that the
misconduct alleged by Complainant occurred as alleged, and secondly, that
Respondent is not now in a position to claim rights or interests in the
disputed domain name.
Respondent asserts in its defense that the
conduct alleged by Complainant occurred before Respondent had notice of the
instant dispute. This would be
pertinent to our consideration of the issues in this proceeding if Respondent
had a colorable claim to having engaged in a bona fide offering of goods or services within the purview of
Policy ¶ 4(c)(i). However, as noted
above, no such claim can be made on Respondent’s behalf.
For all of these reasons, the Panel finds that
Complainant has met its obligations under Policy ¶ 4(a)(ii).
Respondent does not deny that the disputed
domain name was registered after Complainant had registered both of the cited
service marks with the USPTO. It is
therefore evident that Respondent registered and used the domain name while
having at least constructive knowledge, by virtue of those published mark
registrations, of Complainant’s prior rights in the same marks. This is evidence of bad faith registration
and use of the contested domain name. See
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum
Oct. 4, 2002); see also Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000).
In addition, Respondent’s unauthorized use of
two of Complainant’s marks in the same commercial domain name strongly suggests
that that registration and use was no mere accident, but rather a calculated
effort by Respondent to exploit the valuable names of another. This can only be described as having been
done in bad faith.
It might also be said that Respondent’s
failure to respond in any way to Complainant’s cease-and-desist letter is
further evidence of bad faith on the part of Respondent. See eBay Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001).
These considerations are more than sufficient
to show that Complainant has fulfilled the provisions of Policy ¶ 4(a)(iii).
DECISION
Complainant having established all three elements required under the
ICANN Policy, the Panel concludes that the relief requested must be, and it is
hereby, GRANTED.
Accordingly, it is Ordered that the <deltasong.com>
domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 11, 2006
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