Aero California S.A. DE C.V. v. Marketing Tool S.A.
Claim Number: FA0612000874572
Complainant is Aero California S.A. DE C.V. (“Complainant”), represented by Marc
A. Paul, of Steptoe & Johnson LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <aerocaliforniausa.com>, registered with Domaindoorman, Llc.
The undersigned certifies that he has acted independently and impartially and to the best of his or 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 December 21, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 22, 2006.
On December 22, 2006, Domaindoorman, Llc confirmed by e-mail to the National Arbitration Forum that the <aerocaliforniausa.com> domain name is registered with Domaindoorman, Llc and that Respondent is the current registrant of the name. Domaindoorman, Llc has verified that Respondent is bound by the Domaindoorman, Llc 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 January 4, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 24, 2007 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@aerocaliforniausa.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 1, 2007, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aerocaliforniausa.com> domain name is confusingly similar to Complainant’s AERO CALIFORNIA mark.
2. Respondent does not have any rights or legitimate interests in the <aerocaliforniausa.com> domain name.
3. Respondent registered and used the <aerocaliforniausa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Aero California S.A. DE C.V.,
is a well-known provider of air transportation services for passengers, mail
and property. Complainant has provided
these services under the AERO CALIFORNIA mark since at least as early as 1982
in
Respondent registered the <aerocaliforniausa.com> domain name on June 18, 2006. Respondent is using the disputed domain name to redirect Internet users to a website providing links to Complainant’s competitors in the travel industry.
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 AERO CALIFORNIA
mark through registration of the mark with the USPTO. See Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel
decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive."); 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.”).
Respondent’s
<aerocaliforniausa.com>
domain name is confusingly
similar to Complainant’s AERO CALIFORNIA mark because Respondent’s domain
name incorporates Complainant’s mark in its entirety and adds the geographic
identifier “
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 <aerocaliforniausa.com> domain name. 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). 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).
Moreover, Respondent has offered no evidence and there is no evidence in the record suggesting that Respondent is commonly known by the <aerocaliforniausa.com> domain name. Thus, Respondent has not established rights or legitimate interests in the <aerocaliforniausa.com> 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 interests 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); 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 Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent was not commonly known by the disputed domain name, nor was the respondent using the domain name in connection with a legitimate or fair use).
Respondent is using the <aerocaliforniausa.com> domain name to redirect Internet users to Respondent’s website that features links to third-party websites offering services that compete with Complainant’s business. Respondent’s use of a domain name that is confusingly similar to Complainant’s AERO CALIFORNIA mark to redirect Internet users interested in Complainant’s services to a website that offers similar goods and services that compete with Complainant is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also 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.”).
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 competing websites. Because Respondent’s domain name is confusingly similar to Complainant’s AERO CALIFORNIA mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with, or sponsorship of the resulting website. Thus, Respondent’s use of the <aerocaliforniausa.com> domain name constitutes bad faith registration and use pursuant to 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 Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
Respondent is using the <aerocaliforniausa.com> domain name to redirect Internet users to Respondent’s website that features links to services that compete with Complainant. The Panel finds that such use constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
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 <aerocaliforniausa.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: February 14, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum