ISLANDAIR, Inc. v Alton Flanders a/k/a islandair.com
Claim Number: FA0011000096098
Complainant is ISLANDAIR, Inc., Honolulu, HI, USA ("Complainant") represented by Lawrence J. Casey, of Perkins, Smith & Cohen, LLP. The Respondent is Alton L. Flanders a/k/a islandair.com, Nantucket, MA, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is islandair.com, registered with Tucows.com, Inc. (the "Registrar")
This is a domain name dispute proceeding pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"). A three person arbitration panel was requested; this panel consists of Chairman, Judge Nelson A. Diaz (Retired), of Philadelphia, PA, Judge James A. Carmody, of Houston, TX and Jeffrey Kaufman, Esq. of Arlington, VA. Each panelist has confirmed to the National Arbitration Forum that they have acted independently and impartially and to the best of their knowledge, have no known conflict in serving as the panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on November 20, 2000; the Forum received a hard copy of the Complaint on November 20, 2000.
On Nov 28, 2000, the Registrar, confirmed by e-mail to the Forum that the domain name <islandair.com> is registered with the Registrar, and that the Respondent is the current registrant of the name. The Registrar, has verified that Respondent is bound by the Registrar, registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On December 1, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 21, 2000 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 firstname.lastname@example.org by e-mail. Respondent filed a timely response. On January 11, 2001, Complainant filed an additional response in accordance with the Forum’s Supplemental Rule 7. Thereafter, Respondent filed an untimely additional response. The Panel, in its discretion, gave consideration to Respondent’s untimely pleading.
On January 18, 2001, pursuant to Complainant’s request to have the dispute decided by a Three Member panel, the Forum appointed Chairman, Judge Nelson A. Diaz, Judge James A. Carmody, and Jeffrey Kaufman, Esq. as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is the owner of a federally registered trademark, ISLAND AIR, which it has used in commerce since May 3, 1988, in connection with the provision of air transportation services.
On February 28, 1999, Respondent registered the domain name islandair.com. By registering its domain name with the Registrar, Respondent agreed to resolve any dispute regarding its domain name pursuant to the Policy.
On July 26, 2000, prior to the initiation of this proceeding, Complainant performed a WHOIS search for the islandair.com domain name. The results showed that "DomainExchange.com" was the sole contact. Respondent states in his response that he is the owner of DomainExchange.com. While Respondent asserts that DomainExchange.com is not yet in business (he "hoped eventually to provide an exchange for domain sales"), the facts belie this assertion. The uncontroverted evidence shows that, at least in this case, Respondent’s company DomainExchange.com was serving as the administrative, billing, zone and technical contact for a domain name that is all but identical to another’s federally registered trademark.
On August 10, 2000, Complainant’s chairman sent a cease and desist letter to DomainExchange.com demanding that the domain name in question be transferred. A subsequent search of WHOIS performed by Complainant showed that the Respondent changed all of the contact information for the islandair.com domain name. The new results showed that Alton Flanders, the Respondent, had replaced "DomainExchange.com" as contact.
Complainant’s initial letter was followed by a more detailed demand from Complainant’s counsel dated September 26, 2000. At an unknown date, Respondent and Complainant apparently communicated regarding the disputed domain name. While there is some question about exactly what was said, the panel accepts as true Respondent’s factual averments, as follows: Respondent did not register islandair.com at the request of Island Air Nantucket, but merely with the intention of allowing the local airline to use it, if they ever desired to do so ("they can have it any time they want it—and for nothing, or in any event no more than my out of pocket expenses."); Respondent’s registration of this domain name was but one link in his grander effort to set up a mother site: "NantucketHome.com." In any event, Respondent refused to accede to Complainant’s demands that the islandair.com domain name be transferred.
Shortly after the filing of this Complaint, Respondent created a hyperlink to Island Air Nantucket’s web page from his real estate web site, www.probuyer.com. Respondent claims that this link was created as "part of upgrading my links", i.e. to better serve visitors to his real estate site. As Respondent asserts: "http://www.probuyer.com is the most visited real estate site on Nantucket, and I think that part of that is due to the real information that is available and the sense of inclusive community that has always been there."
Complainant countered that the link was disingenuously being used to establish a defense, i.e., the legitimate commercial use of the domain name.
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:
Under paragraph 4(a) of the Policy, it is clear that the domain name registered by Respondent, islandair.com, is essentially identical to Complainant’s ISLANDAIR mark. The addition of .com is of no account. In any event, Respondent does not contest this element of Complainant’s case. The Panel concludes that Complainant has met its burden of proof on the first prong and that the domain name is confusingly similar to Complainant’s mark.
Under paragraph 4(c) of the Policy, evidence of a registrant’s rights or legitimate interest in the domain name includes:
The Panel is unpersuaded by Respondent’s arguments that it possesses any rights or legitimate interest in the islandair.com domain name.
First, making changes to a web site after notice of a dispute may negate a finding of rights or legitimate interest. See Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the Respondent had no rights or legitimate interests where he decided to develop the website for the sale of wall products after receiving the Complainant’s "cease and desist" notice). Here, Respondent made no use of the domain name until after the Complaint was served, and only then did he establish a link to a local airline. Moreover, it is uncontroverted that Respondent owns and operates a web site known as DomainExchange.Com, that the Respondent’s administrative, technical and billing contacts for the disputed domain name originally referenced DomainExchange.Com, and that, after notice of the dispute, the contact information was changed to reflect Alton Flanders as the contact. Complainant persuasively argues that change in contact information was undertaken in an attempt to hide the existence of a connection between the disputed domain name and an apparent seller of domain names. The Panel agrees, and finds that these changes with respect to the manner in which the disputed domain name was being used by Respondent give rise to an inference that the Respondent had no rights or legitimate interest in the domain name.
Second, it is clear that Respondent has never been known by the domain name and therefore cannot satisfy the provisions of 4(c)(ii).
Third, as discussed below with regard to bad faith registration and use, it is evident that any use of the domain name by Respondent has the tendency to tarnish Complainant’s legitimate trademark in violation of 4(c)(iii).
Respondent has not shown, and cannot show, that he is entitled to make any legitimate use of the disputed domain name which is confusingly similar to the ISLANDAIR mark owned by Complainant. Complainant thus has met its burden of proof with regard to the second prong under paragraph 4(a).
Paragraph 4(b) of the Policy sets forth, "in particular but without limitation," circumstances which "shall be evidence of registration and use of a domain name in bad faith." Those non-exclusive circumstances are:
Complainant has failed to meet its burden as to any of the four particular circumstances listed above. The Panel is not persuaded that the mere use of Respondent’s domainexhange.com as a contact, without more, shows a "pattern of conduct" under 4(b)(ii). Moreover, while it is true that Respondent stands to realize "commercial gain" by intentionally attracting Internet users by use of the islandair.com, it seems unlikely that Internet users seeking the web site of Complainant would be directly confused by a link tied to a local Nantucket airline. Therefore, Complainant likewise does not meet the requirements of 4(b)(iv).
The Panel nonetheless finds that, under the circumstances, Respondent has registered and is using the domain name in bad faith.
First, Respondent concedes that at the time he registered the domain name islandair.com, he was fully aware that domain name corresponded to the trademark of a third party. Indeed, he claims to have registered the domain name out of an altruistic motive to benefit a local Nantucket airline. The fact remains that he had no authority to act on Island Air Nantucket’s behalf. Absent such authorization Respondent’s good intentions are unavailing-there is no "Robin Hood" defense to a claim of cybersquatting. By his own admission, Respondent violated the express warranty set forth in his agreement with the Registrar that his registration of islandair.com "will not infringe upon or otherwise violate the rights of any third party." Under the circumstances, the Panel finds that the registration was made in bad faith.
Second, by creating a link to another airline’s web page, Respondent creates initial interest confusion, that is, the misleading diversion of web users trying to locate the Complainant’s own web site. See Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999); Playboy Enters., Inc. v. Netscape Comm. Corp., 55 F. Supp.2d 1070, 1999 U.S. Dist. LEXIS 9638, at *8-*9 (C.D. Cal. 1999). In Brookfield, the Ninth Circuit explained that initial interest confusion occurs when a user is diverted to an unsponsored site, and only realize that she has been diverted upon arriving at the competitor's site. Once there, however, even though the user knows she is not in the site initially sought, she may stay. Id. Such use of the domain name thus has the tendency to tarnish the trademark owner’s goodwill and reputation by frustrating Internet users seeking to locate the intended web site. The Panel finds that such tarnishment may result from Respondent’s use of the domain in question.
The Panel hereby finds that Complainant has met its burden of showing that Respondent has registered and used the domain name in bad faith.
The Panel concludes: (a) that the domain name <islandair.com> is confusingly similar to Complainant’s ISLANDAIR mark; (b) that Respondent has no rights or legitimate interest in the domain name; and (c) that Respondent registered and used the domain name in bad faith. Therefore, pursuant to the Policy and the Rules, the Panel orders that the domain name islandair.com be transferred to the Complainant.
Honorable Nelson A. Diaz (Ret.), Chief Panelist
Honorable James Carmody (Ret.)
Jeffrey Kaufman Esq.
Date: February 8, 2001
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