Northwest
Airlines, Inc. v. PWI, Inc.
Claim Number: FA0106000097368
PARTIES
Complainant is Northwest Airlines, Inc., St. Paul, MN, USA (“Complainant”) represented by Jamie Nafziger of Dorsey & Whitney LLP. Respondent is PWI, Inc., Spokane, WA, USA (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <nwa.net> registered with Itsyourdomain.com.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Hon. James A. Carmody, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 5, 2001; the Forum received a hard copy of the Complaint on June 7, 2001.
On June 6, 2001, Itsyourdomain.com confirmed by e-mail to the Forum that the domain name <nwa.net> is registered with Itsyourdomain.com and that Respondent is the current registrant of the name. Itsyourdomain.com has verified that Respondent is bound by the Itsyourdomain.com 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 June 7, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 27, 2001 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@nwa.net by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On July 5, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Hon. James A. Carmody as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
B. Respondent
No Response was submitted.
FINDINGS
Complainant is and at all relevant times has been the exclusive owner of a United States service mark for the distinctive mark NWA, which has been used since at least 1946 in connection with air transportation services. Complainant is the exclusive owner of an U.S. trademark application for the distinctive mark NWA (Ser. No. 76/210,945) in connection with a variety of transportation and airport services, including “air transportation services.”
Complainant registered the domain name <nwa.com> on May 21, 1992. Complainant’s <nwa.com> website has been active since April 1996.
Complainant is and at all relevant times has been the exclusive owner of a United States service mark for the mark NWA.COM (Reg. No. 2,271,908, filed April 30, 1998, registered August 24, 1999) in connection with “providing travel information by means of a global computer network.”
Complainant’s
rights in its marks have been amplified by their extensive degree of use,
advertising and publicity since they were first used at least as early as
1946. Complainant is the world’s fourth
largest airline, and provides air transportation services to over 785
destinations in 120 countries on 6 continents under its marks. In 2000, Complainant transported more than
58 million passengers. Complainant
spent over $127 million on advertising in 2000. Sales through the <nwa.com> website were approximately $400
million in 2000. As a result of the
tremendous volume of sales of services under its marks and the extensive promotion
and advertisement of these marks, Complainant’s marks are famous, have acquired
substantial goodwill belonging exclusively to Complainant, and are recognized
as an indicia of origin with Complainant worldwide.
Respondent registered the domain name on October 22, 1998.
On November 25,
1998, Complainant sent a cease and desist letter to Respondent by certified
mail. In this letter, Complainant
described its extensive trademark rights in its NWA marks, and demanded that
Respondent cease all use of the NWA marks and surrender the domain name
registration for <nwa.net>. Respondent replied by e-mail dated December
2, 1998. Respondent stated that it
planned to introduce a website, and that <nwa.net>
stood for “Northwest Amateurs and not Northwest Airlines.”
Complainant answered Respondent’s December 2, 1998 e-mail on December 7, 1998 with a letter reiterating Complainant’s rights to the NWA marks and demands, and requesting that Respondent provide Complainant with information concerning the intended content of the <nwa.net> website. As of that date, the <nwa.net> website consisted primarily of the following notice: “Welcome to the Future Website of NorthWest Amateurs.Net (NWA.NET).” Respondent contacted Complainant on February 10, 1999, indicating that Respondent owned the domain name “on behalf of its client, Northwest Amateurs, a musical association.” At that time, Respondent stated it was willing to transfer the domain name if Complainant would reimburse the client for costs attendant to promoting whatever new domain name the client chose. Specifically, Respondent stated that it had prepared fliers and other advertising that referred to the <nwa.net> domain name, and that said advertising would have to be reprinted once the new domain name was selected. Respondent stated that it would provide Complainant with a cost estimate shortly.
As of January 19, 2000, Respondent had created an entry
page for an adult website at <nwa.net>. The page displayed a paragraph of sexually
explicit text.
On February 17, 2000, Complainant sent Respondent another cease and desist letter, again demanding that Respondent transfer <nwa.net> to Complainant.
On February 18, 2000, Respondent called and had left a voice-mail message for Complainant. In this message, Respondent offered to transfer the <nwa.net> domain name to Complainant for $15,000. Respondent did not offer any details regarding the nature and extent of Respondent’s investment in <nwa.net>. Respondent failed to identify any legitimate interest in the domain name <nwa.net>. Respondent also failed to substantiate the claim that he had incurred $15,000 in costs for the domain name.
As of April 16, 2000, Respondent’s entry page for an adult website remained at the <nwa.net> domain name. A click on the “ENTER” link on the page led to another warning page that proclaimed, “WARNING! This site contains sexually oriented material intended for consenting adults of at least 18 years old.” Clicking “I AGREE!” on that page led to an error message.
Currently, the domain name does not resolve to a website.
DISCUSSION
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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
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.
Identical and/or
Confusingly Similar
Respondent’s domain name <nwa.net> is identical to Complainant’s NWA mark. See Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <nike.net> is identical to the Complainant’s famous NIKE mark); see also Kabushiki Kaisha Toshiba v. Shan Computers, D2000-0325 (WIPO June 27, 2000) (finding that the domain name <toshiba.net> is identical to the Complainant’s trademark TOSHIBA).
Therefore, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or
Legitimate Interests
Respondent has failed to come forward to demonstrate any rights or legitimate interests in the <nwa.net> domain name. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (stating that “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent any evidence of preparation to use the domain name for any legitimate purpose, the burden of proof lies with the Respondent to demonstrate that he has rights or legitimate interests).
Furthermore, there is a presumption that Respondent has no rights or legitimate interests with respect to the domain name in dispute where Respondent fails to submit a Response. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that “Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the Domain Names”).
Respondent is not making a bona
fide offering of goods or services which is not calculated to mislead consumer
or tarnish Complainant’s NWA mark. See National Football League Properties,
Inc., et al. v. One Sex Entertainment Co., D2000-0118 (WIPO Apr. 17, 2000)
(finding that the Respondent has no rights or legitimate interests in the
domain names <chargergirls.com> and <chargergirls.net> where the
Respondent linked these domain names to its pornographic website); see also Geoffrey, Inc. v. O'Hara, FA
97152 (Nat. Arb. Forum June 8, 2001) (finding Respondent’s use of the
<kinkytoysrus.com> domain name to sell adult sex products is dillutive of
Complainant’s well-known family of marks).
Because of the famousness of Complainant’s family of NWA marks, it would be unlikely that Respondent is commonly known by the <nwa.net> domain name. See Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well established use of the mark).
Also, Complainant has shown Respondent is not commonly known by the disputed domain name, nor is Respondent using the domain name in connection with a legitimate noncommercial or fair use. See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Therefore, the Panel concludes that Respondent does not have any rights or legitimate interests in the <nwa.net> domain name, and that Policy ¶ 4(a)(ii) has been satisfied.
Registration and
Use in Bad Faith
Because of the popularity of Complainant’s services and the prominence of its marks, it may be assumed that the Respondents had notice of Complainant’s marks at the time of the domain name registration. See Nintendo of America Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that the Respondent, at the time of registration, had notice of the Complainant’s famous POKÉMON and PIKACHU trademarks given their extreme popularity).
The domain name in question is so obviously connected with the Complainants, that use by someone with no connection with the Complainants suggests bad faith. See Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 (WIPO May 30, 2000) ("[T]he domain name is so obviously connected with the Complainant and its services that its very use by someone with no connection with the Complainant suggests opportunistic bad faith).
Respondent’s use of the <nwa.net> domain name to lure Internet users to its website, allegedly for commercial gain, is evidence of bad faith under Policy ¶ 4(b)(iv). See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith where Respondent linked the domain name to a website that offers a number of web services); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intends to use Complainant’s marks to attract the public to the web site without permission from Complainant); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites).
Respondent offered to sell the domain name for $15,000, and did not show that amount was only for out of pocket expenses. Any offer to sell a domain name in excess of out-of-pocket expenses is evidence of bad faith under Policy ¶ 4 (b)(i). See Dollar Financial Group, Inc. v. Roark, FA 93671 (Nat. Arb. Forum Mar. 7, 2000) (finding that a $7,500 asking price for a domain name showed evidence of bad faith); see also Biofield Corp. v. Kwon, AF-0102 (eResolution March 23, 2000) (finding an offer to sell for $1,000 was evidence of bad faith); see also Corinthians Licenciamentos LTDA v. Sallen, D2000-0461 (WIPO July 17, 2000) (finding bad faith where Respondent’s claimed use for the mark was “most likely an excuse for camouflaging the purpose of trafficking with the domain name”)
Furthermore, Respondent’s alleged use for the domain name as a pornographic website, shows bad faith because the domain name is identical to Complainant’s NWA mark. See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith); see also Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000) (finding bad faith where Respondent threatened to develop the domain name in question into a pornography site).
DECISION
Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.
Accordingly, it is Ordered that the <nwa.net> domain name be transferred from Respondent to Complainant.
Hon. James A. Carmody, Panelist
Dated: July 11, 2001
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