Continental Airlines, Inc.
v. Stonybrook Investments, Ltd.
Claim Number: FA0106000097693
PARTIES
Complainant is
Continental Airlines, Inc., Houston, TX, USA (“Complainant”) represented by
W. Scott Brown, of Vinson & Elkins, L.L.P. Respondent is Stonybrook Investments, Ltd., Belize City, Belize (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue is <continentalairlines.com> registered with Tucows, Inc.
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.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National
Arbitration Forum (the “Forum”) electronically on June 20, 2001; the Forum
received a hard copy of the Complaint on June 21, 2001.
On June 22, 2001, Tucows, Inc. confirmed by e-mail
to the Forum that the domain name <continentalairlines.com>
is registered with Tucows, Inc. and that Respondent is the current registrant
of the name. Tucows, Inc. has verified
that Respondent is bound by the Tucows, 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 June 25, 2001, a Notification of Complaint and
Commencement of Administrative Proceeding (the “Commencement Notification”),
setting a deadline of July 16, 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@continentalairlines.com
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 23, 2001, pursuant to Complainant’s request
to have the dispute decided by a single-member Panel, the Forum appointed John
J. Upchurch 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
The <continentalairlines.com>
domain name is identical to Complainant's CONTINENTAL AIRLINES trademark.
Respondent does not have any rights or legitimate
interests with respect to the <continentalairlines.com>
domain name.
Respondent has registered and is using the <continentalairlines.com> domain name
in bad faith.
B. Respondent
No Response was received.
FINDINGS
1.
Complainant
is the fifth largest U.S. airline.
2.
Complainant
has used the mark CONTINENTAL AIRLINES in interstate commerce since 1937.
3.
Complainant
is the owner of the name and mark CONTINENTAL AIRLINES and a family of related
marks which are registered in the United States and other countries.
4.
On
October 26, 1999, Complainant obtained registration of the CONTINENTAL AIRLINES
mark on the Principal Register of the United States Patent and Trademark Office
as Registration No. 2,288,901.
5.
Complainant
uses the CONTINENTAL AIRLINES mark in connection with all of its businesses
throughout the world.
6.
Respondent
registered the <continentalairlines.com>
domain name on January 21, 1998.
7.
Respondent
has used the <continentalairlines.com>
domain name initially to divert users to a gambling site and then to divert
users to a travel planning site that competes with Complainant.
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
Despite the fact that
Respondent's registration of the disputed domain name precedes Complainant's
federal registration with the United States Patent and Trademark Office,
Complainant has established that it has rights in the CONTINENTAL AIRLINES mark
by virtue of its long and continued use of the mark. See Keppel TatLee Bank v. Taylor, D2001-0168
(WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said
name [<keppelbank.com>] in connection with its banking business, it has
acquired rights under the common law).
The <continentalairlines.com>
domain name is identical Complainant's CONTINENTAL AIRLINES mark. It is well settled that the addition of a
top level domain designation (such as ".com") does not defeat a claim
that a domain name is identical to a Complainant's mark. See,
e.g., Blue Sky Software Corp. v. Digital Sierra
Inc., D2000-0165 (WIPO Apr. 27,
2000) (holding that the domain name ROBOHELP.COM is identical to Complainant’s
registered ROBOHELP trademark, and that the "addition of .com is not a
distinguishing difference").
The Panel finds that Policy
4(a)(i) has been satisfied.
Rights or Legitimate
Interests
Complainant asserts that
Respondent has no rights or legitimate interests in the <continentalairlines.com> domain
name. Respondent has failed to refute
that assertion. There is a presumption that a Respondent has no rights or
legitimate interests with respect to a disputed domain name when that
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); see
also Vertical Solutions Mgmt., Inc.
v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(finding that failure to respond allows all reasonable inferences of fact in
the allegations of Complainant to be deemed true).
Additionally, Complainant claims, and there is
nothing in the record to refute, that Respondent is not commonly known by, nor
is making a legitimate noncommercial or fair use of the <continentalairlines.com> domain name
pursuant to Policy ¶ 4(c)(ii) and 4(c)(iii).
As noted about, Respondent is currently using the <continentalairlines.com> domain name
to divert users to a competing travel planing site. See Hartford Fire Ins. Co. v. Webdeal.com, Inc.,
FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights
or legitimate interests in domain names because it is not commonly known by
Complainant’s marks and Respondent has not used the domain names in connection
with a bona fide offering of goods and services or for a legitimate
noncommercial or fair use).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad
Faith
Complainant contends, and nothing in the record
refutes, that Respondent was aware of Complainant's CONTINENTAL AIRLINES family
of marks by virtue of its fame when Respondent first registered the <continentalairlines.com> domain name
and that the registration in the face of such knowledge constitutes bad
faith. See Northwest Airlines, Inc.
v. Koch, FA 95688 (Nat. Arb. Forum Oct. 27, 2000) (“[T]he selection of a
domain name [<northwest-airlines.com>] which entirely incorporates the
name of the world’s fourth largest airline could not have been done in good
faith”); see also Singapore Airlines Ltd v. P & P
Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) (“The
domain name <singaporeairlines.com> is so obviously connected with a
well-known airline that its very registration and use by someone with no
connection to the airline suggests opportunistic bad faith. Indeed, it is hard to imagine a more blatant
exercise in ‘cybersquatting.’”).
Complainant further claims that Respondent is using
the disputed domain name to intentionally attract Internet users to other web
sites for commercial gain by creating a likelihood of confusion with
Complainant's well-known family of marks; this use is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Mars, Inc. v.
Double Down Magazine, D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith
under Policy ¶ 4(b)(iv) where Respondent linked the domain name
<marssmusic.com>, which is identical to Complainant’s mark, to a gambling
website); see also Treeforms, Inc. v. Cayne Indus. Sales Corp., FA
95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when
Internet users, intending to access Complainant’s web site, think that an
affiliation of some sort exists between the Complainant and the Respondent,
when in fact, no such relationship would exist).
The Panel finds that Policy
¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three
elements under the ICANN Policy, the Panel concludes that the requested relief
should be granted.
Accordingly, it is Ordered
that the <continentalairlines.com>
domain name be transferred from Respondent to Complainant.
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