Northwest Airlines, Inc. v Cynthia Jorgenson
Claim Number: FA0102000096586
The Complainant is Northwest Airlines, Inc., St. Paul, MN, USA ("Complainant") represented by A. Minnie Alexander and Gregory M. Krakau, of Dorsey & Whitney LLP. The Respondent is Cynthia Jorgenson, Hayden Lake, ID, USA ("Respondent") represented by James E. Starnes, of Starnes Law Firm.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is "NORTHWESTAIRLINES.ORG", registered with MELBOURNE IT, LTD.
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 a panelist in this proceeding.
Tyrus R. Atkinson, Jr. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on February 2, 2001; the Forum received a hard copy of the Complaint on February 2, 2001.
On February 12, 2001, MELBOURNE IT, LTD. confirmed by e-mail to the Forum that the domain name "NORTHWESTAIRLINES.ORG" is registered with MELBOURNE IT, LTD. and that the Respondent is the current registrant of the name. MELBOURNE IT, LTD. has verified that Respondent is bound by the MELBOURNE IT, LTD. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 12, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 5, 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 Respondentís registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely response was received and determined to be complete on March 2, 2001.
Complainantís Additional Response was timely filed on March 9, 2001 in compliance with the National Arbitration Forumís Supplemental Rules ("Supp. Rules"), Rule 7.
Respondentís Additional Response was received on March 12, 2001. This Response was not timely filed under Supp. Rule 7 and will not be considered in this proceeding.
On March 15, 2001, pursuant to Complainantís request to have the dispute decided by a One Member Panel, the Forum appointed Tyrus R. Atkinson, Jr. as Panelist.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
Complainant is a corporation organized under the laws of the State of Minnesota.
Complainant is and at all relevant times has been the exclusive owner of United States service mark registrations for, among others, the distinctive marks NORTHWEST (Reg. No. 1,616,090, registered October 2, 1990) in connection with "air passenger and cargo transportation services," and NORTHWEST AIRLINES (Reg. No. 1,718,838, registered September 22, 1992) in connection with "air transportation services." These registered marks are incontestable pursuant to 15 U.S.C. Sec. 1065 and 1115(b).
Complainant is the worldís fourth-largest airline. Complainant spent millions of dollars advertising the marks and flies passengers in airplanes bearing the marks. The Northwest marks are famous, have acquired substantial goodwill belonging exclusively to Complainant, and have come to be and are recognized as an indicia of origin with Complainant worldwide.
Complainant provides services on the Internet using its well-known and famous marks. Complainant owns the domains names NWA.COM, NORTHWESTAIRLINES.COM, NORTHWEST-AIRLINES.NET, NORTHWEST-AIRLINES.COM, and NORTHWEST-AIRLINES.ORG.
Complainant has established rights in the Northwest marks around the world.
The similarities between the Northwest marks and the disputed domain name NORTHWESTAIRLINES.ORG are phonetically and visually obvious.
Respondent has no legitimate interest in the domain name NORTHWESTAIRLINES.ORG.
Respondent had actual and constructive knowledge of the Northwest marks at the time of registration of the domain name in dispute.
Respondent is not a licensee of Complainant, nor has Respondent obtained an authorization to use Complainantís mark and trade name.
The disputed domain name was registered to prevent Complainant from reflecting its marks in a corresponding domain name.
On January 4, 2001, Complainant sent a cease and desist letter to Respondent. The envelope was returned as undeliverable. It is bad faith to either provide false contact information when applying for the registration or to intentionally fail to maintain accurate contact information.
On or about February 19, 2000, Respondent, a retired secretary and a shareholder in Northwest Airlines, acquired the Internet domain name NORTHWESTAIRLINES.ORG.
Respondentís sole motive for acquiring the domain was to launch an informational website accessible to Northwest investors and/or shareholders, either actual or prospective. Respondent purchased e-commerce software to help design and launch the website.
Respondent intended to provide information on her website that conventional financial websites (or Complainant) would probably not provide, specifically, information that might be regarded as critical of the company and/or its business operations.
Respondentís interest in Northwest Airlines was influenced by the fact that she had lived in Minnesota for the first 31 years of her life, and was aware of significant state subsidization of the airline.
In mid-2000 Respondent sold her Northwest stock but intends to repurchase Northwest stock in the future.
There is no evidence that Respondent acted in bad faith. Complainant failed to meet its burden of proof on virtually every issue presented.
Complainantís assertion that Respondent failed to provide a forwarding address to the United States Post Office or correct contact information is denied.
Respondentís right to own and operate an informational website about Complainant is protected by applicable law, including the "fair use" doctrine of federal trademark law and the First Amendment. Respondentís planned use of her website is informational and noncommercial, and does not involve the sale of any goods or services or the collection of any revenue, and does not violate any ICANN Rule or Policy. Respondentís planned use of the website falls outside any state, federal or international trade mark or domain name registration legislation, and squarely with the protection of the First Amendment, which prevents Complainant from obtaining any relief in this case.
Respondent further contends that ICANN procedures lack due process since it is a summary procedure void of the legal tools and protections needed to resolve factual conflicts, violates the doctrine of separation of powers, is inadequate as a matter of law, and legally and constitutionally deficient. Like federal courts, it is contended; ICANN is legally precluded from issuing a decision in cases where there are critical questions of fact.
8. Respondent has not used the domain name, NORTHWESTAIRLINES.ORG, since its registration. Since this is so, it cannot be established whether the domain name will ever be used by Respondent, or for what purpose Respondent might use the domain name in the future. Respondent states that she intends to use the domain name on a website, in a non-commercial manner, to supply information about Complainant to Internet users. This has not been contested by Complainant, and indeed could not be disproved by Complainant since it is a statement of future intentions. Respondentís statement of intention is accepted as true for the purposes of this case.
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.
Identical and/or Confusingly Similar
Complainant contends that the domain name NORTHWESTAIRLINES.ORG is identical or confusingly similar to Complainantís mark NORTHWEST AIRLINES. The domain name and mark are identical or confusingly similar. See Teleplace, Inc. v. Eileen De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000). Respondent does not contest this contention. Complainant prevails on this issue.
Rights or Legitimate Interests
Complainant contends that it has rights in the marks NORTHWEST and NORTHWEST AIRLINES based upon the registration of the service marks, advertising and promotion of the marks and long use of the marks. Respondent does not contest Complainantís interest in the marks. Complainant prevails on this issue.
Complainant contends that Respondent has no rights or legitimate interests in the name NORTHWESTAIRLINES since Respondent is not a licensee of Complainant, not authorized by Complainant to use the mark, that Respondent has never been known as NORTHWESTAIRLINES, and that there is no relationship between Complainant and Respondent that would justify Respondent using Complainantís mark in a domain name. Respondent does not contend that she is a licensee of Complainant, nor authorized by Complainant to use the mark. Respondent does not contend that she has ever been known as NORTHWESTAIRLINES. Respondentís alleged justification for the use of NORTHWESTAIRLINES is that she was a shareholder of the Complainant at the time of registration, though she is no longer a shareholder, and that she was formerly a citizen of the State of Minnesota, which she contends "provides public subsidization of the company to nurture it and help it survive." The nature of any such "subsidization" is not noted in Respondentís Affidavit or submissions and is not proved.
As a result of Complainantís showing, and Respondentís apparent lack of rights and legitimate interests in the domain name, the burden must shift to Respondent to demonstrate Respondentís rights and legitimate interests in the domain name. see Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000). Respondent may demonstrate her rights and legitimate interests in the domain name by any of the methods shown in Paragraph 4 (c) of the Uniform Domain Name Dispute Resolution Policy. Neither Sections (i) or (ii) are relevant to this dispute. Respondent relies upon Section (iii) which states "you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." If this can be shown, Respondent must prevail on this issue.
Respondent submits the Affidavit of Cynthia Jorgenson. It states in part the following: "On or about February 19, 2000, Affiant purchased the Internet domain Northwestairlines.org for the purpose of operating a website where she intended to (a) erect a consumer bulletin board, (b) provide unbiased information about Northwest Airlines to Minnesota taxpayers, investors and stockholders, both actual and prospective, and (c) provide links to other websites which contain news about lawsuits filed against Northwest and other newsworthy eventsÖAffiant acquired the domain name northwestairlines.org for the sole purpose of disseminating potentially critical information about Northwest Airlines (and positive information as well) to the public, specifically actual and potential investors and shareholders of Northwest AirlinesÖThe website Affiant contemplated launching was not for any commercial purpose or personal financial gain."
This is another in the line of cases regarding consumer free speech complaint sites. There is a developing line of case law regarding such sites that attempt to define the limits to which a party may use the mark of another in a domain name to comment, criticize, disparage, or downplay the products or activities of another. See Robo Enterprises, Inc. v. Orvin Tobiason, FA 95857 (Nat. Arb. Forum Dec. 24, 2000); The New York Times Co. v. New York Internet Services, D2000-1072 (WIPO Dec. 5, 2000), for discussion and cases cited therein.
It is inappropriate to permit trademark owners to shut down sites that are aimed at criticism of the trademark holder because the content contained in the site is unfair, unwarranted, or untrue. Trademark rights may be limited by First Amendment concerns. See Wal-Mart Stores, Inc. v. wallmartcanadasucks.com and Kenneth J. Harvey, D2000-1104 (WIPO Nov. 23, 2000).
It is beyond the scope of domain dispute cases to consider the issue of the boundaries of free speech generally and the manner and extent to which a trademark may be used fairly and without infringement. See Mission KwaSizabantu v. Benjamin Rost, D2000-0279 (WIPO June 7, 2000).
A distinction must be drawn between the domain name itself and the contents of the site which is reached through the domain name. See Estee Lauder Inc. v. estelauder.com, estelauder.net and Jett Hanna, D2000-0869 (WIPO Sept. 25, 2000). A party may have First Amendment rights as to the content of the site, but that does not give the party an equal right to use the marks of another in the domain name.
Quoting from the case of New York Times Co. v. New York Internet Services:
Even if the site at newyorktimes.com were purely a commentary or opinion site, NYIS would not be entitled to use THE NEW YORK TIMES mark in the domain name. As this Panel discussed in E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case D2000-0615, even though NYIS may have the right to (1) establish a commentary or opinion site re The New York Times and (2) to mention The New York Times at the site and to reproduce the mark there, NYIS is not necessarily entitled to use The New York Times name or mark as part of NYISís address for such a website. A domain name is not only an address, it is a personal identifier. Many addresses have been available to NYIS which would not in any way impinge on the trademark rights of The New York Times. NYIS consciously chose the domain name in issue to lead Internet users to the NYIS site. NYIS is consciously counting on initial confusion to direct Internet users to the NYIS site. It is highly likely that such users intend to find an authorized site of the New York Times. The New York Times Company v. New York Internet Services, D2000-1072 (WIPO Dec. 5, 2000).
As was stated in the Estee Lauder case: "ÖRespondent may well, and likely does, have extensive rights of free speech to provide a platform to criticize Complainant and a right to the fair use of Complainantís marks in so doing. The contents of Respondentís websites may also be perfectly legitimate use of those rights. But Respondent could well have chosen to use a domain name that was not confusingly similar to Complainantís and/or in which Complainant had no rights; it intentionally chose not to do soÖRespondentís free expression rights do not here give it a right or legitimate interest in the domain names at issue." Estee Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, D2000-0869 (WIPO Sept. 25, 2000).
Respondent chose the domain name for the specific purpose of it being associated with Complainant so that Respondent could make available to investors and potential shareholders certain information of her choosing in the nature of commentary or criticism. The domain name will cause initial confusion to Internet users. It will misleadingly divert consumers to Respondentís website. The fact that the website has not yet begun to operate does not change the decision that Respondent has no rights or legitimate interests in the domain name, NORTHWESTAIRLINES.ORG. See BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000); Chi-Chiís Inc. v. Restaurant Commentary, D2000-0321 (WIPO June 29, 2000).
Registration and Use in Bad Faith
The Uniform Domain Dispute Resolution Policy lists four instances that constitute evidence of bad faith. Respondent has not yet begun to use the domain name. It cannot be determined with certainty how Respondent will use the domain name when finally put into use. The only evidence is Respondentís own Affidavit. It states that the site will be used to publish views of Complainant that may well be critical and will include information about lawsuits filed against Complainant. It can be inferred that Respondent would not have gone to the trouble of registering the domain name for the purpose of publishing information about Complainant, unless the information to be published is negative. Respondent has "always seen Northwest Airlines as a company that owed the public a special duty because of the public subsidies and/or loans if received from taxpayer money."
Paragraph 4(b)(iii) of the Uniform Domain Name Dispute Resolution Policy states that it is evidence of bad faith that "you have registered the domain name primarily for the purpose of disrupting the business of a competitor."
The term "competitor" is not limited to competitors for commercial gain. See Estee Lauder Inc. v. estelauder.com, esteluder.net and Jeff Hanna, D2000-0869 (WIPO Sept. 25, 2000). "The natural meaning of the word Ďcompetitorí is one who acts in opposition to another and the context does not imply or demand any restricted meaning such as a commercial or business competitor." See Mission KwaSizabantu v. Benjamin Rost, D2000-0279 (WIPO June 7, 2000).
The question to be considered is whether Respondent established the website for the purpose of disrupting the business of Complainant. Respondent admits that the website will contain negative views which, it can be inferred, are calculated to undermine any prior favorable views that a user might have of Complainant. The purpose of Respondent in choosing the domain name is to cause the persons seeking information on the Complainantís activities to be drawn into the Respondentís website and thereby to be exposed to contrary and critical views. Such conduct is bad faith, it being no answer that the content of the website will be offered in good faith. See Mission KwaSizabantu v. Benjamin Rost, D2000-0279 (WIPO June 7, 2000).
Respondent registered the domain name for the purpose of bringing Internet users desiring to learn more about Complainant to Respondentís site for the intended purpose of publishing contrary and critical views of Complainant thus disrupting the business of Complainant. Registering a domain name identical with the mark of Complainant, for this purpose, is bad faith.
If Respondent truly desires to register and operate a noncommercial website for commentary and criticism of Complainant, that can easily be done by choosing a domain name that clearly indicates that it is a site operating for that purpose and not a site being operated by Complainant. See Wall-Mart Stores, Inc. v. wallmartcanadasucks.com and Kenneth J. Harvey, D2000-1104 (WIPO Nov. 23, 2000).
IT IS HEREBY ORDERED THAT THE DOMAIN NAME "NORTHWESTAIRLINES.ORG" NOW REGISTERED IN THE NAME OF RESPONDENT, CYNTHIA JORGENSON, BE TRANSFERRED TO THE COMPLAINANT, NORTHWEST AIRLINES, INC.
Tyrus R. Atkinson, Jr., Esq.
Dated: March 28, 2001
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