Hawaiian Airlines, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2002001882153
Complainant is Hawaiian Airlines, Inc. (“Complainant”), represented by John L. Slafsky of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hawaiianajrlines.com> and <hawaiianailrlines.com>, registered with GoDaddy.com, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 5, 2020; the Forum received payment on February 5, 2020.
On February 7, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hawaiianajrlines.com> and <hawaiianailrlines.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 11, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@hawaiianajrlines.com, postmaster@hawaiianailrlines.com. Also on February 11, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 3, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, Hawaiian Airlines, Inc., has been providing air transportation services to fly passengers to and from Hawaii since 1941. Complainant has rights in the HAWAIIAN AIRLINES mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,312,666 registered on Jan. 1, 1985).
2. Respondent’s <hawaiianajrlines.com> and <hawaiianailrlines.com> domain names[i] are confusingly similar to Complainant’s HAWAIIAN AIRLINES mark as they include the mark in its entirety, slightly misspelling it, and add the “.com” generic top-level domain (“gTLD”).
3. Respondent lacks rights or legitimate interests in the <hawaiianajrlines.com> and <hawaiianailrlines.com> domain names. Respondent is not authorized to use the Complainant’s mark and is not commonly known by the domain names. Additionally, Respondent fails to use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain names are used to divert Internet users from Complainant’s actual site, as they initially show an inactive landing page, then resolve to Complainant’s actual site.
4. Respondent registered and uses the <hawaiianajrlines.com> and <hawaiianailrlines.com> domain names in bad faith. Respondent attempts to disrupt Complainant’s business by attracting users to its own webpages and capitalizes on the confusion caused by using confusingly similar domain names.
5. Finally, Respondent had actual knowledge of Complainant’s rights in the HAWAIIAN AIRLINES mark prior to its registration of the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the HAWAIIAN AIRLINES mark. Respondent’s domain names are confusingly similar to Complainant’s HAWAIIAN AIRLINES mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <hawaiianajrlines.com> and <hawaiianailrlines.com> domain names and that Respondent registered and uses the domain names in bad faith.
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."
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the HAWAIIAN AIRLINES mark through registration with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides copies of its registration of the HAWAIIAN AIRLINES mark with the USPTO (e.g. Reg. No. 1,312,666 registered on Jan. 1, 1985). Accordingly, Complainant has established rights in the HAWAIIAN AIRLINES mark for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s <hawaiianajrlines.com> and <hawaiianailrlines.com> domain names are confusingly similar to Complainant’s HAWAIIAN AIRLINES mark as they include the mark in its entirety, slightly misspelling it, and adding the “.com” gTLD. Slight misspelling of mark and addition of a gTLD are not sufficient to distinguish a domain name for purposes of Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the <hawaiianajrlines.com> and <hawaiianailrlines.com> domain names are confusingly similar to Complainant’s HAWAIIAN AIRLINES mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <hawaiianajrlines.com> and <hawaiianailrlines.com> domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <hawaiianajrlines.com> and <hawaiianailrlines.com> domain names. Specifically, Complainant argues that Respondent is not commonly known by the domain names and Respondent is not a licensee or authorized to use Complainant’s HAWAIIAN AIRLINES mark. Where a response is absent, WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by a domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the <hawaiianajrlines.com> and <hawaiianailrlines.com> domain names lists the registrant as “Carolina Rodrigues / Fundacion Comercio Electronico,” and there is no other evidence to suggest that Respondent was authorized to use the HAWAIIAN AIRLINES mark. Therefore, Respondent is not commonly known by the <hawaiianajrlines.com> and <hawaiianailrlines.com> domain names per ¶ 4(c)(ii).
Next, Complainant argues Respondent fails to use the <hawaiianajrlines.com> and <hawaiianailrlines.com> domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent registered the domain names with intent to divert Internet users from Complainant’s actual webpage to Respondent’s webpage which ultimately resolves to Complainant’s actual webpage. Such intent to divert Internet users away from a complainant’s actual webpage, even if the domain names ultimately resolve to a complainant’s actual webpage, may not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”). Complainant provides screenshots of Respondent’s resolving webpage, which diverts Internet users ultimately to Complainant’s actual webpage. Therefore, the Panel holds that Respondent’s use of the <hawaiianajrlines.com> and <hawaiianailrlines.com> domain names does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues Respondent registered and uses the <hawaiianajrlines.com> and <hawaiianailrlines.com> domain names in bad faith. Specifically, Complainant asserts that Respondent attempts to disrupt Complainant’s business by attracting users to its own webpages and using confusingly similar domain names. A respondent’s use of confusingly similar domain names to disrupt a complainant’s business shows bad faith pursuant to Policy ¶¶ 4(b)(iii) and/or (iv). Pop Sockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”) Complainant provides screenshots of Respondent’s confusingly similar <hawaiianajrlines.com> and <hawaiianailrlines.com> domain names, which likely initially divert Internet users away from Complainant’s actual webpage but do ultimately resolve to Complainant’s actual webpage. Therefore, the Panel holds that Respondent registered and uses the <hawaiianajrlines.com> and <hawaiianailrlines.com> domain names in bad faith pursuant to Policy ¶¶ 4(b)(iii) and/or (iv).
Finally, Complainant argues Respondent registered and uses the <hawaiianajrlines.com> and <hawaiianailrlines.com> domain names in bad faith as Respondent had actual knowledge of Complainant’s rights in the HAWAIIAN AIRLINES mark prior to its registration of the domain names. Actual knowledge is sufficient and may be proven through a totality of circumstances per Policy ¶ 4(a)(iii). See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”). Complainant has shown through the widespread use of its HAWAIIAN AIRLINES mark that Respondent had actual knowledge of Complainant’s rights in the HAWAIIAN AIRLINES mark when it registered the <hawaiianajrlines.com> and <hawaiianailrlines.com> domain names. Therefore, the Panel finds that Respondent registered and uses the <hawaiianajrlines.com> and <hawaiianailrlines.com> domain names in bad faith pursuant Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hawaiianajrlines.com> and <hawaiianailrlines.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 7, 2020
[i] The <hawaiianajrlines.com> domain name was registered on November 27, 2019 and <hawaiianailrlines.com> was registered on September 23, 2019.
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