Compania Panamena de Aviacion, S.A. v.
Informatica Internacional a/k/a Informatica Internacional Clayton S.A.
Claim
Number: FA0505000485805
Complainant is Compania Panamena de Aviacion, S.A. (“Complainant”),
represented by Gregory Casas of Locke Liddell & Sapp, LLP, 600 Travis, Suite 3400, Houston, TX, 77002. Respondent is Informatica Internacional a/k/a Informatica Internacional Clayton S.A. (“Respondent”),
Interlink 776, P.O. Box 02-5635, Miami, FL 33102.
The
domain name at issue is <copaairlines.com>, registered with Innerwise,
Inc. d/b/a Itsyourdomain.com.
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.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
24, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 27, 2005.
On
May 25, 2005, Innerwise, Inc. d/b/a Itsyourdomain.com confirmed by e-mail to
the National Arbitration Forum that the domain name <copaairlines.com>
is registered with Innerwise, Inc. d/b/a Itsyourdomain.com and that Respondent
is the current registrant of the name. Innerwise,
Inc. d/b/a Itsyourdomain.com has verified that Respondent is bound by the Innerwise,
Inc. d/b/a 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 2, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 22, 2005 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@copaairlines.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
June 28, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed John J.
Upchurch as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <copaairlines.com>
domain name is identical to Complainant’s COPA AIRLINES mark.
2. Respondent does not have any rights or
legitimate interests in the <copaairlines.com> domain name.
3. Respondent registered and used the <copaairlines.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Compania Panamena de Aviacion, S.A., is an international airline headquartered
in Panama City, Panama. Complainant
began its operations in 1947 as a local operation with domestic flights to
three cities within Panama. Complainant
has grown into an international air carrier servicing thirty-three destinations
in twenty countries located throughout North, South and Central America and the
Caribbean.
Complainant
holds a trademark registration with the United States Patent and Trademark
Office (“USPTO”) for the COPA AIRLINES mark (Reg. No. 2,415,339 filed June 21,
1999 and issued December 26, 2000).
Complainant has been using its mark in commerce since May 1999 in
association with the transportation of passengers by air.
Since April
1996, Complainant has operated its main website at the <copaair.com>
domain name.
Respondent
registered the <copaairlines.com> domain name on July 21,
1999. To date, Respondent has yet to
make commercial use of the domain name and visitors are informed that the
website is “… under construction, so please check back …”
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 Complainant's undisputed
representations pursuant to paragraphs 5(e), 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 and inferences set forth in the
Complaint as true unless the evidence is clearly contradictory. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing,Iinc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (holding that the respondent's failure to respond
allows all reasonable inferences of fact in the allegations of the complaint to
be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO
Feb. 29, 2000) ("In the absence of a response, it is appropriate to accept
as true all allegations of the Complaint.").
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.
Complainant’s
registration of the COPA AIRLINES mark with the USPTO and its use of the mark
in commerce over the last six years establish Complainant’s rights in the
mark. See Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark
law, registered marks hold a presumption that they are inherently distinctive
and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (“Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive and
that a respondent has the burden of refuting this assumption.”); see also
Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that
ICANN Policy ¶ 4(a)(i) does not require a complainant to demonstrate “exclusive
rights,” but only that the complainant has a bona fide basis for making the
Complaint in the first place).
In addition, the
Panel finds that, once a mark has been registered, the date from which the
registrant’s rights in the mark revert back to is the date the application was
filed with the USPTO. See FDNY Fire
Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum Mar. 26,
2003) (finding that Complainant’s rights in the FDNY mark relate back to the
date that its successful trademark registration was filed with the USPTO); see
also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435
(C.C.P.A. 1965) (registration on the Principal Register is prima facie
proof of continual use of the mark, dating back to the filing date of the
application for registration).
Respondent’s <copaairlines.com>
domain name is identical to Complainant’s COPA AIRLINES mark because the domain
name simply deletes the space between the words and adds the generic top-level
domain (“gTLD”) “.com.” Neither the
deletion of spaces nor the addition of a gTLD are sufficient to distinguish Respondent’s
domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see
also Sporty’s Farm L.L.C. v.
Sportsman’s Mkt., Inc., 202 F.3d 489 (2d Cir. 2000) (“For consumers to buy
things or gather information on the Internet, they need an easy way to find
particular companies or brand names. The most common method of locating an unknown
domain name is simply to type in the company name or logo with the suffix
.com.”); see also Hannover Ruckversicherungs-AG v. Ryu, FA
102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be
identical to HANNOVER RE, “as spaces are impermissible in domain names and a
generic top-level domain such as ‘.com’ or ‘.net’ is required in domain
names”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
submitted a prima facie case to the Panel, thereby shifting the burden
to Respondent. Respondent’s failure to
fulfill its burden means that Respondent has failed to invoke any circumstances
that could demonstrate rights or legitimate interests in the domain name. See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has
asserted that the respondent has no rights or legitimate interests with respect
to the domain name it is incumbent on the respondent to come forward with
concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent has no rights or legitimate interests is sufficient to shift the
burden of proof to the respondent to demonstrate that such rights or legitimate
interests exist); see also Woolworths
plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent
evidence of preparation to use the domain name for a legitimate purpose, the
burden of proof lies with the respondent to demonstrate that it has rights or
legitimate interests).
In the WHOIS
contact information, Respondent lists its registrant’s name as “Informatica
Internacional” and its administrative, billing and technical contact as
“Charles Stratford.” However, since
Respondent failed to respond to the Complaint, there has not been any affirmative
evidence provided to the Panel showing that Respondent was ever commonly known
by the disputed domain name. Thus, the
Panel concludes that Respondent is not commonly known by the domain name
pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (finding that “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also RMO, Inc. v.
Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a
showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) the respondent is not a licensee of
the complainant; (2) the complainant’s prior rights in the mark precede the
respondent’s registration; and (3) the respondent is not commonly known by the
domain name in question).
Respondent is
wholly appropriating Complainant’s mark and has passively held the domain name
since the time of registration in 1999.
The Panel finds that this failure to use a domain name that is identical
to Complainant’s mark is not a bona fide offering of goods or services pursuant
to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain
name pursuant to Policy ¶ 4(c)(iii). See
Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where a respondent failed to submit a response to the complaint and had made no
use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000)
(finding no rights or legitimate interests in the domain name where there was
no proof that a respondent made preparations to use the domain name in
connection with a bona fide offering of goods and services before notice of the
domain name dispute, the domain name did not resolve to a website, and the
respondent is not commonly known by the domain name); see also Boeing Co. v. Bressi, D2000-1164 (WIPO
Oct. 23, 2000) (finding no rights or legitimate interests where the respondent
advanced no basis on which the panel could conclude that it had rights or
legitimate interests in the domain names, and no use of the domain names was
established).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
intentionally registered the <copaairlines.com> domain name that
contains in its entirety Complainant’s COPA AIRLINES mark. Respondent has failed to market any bona
fide goods or services since the disputed domain name was registered. Respondent’s passive holding of a domain
name that is confusingly similar to Complainant’s mark evidences bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Caravan Club v.
Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that a
respondent made no use of the domain name or website that connects with the
domain name, and that passive holding of a domain name permits an inference of
registration and use in bad faith); see also Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18,
2000) (“[I]t is possible, in certain circumstances, for inactivity by the
Respondent to amount to the domain name being used in bad faith.”); see also
Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith).
Additionally,
Respondent’s registration of the disputed domain name, a domain name that
wholly incorporates Complainant’s mark, suggests that Respondent knew of
Complainant’s rights in the COPA AIRLINES mark. Furthermore, Complainant’s registration of its mark with the
USPTO confers constructive knowledge on anyone attempting to use the mark. Thus, the Panel finds that Respondent chose
the <copaairlines.com> domain name based on the distinctive
qualities of Complainant’s mark, which evidences bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding,
FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <copaairlines.com> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: July 12, 2005
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