WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Southwest Airlines Co. v. 1 & 1 Internet Inc./ Michael Stevens
and Kenzie Engineering, Inc.
Case No. D2007-1413
1. The Parties
The Complainant is Southwest Airlines Co., c/o Pamela S. Smith, of Dallas, Texas, United States of America, represented by DLA Piper US LLP, United States of America.
The Respondent is 1 & 1 Internet Inc./ Michael Stevens, Kenzie Engineering, Inc., respectively of Chesterbrook, Pennsylvania, United States of America, and Kenzie Engineering Inc., Greenfield, Indiana, United States of America.
2. The Domain Name and Registrar
The disputed domain name, , is registered with Schlund + Partner AG.
3. Procedural History
The Complaint (naming as Respondent what was stated to be the proxy registrant “1 & 1 Internet, Inc.”) was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2007. On September 24, 2007, the Center transmitted by email to Schlund + Partner AG a request for registrar verification in connection with the domain name at issue. On October 27, 2007 Schlund + Partner AG transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Registrant was identified by the Registrar as Michael Stevens, Kenzie Engineering Inc. On October 4, 2007, the Center sent an email communication to the Complaint providing the registrant and contact information disclosed by the Registrar, and inviting the Complaint to submit an amendment to the Complaint. The Complaint filed an amended Complaint on October 1, 2007. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 16, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2007.
The Center appointed Terrell C. Birch as the sole panelist in this matter on November 23, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Since at least as early as January 1998, Complainant has used the mark SWA in connection with its air transportation and related travel services. The SWA mark is the recognized acronym for Complainant’s full name Southwest Airlines, which has been in use in the United States for over thirty-six (36) years. Complainant has used and continues to use the SWA mark in connection with its services, and, as explained in more detail below, owns a federal trademark registration for its mark (hereinafter the “SWA Mark”).
To help protect its rights in its important trademark and to put others on notice of these rights, Complainant has obtained the following trademark registrations in the United States for its SWA Mark:
Mark
Goods/Services
Reg. No.
Date of
First Use in
Commerce
Filing
Date
Reg. Date
SWA
Transportation Of
2313710
January 1,
October 7,
February 1,
Passengers And Parcels By
Air
1998
1998
2000
1-800-I-
1-800 Telephone Number
3011471
February 1,
September
November
FLY-SWA
Providing Access To
Various Travel Related
Services Namely, Making
Reservations And Bookings
For Transportation
1992
17, 2004
1, 2005
Complainant’s adoption, use, filing dates and registration dates of these trademarks are prior to Respondent’s registration of the domain name.
Complainant has spent significant amounts of money to ensure that, as a result of its extensive advertising, its trade name and its trademarks are widely recognized throughout the United States. In that regard, Complainant spends millions of dollars per year in production and publication of advertising. Complainant’s SWA Mark is featured prominently in much of Complainant’s advertising.
Complainant’s SWA Mark is featured prominently on the Internet, and consumers who encounter the reference to SWA on the Internet are likely to associate it with Complainant’s air transportation services.
Complainant relies on the Internet to conduct a significant portion of its business. In fact, Complainant was the first major U.S. airline to establish a home page on the Internet. In connection with this Internet presence, Complainant owns domain names and operates through websites which incorporate the SWA Mark, including: , and .
Respondent registered the domain name with the registrar Schlund + Partner AG on October 18, 2005.
Respondent registered the domain name more than six years after Complainant began using the SWA Mark in connection with airline transportation services.
5. Parties’ Contentions
A. Complainant
As a result of the foregoing facts setting forth the above-described extensive use and promotion, the SWA Mark has become distinctive and famous and has enjoyed such distinctiveness and notoriety since long prior to the date on which Respondent registered the domain name at issue.
Respondent was familiar with the well-known SWA Mark at the time it registered the domain name, and Respondent intentionally registered a domain name that is confusingly similar to the SWA Mark in order to profit from the goodwill associated with the SWA Mark.
From a review of Respondent’s website, it appears that Respondent intends to use the domain name in connection with flight “check in” services. More specifically, for a fee of five dollars ($5 USD), Respondent will access Complainant’s own website SOUTHWEST.COM, log in to a customer’s account, “check in” to a flight for the customer, and secure a boarding pass.
Such use of Complainant’s website in this manner is strictly prohibited by the Terms and Conditions set forth on Complainant’s SOUTHWEST.COM website. The Terms and Conditions clearly state, “third parties may not use the Southwest website for the purpose of checking Customers in online or attempting to obtain for them a boarding pass in any certain boarding group.”
Complainant recently learned of the domain name because Complainant monitors the improper or unauthorized use of the SWA Mark as part of domain names. Complainant diligently enforces its rights in the SWA Mark.
1. Complainant Has Valid Grounds for Requesting a Transfer Under the ICANN Rules
Complainant contends that the disputed domain name should immediately be transferred to Complainant for the following reasons:
i. The Domain Name is Confusingly Similar to the SWA Mark
The domain name is confusingly similar to Complainant’s SWA Mark.
Respondent’s domain name incorporates, in its entirety, the SWA Mark, which is a distinctive mark. The only difference between Respondent’s domain name and Complainant’s Mark is the addition of the generic top-level domain (gTLD) “.com” and the descriptive term “Check in.”
First, the addition of the gTLD is “completely without legal significance.” See PepsiCo, Inc. v. PEPSI, SRL and EMS Computer Industry, WIPO Case No. D2003-0696 (finding that Respondent’s addition of a gTLD, such as “.com” to domain names incorporating the term “Pepsi” insufficient to distinguish Respondent’s domain names from Complainant’s mark PEPSI).
Second, the addition of common terms to a domain name does not obscure the near identity of a domain name to a Complainant’s marks. Such a difference is insufficient to ameliorate confusion. See Louis Vuitton Malletier v. Enrico Villa, WIPO Case No. D20000721 (finding Respondent’s domain name was confusingly similar to Complainant’s trademark LOUIS VUITTON as the term “Louis Vuitton” was the core element of the domain name); Chanel, Inc. v. IGGI Networks, Inc., WIPO Case No. D2000-1831 (finding a likelihood of confusion between the domain name and Complainant’s CHANEL trademarks because the term “mail” is generic and would lead users to believe that the domain name is a place to send mail involving Complainant). Furthermore, the incorporation of a trademark in its entirety into a domain name has been held sufficient to establish confusing similarity to a registered trademark. See PepsiCo, Inc..
Finally, in assessing a likelihood of confusion between a Registrant’s domain name and Complainant’s marks, “points of similarity are weighed more heavily than points of difference.” See Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219) (finding Registrants’ domain name confusingly similar to Complainant’s POKEMON trademark).
In this case, Respondent has incorporated Complainant’s registered trademark SWA, in its entirety, into its domain name. Furthermore, Respondent’s addition of the gLTD “.com” and the descriptive term “Check in” does nothing to distinguish its domain name from Complainant’s registered mark, and, in fact, is a term one might expect Complainant to associate with its SWA Mark (because of the association of check-in with air transportation services). Certainly, the term “Check in” is descriptive of Respondent’s services as Respondent “checks in” online for customers in order to obtain their boarding passes. As such, Internet users are likely to be confused as to whether an association exists between the domain name and Complainant.
ii. Respondent Has No Legitimate Interest in the Domain Name
Complainant further contends that Respondent has no legitimate interest in the domain name. Respondent’s intentionally infringing use of the SWA Mark for use in connection with services expressly prohibited by the Terms and Conditions of the website in an attempt to earn revenue from southwest’s customers is not use in connection with a bona fide offering of goods and services. Furthermore, Respondent is not commonly known by the name SWA-Checkin, and since Respondent charges for its services, it cannot claim that it is making a legitimate noncommercial fair use of the SWA Mark.
Under Paragraph 4(c) of the Policy, a Respondent can demonstrate a legitimate interest in a domain name by proving one of the following: (i) that before notice of the dispute, it had made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; (ii) it is commonly known by the domain name; or (iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademarks of another. See ICANN’s Uniform Domain Name Dispute Resolution Policy.
With respect to Paragraph 4(c)(i) of the Policy, previous case law under the ICANN Rules have found that a domain name that incorporates another entity’s trademark for the purpose of luring customers to the website is not used in connection with a bona fide offering of goods and services. In Van Gogh Museum Enterprises BV v. M Ohannessian, WIPO Case No. D2001-0879, Respondent was using the domain name for use in connection with the sale of artwork and similar merchandise related to Van Gogh, despite the ownership of the trademark VAN GOGH MUSEUM by Complainant. The Panel, ordering transfer of the domain name to Complainant, stated that Respondent “was well aware his website evoked to the public the Complainant’s world famous museum in Amsterdam. It is well-settled under the Policy that a knowingly infringing use of a trademark to offer goods and services is not a bona fide offering of goods and services under the Policy.” See also Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 (finding Respondent’s use of the domain names and not used in connection with a bona fide offering of goods and services as it was not “fair use for Respondent to use Complainant’s famous trademark in order to attract the public to the website . . . it would not be fair use for Respondent to use Complainant’s trademark outside a shop or office to entice customers in to use its database. The same logic applies in cyberspace”).
Furthermore, the presence of a disclaimer on the website of any sort of affiliation or association with the trademark owner is insufficient to make the use bona fide. See Dr. Ing. H. c.F Porsche AG v. Anderson, WIPO Case No. D2004-0312 (finding Respondent’s use of the domain name not used in connection with a bona fide offering even though Respondent included a disclaimer on its website. The Panel stated, “Respondent’s projected website would in fact be accessible through the domain name, which would misleadingly appear to be a domain name of the Complainant. Consumers would realize that this is not the case only once they have had actually accessed the site and could see the disclaimer added by Respondent . . . At this point, however, they had already been diverted and misled”).
In this case, the knowingly infringing use of Complainant’s SWA Mark to offer flight “check in” services is not a bona fide offering of services. Respondent intentionally incorporated Complainant’s famous SWA Mark in its domain name for the purpose of luring customers to its website. Customers will mistakenly believe that the website, accessible through the domain name, belongs to Complainant and that they can check in for their southwest flights at this website. The presence of the disclaimer on Respondent’s website is insufficient to make its use bona fide as the customers, once they have accessed the website, will already have been diverted and misled.
Furthermore, Respondent’s services violate the Terms and Conditions posted on Complainant’s website. Complainant expressly prohibits third parties from accessing its website for the purpose of checking in customers and obtaining boarding passes for them. In sum, Respondent’s use of Complainant’s SWA Mark for use in connection with a service expressly prohibited by the Terms and Conditions of the website is not use in connection with a bona fide offering of services, and as such, Respondent has no legitimate interest in the domain name.
To the best of Complainant’s knowledge, Respondent is not commonly known by the name SWA-Checkin, and therefore, cannot claim a legitimate interest in the domain name under Paragraph 4(c)(ii) of the Policy.
As stated on Respondent’s website, it will charge customers five dollars ($5 USD) to check in for them and obtain a boarding pass, and therefore, Respondent cannot claim that it is making a legitimate noncommercial or fair use of the domain name under Paragraph 4(c)(iii) of the Policy.
Respondent has no legitimate interests in the domain name in view of Complainant’s prior statutory and common law rights in the SWA Mark and the analysis set forth above.
iii. Respondent Registered and Is Using the Domain Name in Bad Faith
Complaint contends that Policy establishes that, for purposes of Paragraph 4(a)(iii), “bad faith” registration and use of a domain name can be established by a showing of circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with complainant’s mark as to source, sponsorship, affiliation or endorsement of respondent’s website or location, or of a product or service on respondent’s website or location. See Policy, Paragraph 4(b)(iv).
In World Wrestling Federation Entertainment, Inc. v. Rift, WIPO Case No. D2000-1499, Respondent registered and used the domain name in connection with the sale of wrestling-related goods and wrestling information services, despite Complainant’s ownership of the famous WWF mark for professional wrestling entertainment services. The Panel, ordering a transfer of the domain name to the Complainant, found that the domain name was registered and used in bad faith. The Panel stated, “Respondent deliberately selected Complainant’s mark as a salient part of his domain name knowing it was a reference to Complainant, rather than a non-infringing alternative such as ‘’ that would aptly describe his endeavor. The consequences of that choice seem inevitably to create a likelihood of confusion.”
In this case, Respondent intentionally incorporated Complainant’s famous trademark into its domain name for the purpose of luring customers to its website. It could have chosen a non-infringing alternative, such as , but it deliberately chose not to. As stated above, Respondent charges five dollars ($5 USD) to each customer for this service, and therefore, is attempting to attract users to its website for commercial gain. Thus, the domain name was registered and is being used in bad faith by Respondent.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds as follows:
In view of the uncontested facts, contentions of Complainant, and applicable substantive law, the domain name is confusingly similar to Complainant’s SWA Mark and creates a likelihood of confusion as to whether an association exists between the domain name and Complainant. The addition of the term “Checkin” to the Complainant’s SWA Mark does not diminish, but indeed rather enhances, the prospect of confusion for internet users. The Panel finds for Complainant under the first element.
B. Rights or Legitimate Interests
In view of the uncontested facts, contentions of Complainant, and applicable requirements of Paragraph 4(c) of the Policy, the Panel is satisfied that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. It has been well-established by previous panels that the burden of rebuttal therefore passes to Respondent. Respondent has failed to demonstrate any rights or legitimate interest in the domain name and therefore, for the purpose of these proceedings, has none.
C. Registered and Used in Bad Faith
The disputed domain name combines the Complainant’s well-known SWA mark with the term “checkin”, a combination suggesting the Respondent was in all likelihood well aware of the Complainant’s area of business and SWA mark at the time of registering the disputed domain name.
The Respondent is now apparently using the disputed domain name as a pay-per-click landing page containing sponsored links to airline companies which appear to be in competition with the business of the Complainant; in essence, apparently generating revenue from confusion with Complainant’s SWA Mark. Such use is not consistent with good faith. cf mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.D2007-1141.
In view of the foregoing uncontested facts, contentions of the Complainant, and applicable requirements and terms of Paragraphs 4(a)(iii) and 4(b)(iv) of the Policy, Respondent has registered and is using the domain name in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Terrell C. Birch
Sole Panelist
Dated: December 7, 2007
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