WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION AirTran Holdings Inc. v. Sinclare Vabalon, BHG Case No. D2008-1165 1. The Parties
Complainant is AirTran Holdings Inc., Orlando, Florida, United States of America, represented by Smith, Gambrell & Russell, LLP, United States of America.
Respondent is Sinclare Vabalon, BHG, Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Basic Fusion, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2008. On July 31, 2008, the Center transmitted by email to Basic Fusion, Inc. a request for registrar verification in connection with the disputed domain name. On August 8, 2008, Basic Fusion, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on August 15, 2008. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on August 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 7, 2008. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 8, 2008.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on September 24, 2008. 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
Complainant is AirTran Holdings, Inc., a corporation created under the laws of the State of Nevada with its principal place of business in Orlando, Florida, United States of America. Complainant, through its subsidiary AirTran Airways, Inc., provides air transportation services.
Complainant is the registered owner of the following AIRTRAN marks in the United States of America in respect of air transportation services:
AIRTRAN (U.S. Reg. No. 2,362,176; Registration date June 27, 2000);
AIRTRAN AIRWAYS (U.S. Reg. No. 2,364,510; Registration date July 4, 2000);
AIRTRAN.COM (U.S. Reg. No. 3,202,198; Registration date January 23, 2007).
Respondent registered the disputed domain name on January 29, 2008. 5. Parties' Contentions A. Complainant Identical or Confusingly Similar
Complainant contends that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights on the following grounds:
1. Complainant has adduced evidence to prove that it is the registered owner of the AIRTRAN marks and has rights in respect of the marks.
2. The disputed domain name replicates Complainant's AIRTRAN mark in full, only adding a hyphen between the two syllables “air” and “tran”.
3. A simple punctuation change to Complainant's marks will not suffice to preclude a finding of confusing similarity between the marks and the disputed domain name. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons:
1. Complainant has maintained use of the AIRTRAN marks, including online use, and was granted trade mark registrations in respect of its AIRTRAN marks all prior to the registration of the disputed domain name on January 29, 2008.
2. Complainant has never provided authorization of any kind, including a license, that would permit Respondent to use any of Complainant's AIRTRAN marks.
3. Complainant has searched and has found no evidence that Respondent has used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that Respondent has been commonly known by the disputed domain name, or that Respondent is making a legitimate non-commercial or fair use of the disputed domain name.
4. Complainant asserts that Respondent is not commonly known by the disputed domain name. Moreover, multiple UDRP panels have found that Respondent has registered domain names that bear no relationship to Respondent's name or business, such as or etc and Complainant cites Diners Club International Ltd. v. Sinclare Vabalon, BHG, NAF Case No. FA1183206; Mattel, Inc. v. Sinclare Vabalon, BHG, NAF Case No. FA1191584. By the same token, “Sinclare Vabalon, BHG” and “” are in no way synonymous or homonymic. Registered and Used in Bad Faith
Complainant contends that the disputed domain name is registered and is being used in bad faith on the following grounds:
1. Complainant contends that Respondent registered a domain name that fully includes a well-known mark, with no apparent good faith reason for doing so. Complainant therefore concludes that there is no possible explanation as to why Respondent would have selected a domain name that includes Complainant's AIRTRAN marks (adding only a hyphen thereto), other than to trade on the goodwill of Complainant.
2. Complainant contends that Respondent cannot claim that he was unaware of Complainant's rights in the AIRTRAN marks as Complainant's federal registrations of the AIRTRAN marks provided constructive notice of the marks.
3. Respondent's bad faith can be inferred form Respondent's failure to respond to a cease-and-desist letter from Complainant.
4. Respondent's bad faith can also be inferred from the fact that Respondent has displayed a pattern of bad faith registration of domain names. Respondent appears to have a practice of registering well-known domain names and has at least three reported panel decisions ruling against him for bad faith registration and use.
Respondent uses the disputed domain names he registered for websites that provided “sponsored” links to other website so as to generate advertising revenue for him. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain transfer of the disputed domain name, Complainant must establish that each of the three following elements is satisfied:
1. The domain name is identical or confusingly similar to a trade mark 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.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with Complainant to establish that all these three elements are satisfied.
Furthermore, pursuant to paragraph 15(a) of the Rules, the panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the panel, the panel shall draw such inferences therefrom as it considers appropriate.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
Complainant has adduced evidence to demonstrate that it has registered trade mark rights and continue to have such rights in the AIRTRAN marks in the United States of America in relation to air transportation services. The Panel finds that Complainant has rights and continues to have such rights in the relevant AIRTRAN marks.
The disputed domain name consists of the words “air-tran” and the suffix “.net”. In assessing the degree of similarity between Complainant's trade marks and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between Complainant's AIRTRAN marks and the disputed domain name is to be considered from the perspective of the average Internet user.
The Panel finds that the term “airtran” in Complainant's AIRTRAN marks is the distinctive portion of Complainant's marks. The disputed domain name incorporates a term that is exactly the same as Complainant's AIRTRAN marks except for a hyphen between “air” and “tran”. The addition of the hyphen is insignificant and does not alter the overall impression that Complainant's distinctive marks have been incorporated into the disputed domain name. The Panel finds that the disputed domain name is phonetically identical and visually confusingly similar to Complainant's AIRTRAN marks. It is also an accepted principle that the addition of suffixes such as “.net” being the generic top-level domain is not a distinguishing factor. Consequently, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant's trade marks in which Complainant has rights.
The Panel finds for Complainant on the first part of the test. B. Rights or Legitimate Interests
The burden of proof on this element lies with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a disputed domain name, the burden of proof shifts to the respondent to rebut the complainant's contentions.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you [Respondent] 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 trade mark or service mark at issue.
The Panel finds that Complainant has made out a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name and notes that Respondent has not provided any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name.
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
1. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice or use of the term “air-tran” in its business operations;
2. There was no evidence to show that Complainant has licensed or otherwise permitted Respondent to use its trade marks or to apply for or use any domain name incorporating the trade marks;
3. There is no indication that Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services;
4. Complainant and its AIRTRAN marks enjoy goodwill in the United States of America as a result of substantial use since 2000. Consequently, in the absence of contrary evidence and satisfactory explanations from Respondent, the AIRTRAN marks are not those that domain name holders could legitimately adopt without giving rise to the inference that Respondent is creating an impression of an association with Complainant and unfairly riding on Complainant's goodwill in the AIRTRAN marks.
The Panel finds for Complainant on the second part of the test. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trade mark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted 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 the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances can also constitute registration and use of the domain name in bad faith by respondents in the appropriate cases.
One important consideration in the Panel's assessment of whether Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of Respondent of Complainant's rights in the trade marks concerned. Complainant has argued that the federal registrations of its AIRTRAN marks in the United States of America provided constructive knowledge of Complainant's rights in the marks. More importantly, in this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. The Panel finds that it is highly unlikely that Respondent would not have had actual notice of Complainant's trade mark rights at the time of the registration of the disputed domain name. The Panel's conclusion that Respondent ought to have had knowledge of Complainant's AIRTRAN marks at the time of registration is further buttressed by the fact that in this day and age of the Internet and with businesses in general having an Internet presence, anyone who conducts a simple search exercise over the Internet may be able to ascertain whether “air-tran” is a registered trade mark and whether prior rights subsist in the word. Respondent should not adopt a domain name which incorporates elements that are identical or confusingly similar to third parties' marks. In this Panel's view, it is the duty of Respondent to undertake due diligence to ensure that the selection or choice of a domain name does not infringe the intellectual property rights of third parties. Consequently, in the absence of contrary evidence and satisfactory explanations from Respondent, the Panel finds that the term “airtran” in Complainant's AIRTRAN marks, which enjoy goodwill in the United States of America as a result of substantial use since 2000, is not one that domain name holders could legitimately adopt without giving rise to the inference that Respondent is creating an impression of an association with Complainant. Therefore, this Panel finds that Respondent is thus unfairly riding on the goodwill of Complainant. Thus, it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name. However, Respondent has chosen not to respond to Complainant's allegations in the Complaint and this further supports the Panel's conclusion that the disputed domain name was registered by Respondent in bad faith with the intent to create an impression of an association with Complainant and its products and services, and profit therefrom.
Furthermore, the Panel finds that Respondent has a history of cybersquatting and at least three prior panels have found Respondent to have engaged in bad faith registration and use of the domain names. Given this pattern of behaviour, it is even more pertinent for Respondent to come forth with a plausible explanation of his choice of the disputed domain name in the present case. Unfortunately, Respondent has failed to provide the requisite explanation and such conduct on the part of Respondent confirms the Panel's finding that Respondent has registered and is using the disputed domain name in bad faith.
Finally, Respondent did not demonstrate that the disputed domain name has been used in connection with a bona fide offering of products and services in the Internet. On the contrary, Complainant has shown that Respondent merely used the disputed domain name to provide a “sponsored” link to other websites and such diversion of Internet traffic cannot constitute a bona fide offering of goods and services on the part of Respondent.
In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the use of the website to which the disputed domain name resolves are indicative of registration and use of the disputed domain name in bad faith.
The Panel finds for Complainant on the third part of the test. 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 Complainant.
Susanna H.S. Leong
Sole Panelist
Date: October 8, 2008
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