WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Taca International Airlines, S.A. v. Kevin Daste Case No. D2009-0413 1. The Parties
The Complainant is Taca International Airlines, S.A. of La Libertad, El Salvador, represented by Law Offices of Jean S. Perwin, United States of America.
The Respondent is Kevin Daste of New Orleans, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2009. On March 31, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On March 31, 2009, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 2, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 22, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 24, 2009.
The Center appointed Brigitte Joppich as the sole panelist in this matter on May 4, 2009. 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant, Taca International Airlines, is a flight corporation based in San Salvador, El Salvador, and founded in 1931, which today serves 39 destinations in 22 countries in North, Central, and South America and the Caribbean, including daily flights to 9 major United States (“U.S.”) cities.
The Complainant has been using its TACA mark since 1931 and first registered it in the U.S. in 1999. The Complainant is the proprietor of numerous trademark registrations including the name TACA in the U.S. where the Respondent is located, inter alia U.S. Federal registration No. 2,995,261 TACA for airline services, U.S. trademark registrations No. 3023363 TACA.COM, No. 3,530,361 TACA CARGO and No. 2304696 GRUPO TACA (the “TACA Marks”). The Complainant spent over 71 million U.S. dollars promoting the TACA Marks in the U.S., North, Central and South America from 1998 to 2009.
Furthermore, the Complainant is the proprietor of various domain name registrations including its trademark TACA, inter alia, as of July 28, 1995.
The disputed domain name was first registered on September 20, 1999. The Respondent purchased this domain name on November 26, 2008 and is using it in connection with a parking website. 5. Parties' Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is derivative and virtually identical to the Complainant's TACA Marks, which have become famous in their field due to their long, continuous use and have been incontestable in the U.S. since 2005. The disputed domain name contains the Complainant's name in its entirety. Furthermore, the Complainant contends that adding “airlines” or any (other) prefix, suffix, hyphen or generic word to a distinctive trademark owner's domain name is not enough to avoid confusing similarity.
(2) The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to use any domain name incorporating its marks. TACA is an invented word and not one that a business would legitimately choose unless seeking to create the impression that it was somehow associated with the Complainant. There is no evidence that the Respondent has any rights or
legitimate interest in the disputed domain name.
(3) The Complainant finally contends that the domain name was registered and is being used in bad faith to intentionally attempt to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation or endorsement of the Respondent's website. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant's trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant's highly distinctive TACA Marks in which the Complainant has rights.
The mere addition of the generic word “airlines” following the trademark does not eliminate the similarity between the Complainant's marks and the domain name. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (cf. Dr. Grandel GmbH v. Drg Randel Inc.,WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242).
Furthermore, it is well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant's trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is consensus view among panelists that a complainant has to make only a prima facie case to fulfil the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has asserted that the Respondent neither uses the domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services nor is known by the disputed domain name, that the Respondent is not making any legitimate non-commercial or fair use of the disputed domain name, and that the Respondent therefore cannot have any legitimate interests in the domain name. The Complainant has therefore fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain name under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered and is being used in bad faith.
Evidence of bad faith registration and use is shown when registration of a domain name occurs in order to utilize another's well-known trademark by attracting Internet users to a website for commercial gain (cf. America Online, Inc. v. Tencent Communications Corp., NAF Case No. FA 93668; Lilly ICOS LLC v. John Hopking / Neo net Ltd.,WIPO Case No. D2005-0694; Lilly ICOS LLC v. East Coast Webs, Sean Lowery,WIPO Case No. D2004-1101).
The Complainant is well-known internationally and has been carrying on business activities under the name TACA for many decades. Given the high distinctiveness of the TACA Marks in connection with airline services in the Panel's view, it is inconceivable that the Respondent registered the disputed domain name which consists of the Complainant's TACA Mark and the word “airlines” describing the Complainant's services without knowledge of the Complainant's rights in the TACA Marks. The Panel is therefore satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant's marks and therefore in bad faith under paragraph 4(a)(iii) of the Policy.
As to bad faith use, by fully incorporating the TACA Marks into the disputed domain name and by using the website at such domain name as a parking website, providing links to direct competitors of the Complainant, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainant's website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (cf. L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc.,WIPO Case No. D2005-0623, with further references). The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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.
Brigitte Joppich
Sole Panelist
Dated: May 14, 2009
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