WIPO Domain Name Decision D2009-0718 for deltaflys.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Delta Air Lines, Inc. v. Ruslan Moussaev Case No. D2009-0718 1. The Parties

Complainant is Delta Air Lines, Inc. of Atlanta, Georgia, United States of America, represented by Ladas & Parry LLP, United States of America.

Respondent is Ruslan Moussaev of Brooklyn, New York, United States of America. 2. The Domain Name and Registrar

The disputed domain name (“Domain Name”) is registered with GoD, Inc. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2009. On June 3, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed Domain Name. On June 3, 2009, GoD, Inc. transmitted by email to the Center its verification response confirming that 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 30, 2009.

The Center appointed John R. Keys, Jr. as the sole panelist in this matter on July 13, 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 the Rules, paragraph 7. 4. Factual Background

Complainant Delta Air Lines, Inc. is engaged worldwide in the business of providing air transportation services for persons, property and mail. Complainant has provided passenger airline service since 1929 and is one of the world's largest commercial airlines, with over 16 billion dollars in annual revenue. Delta offers carrier service to 311 destinations in 52 countries. Including its SkyTeam and worldwide codeshare partners, Complainant offers flights to 462 destinations in 98 countries.

Complainant's services, including those of its affiliates, range from air transportation and shipping services to arena facilities for exhibitions, education and training in flight instruction and aviation science, tracking and monitoring baggage, cargo, mail, freight, package shipments and aircraft parts, in-flight entertainment services and vacation-planning services.

Complainant owns 14 trademark registrations on the Principal Register of the United States Patent and Trademark Office (USPTO) which consist entirely of, or incorporate, the word “delta”. These registrations include No. 654,915, the DELTA mark registered on November 19, 1957 for “Air Transportation of passengers, mail, [and] express, freight and cargo,” with a claimed first use in commerce of July 1945. Complainant owns some 129 trademark registrations in 93 countries and jurisdictions which consist entirely of, or incorporate, the word “delta”.

Respondent registered the Domain Name on May 16, 2008. Respondent is using the Domain Name to direct Internet users to a website which further points Internet users to the websites of Complainant's direct competitors, among others.

On June 9, 2008, Complainant sent Respondent a cease-and-desist letter by email and courier notifying Respondent that its registration and use of the Domain Name violated Complainant's rights in its trademark registrations and requesting transfer of the Domain Name. Respondent did not delete or transfer the Domain Name. 5. Parties' Contentions A. Complainant

Respondent's Domain Name is confusingly similar to Complainant's DELTA marks, in which Complainant has rights.

Complainant contends that it owns registered trademarks for DELTA and formatives using the designation DELTA in the United States of America and numerous other countries and that those registrations demonstrate Complainant's rights in the DELTA mark under Policy, paragraph 4(a)(i). Complainant contends that, through its long and successful efforts, Complainant's portfolio of worldwide trademark registrations has earned recognition, a good name and a reputation for high quality.

Complainant further contends that the Domain Name incorporates Complainant's DELTA mark in its entirety and merely appends the generic term “flys”, which is directly related to the services provided by Complainant under its DELTA marks. The Domain Name is therefore confusingly similar to Complainant's trademarks under Policy, paragraph 4(a)(i) because the DELTA mark is the principal element of the Domain Name.

The addition of the gTLD suffix “.com” does not distinguish the Domain Name from the DELTA mark because gTLDs are a functional necessity, not an arbitrary trademark choice.

Respondent has no rights to or legitimate interests in the Domain Name.

Complainant contends that in 2008, decades after Complainant first used the DELTA mark in U.S. and international commerce, without Complainant's authorization or consent, Respondent registered the Domain Name, which is confusingly similar to the DELTA mark, and is using the Domain Name to divert Internet traffic to a generic webpage featuring links to websites offering for sale the services of Complainant's direct competitors. The Domain Name leads to a website featuring links such as “Cheap Airline Tickets”, “Spirit Airlines Tickets”, and “Low Fares”, among others. These links diverted Internet users to websites offering services in direct competition with Complainant. The “Airline” and “Travel” links redirected Internet users to websites featuring additional links to the websites of Complainant's direct competitors. For example, the “Cheap Airline Tickets” link on the website available through the “Airline” link directs Internet users to the official “” website. Complainant contends that such use demonstrates neither a bona fide offering of goods or services under Policy, paragraph 4(c)(i) nor a legitimate noncommercial or fair use of the Domain Name under Policy, paragraph 4(c)(iii).

Complainant contends that it has not authorized, licensed or consented to Respondent's registration and use of a domain name incorporating the DELTA trademark, or any confusingly similar variation of Complainant's marks. Complainant states that to its knowledge there are no current trademark applications or registrations in the name of Respondent for any mark incorporating the designation DELTA anywhere in the world. Moreover, nothing in the WhoIs information related to the Domain Name indicates that Respondent was commonly known by the name “Delta” or “deltaflys” pursuant to Policy, paragraph 4(c)(ii).

Finally, Complainant contends that on June 9, 2008, it sent Respondent a cease-and-desist letter regarding Respondent's violation of Complainant's rights and indicating Complainant might pursue available remedies should Respondent fail to respond. Respondent initially promised to delete the Domain Name registration but then failed to do despite subsequent reminders. Complainant contends that it is reasonable to assume that if Respondent had any justification for registration of the Domain Name, he would not originally have agreed to delete it. Alternatively, Respondent could have contacted Complainant to make its case and avoid further enforcement action. Further, Respondent's failure to counter the allegations of the cease and desist letter amounts to adoptive admission of Complainant's allegations.

Respondent has registered and used the Domain Name in bad faith.

Complainant contends that Respondent registered a domain name confusingly similar to Complainant's mark and used the Domain Name to divert Internet users to Respondent's website, where Respondent likely garners click-through fees for each Internet user who selects one of the links. Moreover, the links on Respondent's website further divert Internet traffic to websites that offer airline services for sale, in direct competition with the services offered by Complainant under its DELTA trademarks. Respondent, Complainant contends, has therefore registered and used the Domain Name in bad faith pursuant to Policy, paragraph 4(b)(iv).

Complainant contends that Respondent's registration and use of the Domain Name to divert Internet traffic to Complainant's direct competitors establishes bad faith registration and use of the Domain Name under Policy, paragraph 4(b)(iii), because the Domain Name was registered for the purpose of disrupting a competitor's business.

Complainant further contends that while each of the four circumstances listed under Policy, paragraph 4(b), if proved, evidences bad faith use and registration of a domain name, additional factors can be used to support findings of bad faith registration and use. Respondent clearly was aware of Complainant's rights in its trademarks when Respondent acquired the Domain Name, because the Domain Name incorporates the DELTA trademark, appends to it the generic and related term “flys”, and links the associated website to websites advertising airline services in direct competition with the services offered by Complainant. Respondent's registration and use of the Domain Name, with actual or constructive knowledge of Complainant's trademark rights, establishes Respondent's bad faith registration and use of the Domain Name pursuant to Policy, paragraph 4(a)(iii).

Finally, Complainant contends that Respondent's failure to respond to Complainant's cease-and-desist letter by transferring the or attempting to justify his use of it amounts to adoptive admission of Complainant's allegations and is thus evidence of bad faith. B. Respondent

Respondent did not reply to Complainant's contentions. 6. Discussion and Findings

Respondent did not respond to the Complaint therefore the Panel considers whether Respondent has been given adequate notice of the proceeding. The evidence indicates the Center sent the Complaint in electronic form and in hard copy by courier to Respondent at the addresses provided in Respondent's registration information and available in the WhoIs. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and the administrative proceeding.

Where there is no response to the complaint, the panel must decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under Rules, paragraph 14(b), Respondent's failure to answer entitles the Panel to “draw such inferences therefrom as it considers appropriate”.

Under Policy, paragraph 4(a), Complainant must prove each of three elements of its case in order to obtain the requested relief:

(i) Respondent's Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) Respondent registered and is using the Domain Name in bad faith.

The Panel considers the elements in order. A. Identical or Confusingly Similar

Complainant clearly possesses legal rights in the DELTA trademark by reason of its longstanding use of the mark in commerce and by registrations of the marks in the United States of America on the Principal Register of the USPTO and in numerous other countries. See Costco Wholesale Membership, Inc., Costco Wholesale Corporation v. Jogn Dinway/Hosting Media,WIPO Case No. D2007-1426; Janus International Holding Co. v. Scott Rademacher,WIPO Case No. D2002-0201 (“registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption”).

The Panel finds that the Domain Name is confusingly similar to Complainant's DELTA trademark. The Domain Name incorporates Complainant's DELTA trademark in its entirety with the correct spelling. Complainant's basic trademark and the distinctive, dominant component of the Domain Name are the same.

The fact that the Domain Name appends to the dominant DELTA the generic term “flys”, does not obviate confusing similarity between Complainant's trademark and the Domain Name. See, Hoffmann-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923, (“Generally, a user of a mark may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it.” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23: 50 (4th ed. 1998)”); See also, Pfizer Inc. v. United Pharmacy Ltd.,WIPO Case No. D2001-0446. The principle is well established in the decisions of prior UDRP Panels. See Utensilerie Associate S.p.A. v. C & M,WIPO Case No. D2003-0159; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903(“[T]he fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); See also, General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; Eastman Chemical Company. v. Manila Industries, Inc., NAF Claim No. FA 450806; Pioneer Hi-Bred International, Inc. v. Manila Industries, Inc., NAF Claim No. FA 444468. UDRP panels have found the likelihood of confusing similarity has not been avoided by the addition of descriptive content even where entire words have been added to a famous trademark. See The Coca-Cola Company v. Gamlebyen Invest AS,WIPO Case No. D2000-1677 (COCA-COLA and “cocacoladrinks” held confusingly similar); America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004, citing Sporty's Farm LLC. v. Sportsman's Market. Inc., 202 F. 3d 489, 497-98 (2d. Cir. 2000); Yahoo! Inc. v. CPIC NET and Syed Hussain,WIPO Case No. D2001-0195; America Online, Inc., v. Yeteck Communication, Inc.,WIPO Case No. D2001-0055; Merrell Pharmaceuticals Inc. v. Daniel Laforge, NAF Claim No. FA 420671 (“ domain name is confusingly similar to the ALLEGRA mark because the domain name fully incorporates the mark and merely adds the generic or descriptive term ‘buy' and the country-code ‘.us.'[which] does not significantly distinguish the domain name from the mark.”).

Use of the word “flys”, which describes the service Complainant provides and which is associated with its trademark, tends to increase rather than diminish the confusing similarity between the Domain Name and Complainant's mark. See Costco Wholesale Membership, Inc., Costco Wholesale Corporation v. Yong Li,WIPO Case No. D2004-0296 (descriptive term “tires” in increases confusion); Media West-GSI, Inc., Gannett Satellite Information Network, Inc., and Gannett Co., Inc. v. Cupcake City and null John Zuccarini a/k/a John Zuccarini,WIPO Case No. D2001-0235 (addition of “sports” and “weather” to name of newspaper caused confusion).

The addition of the gTLD suffix “.com” does not distinguish the Domain Name from the DELTA mark because gTLDs are a functional necessity, not an arbitrary trademark choice. See MasterCard International Incorporated v. John Henry Enterprises,WIPO Case No. D2001-0632.

The Panel concludes that Complainant has established that the Domain Name and Complainant's DELTA trademark are confusingly similar. Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests

Complainant makes a prima facie case that Respondent possesses no rights or legitimate interests in the Domain Name.

Respondent, without authority from Complainant, uses the Domain Name to divert Internet traffic from Complainant's website to a webpage featuring links to websites offering for sale the services of Complainant and of Complainant's direct competitors. Such use represents neither a bona fide offering of goods or services under Policy, paragraph 4(c)(i) nor a legitimate noncommercial or fair use of the domain under Policy, paragraph 4(c)(iii).

Respondent creates a false impression of association or sponsorship between Complainant and Respondent's website which is deceptive to the Internet user and presumptively harmful to Complainant's' goodwill in its DELTA mark. This is not a bona fide offering of services by Respondent. See, Shaw Industries Group, Inc., Columbia Insurance Company v. Administrator, Domain, WIPO Case No. D2007-0583; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252 (no rights or legitimate interests where respondent generated commercial gain by intentionally and misleadingly diverting users away from complainant's site to a competing website); 24 Hour Fitness USA, Inc. v. 24HourN-Quality Domains For Sale, NAF Claim No. 187429 (Respondent's use of the domain names to redirect Internet users to a website featuring advertisements and links to complainant's competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); DLJ Long Term Investment Corporation v. BargainDomainN, NAF Claim No. 104580 (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to [a site], where services that compete with Complainant are advertised.”).

The evidence suggests also that Respondent is not making either a noncommercial or a fair use of the Domain Name. Policy, paragraph 4(c)(iii). The website appears clearly to be commercial in nature in that it provides the user with links to a number of commercial sites, lists several sponsored results including links to Complainant's competitors), and carries registrar advertising.

Complainant has not licensed or consented to Respondent's registration and use of a domain name incorporating the DELTA trademark. There is no evidence that Respondent has been commonly known by the Domain Name or that Respondent has registered or applied to register any trademark containing the name Delta or any formatives of that name. Policy, paragraph 4(c)(ii). See, Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 (no rights or legitimate interests where (1) respondent is not a licensee of complainant; (2) complainant's rights in the mark precede respondent's registration; (3) respondent is not commonly known by the domain name in question).

The fact that Complainant sent Respondent a cease-and-desist letter, that Respondent initially said he would delete the Domain Name, then failed to do so without challenging the Complainant's allegations, warrant an inference that Respondent did not have legitimate interests in the Domain Name to defend. See, The Great Eastern Life Assurance Company Limited v. Unasi Inc.,WIPO Case No. D2005-1218 (silence amounting to adoptive admissions of complainant's allegations).

Respondent, in default here, failed to produce evidence to rebut Complainant's prima facie case and has not, therefore, established that he has rights or legitimate interests in the Domain Name. The Panel thus concludes that Complainant has established that Respondent has no rights or legitimate interests in the Domain Name. Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith

Complainant must demonstrate that Respondent both registered and is using the Domain Name in bad faith. Policy, paragraph 4(a)(iii).

Actual or constructive knowledge of complainant's rights in trademarks is a factor indicating bad faith registration. Ticketmaster Corporation v. Spider Web Design, Inc.,WIPO Case No. D2000-1551); The Channel Tunnel Group Ltd. v. John Powell,WIPO Case No. D2000-0038. Based upon Complainant's longstanding use of the DELTA mark in the air transportation industry and its multiple registrations and use of the DELTA trademark in connection with air transportation, the Panel finds that Respondent had actual and constructive knowledge of Complainant's trademark when he registered the Domain Name. See, U.S. Lanham Trademark Act, 15 U.S.C. § 1072 (“Registration as constructive notice of claim of ownership”); Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028 (Respondent had prior constructive or actual knowledge of complainant's trademark because the mark was registered); Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc.,WIPO Case No. D2000-0090 (mark registration puts respondent on constructive notice); Orange Glo International, Inc. v. Jeff Blume, NAF Claim No. 118313 (mark listed on the Principal Register of the USPTO confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”); Microsoft Corporation v. Party Night, Inc. d/b/a/ Peter Carrington,WIPO Case No. D2003-0501 (“not reasonable to expect the Respondent to register the disputed domain names if the Respondent had no knowledge of the Complainant's trade mark and services in connection thereto”); Pfizer Inc. v. Papol Suger,WIPO Case No. D2002-0187 (because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent “must have known about the Complainant's rights when it registered the subject domain name”).

Registration of a domain name that is confusingly similar to a famous trademark by an entity that has no relationship to that mark may itself be evidence of bad faith registration and use. Sporty's Farm L.L.C. v. Sportsman's Market, Inc., supra; Pepperdine University v. BDC Partners, Inc.,WIPO Case No. D2006-1003; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (use of a name connected with a well-known product by someone with no connection with the product suggests opportunistic bad faith).

The Panel finds that Respondent registered the Domain Name, which is confusingly similar to Complainant's well-known trademark, with actual and constructive knowledge of Complainant's rights in the mark and that, as discussed above, Respondent has no demonstrated relationship to or right or legitimate interest in Complainant's marks. The Panel thus concludes that Respondent registered the Domain Name in bad faith.

The Policy provides that bad faith use of a domain name exists, inter alia, where the respondent “has intentionally attempted to attract, for commercial gain, Internet users to [its] website …by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on their website or location”. Policy, paragraph 4(b)(iv). Respondent here is knowingly using the DELTA mark, trading on its established goodwill, to attract and divert Internet users to Respondent's website by creating a false impression that the site is affiliated with or sponsored by Complainant. See, Lifetime Products, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0719. The fact that the website contains links to numerous commercial sites and carries advertising, from which Respondent likely benefits from click-through revenues, supports the inference that the purpose of Respondent's diversion of traffic from Complainant to its own site is Respondent's own commercial gain. See Ticketmaster Corporation v. Yong Li,WIPO Case No. D2003-0905; Costco Wholesale Membership, Inc., Costco Wholesale Corporation v. Henry Chan,WIPO Case No. D2004-0218; Associated Newspapers Limited v. Domain Manager, NAF Claim No. FA 201976 (“evidence of bad faith . . . [where] the domain name provided links to Complainant's competitors and Respondent presumably benefited commercially from the misleading domain name by receiving ‘click-through-fees.”); American University v. Richard Cook, NAF Claim No. FA 208629 (bad faith registration and use of a domain name incorporating another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name); Luck's Music Library v. Stellar Artist Management, NAF Claim No. FA 95650 (Respondent engaged in bad faith use and registration by linking the domain name to a website offering services similar to complainant's services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with complainant's marks); ESPN, Inc. v. Danny Ballerini, NAF Case No. FA 95410 (bad faith existed where respondent linked the domain name to another website, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain).

Respondent's failure to respond constructively to Complainant's cease-and-desist letter, after initially promising to cease using the Domain Name, is further evidence of bad faith. See, The Great Eastern Life Assurance Company Limited v. Unasi Inc., above-cited; RRI Financial, Inc., v. Ray Chen,WIPO Case No. D2001-1242 (failure to respond to cease and desist letters is evidence of bad faith).

The Panel does not accept Complainant's contention that Respondent registered and used the Domain Name to disrupt the business of a competitor. There is no evidence that Respondent actually competes with Complainant in providing air transportation services or that Respondent's purpose was to disrupt Complainant's business, as opposed to seeking revenue for himself, albeit at some potential economic detriment to Complainant. This does not, however, alter the outcome.

The Panel concludes that Complainant has established Respondent's bad faith registration and use of the Domain Name. 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.

John R. Keys, Jr.
Sole Panelist

Dated: July 27, 2009

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