The Complainant is Delta Air Lines, Inc. of Atlanta, Georgia, United States of America, represented by Ladas & Parry LLP, United States of America.
The Respondent is Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2012. On October 31, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 2012, the Registrar 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 Center sent an email communication to the Complainant on November 1, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed amendments to the Complaint on November 2 and November 7, 2012.
The Center verified that the Complaint together with the amendments to 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 the Respondent of the Complaint, and the proceedings commenced on November 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2012.
The Center appointed Anthony R. Connerty as the sole panelist in this matter on December 4, 2012. 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
The Complainant is the owner of numerous worldwide trademark registrations for the DELTA and DELTA AIR LINES marks. These registrations include registrations in Australia and the United States (“U.S.”). For example, U.S. Trademark Registration No. 0523611 for the mark DELTA AIR LINES and design was issued on April 4, 1950.
The disputed domain name was first registered on January 25, 2005. 5. Parties’ Contentions A. Complainant
The Complainant states that it is known as a worldwide leader in air transportation services for persons, property and mail and that it is one of the world’s largest commercial airlines, serving more than 160 million customers each year to more than 340 destinations in 61 countries on 6 continents. The Complainant states that it employs more than 80,000 employees worldwide and operates a mainline fleet of more than 700 aircraft. It is a founding member of the SkyTeam® global alliance, and participates in the industry’s leading trans-Atlantic joint venture with Air France-KLM and Alitalia. Including its worldwide alliance partners, the Complainant offers customers more than 13,000 daily flights with hubs in Amsterdam, Atlanta, Cincinnati, Detroit, Memphis, Minneapolis-St. Paul, New York-JFK, Paris-Charles de Gaulle, Salt Lake City and Tokyo-Narita. The Complainant states that in 2013 it will invest more than USD 2 billion in airport facilities and global products, services and technology.
The domain name was registered by the Respondent in January 2005, “decades after Delta’s first use of the DELTA and DELTA AIR LINES marks in Australian, US, and international commerce”.
The Complainant states that, without its authorization or consent, the Respondent is using the domain name “to direct Internet users to a commercial website which further directs Internet users to the websites of Complainant’s direct competitors”.
The Complainant’s contentions are that:
- The disputed domain name is confusingly similar to its trademark;
- The Respondent has no rights or legitimate interest in the disputed domain name;
- The Respondent registered and is using the disputed domain name in bad faith.
The Complainant seeks the transfer of the disputed domain name to itself. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15 of the Rules states that the Panel is required to 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 appropriate. Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements in order to be entitled to the relief sought:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive.
For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith. A. Identical or Confusingly Similar
The Complainant has shown that it is the owner of the well-known trademarks DELTA and DELTA AIR LINES, and argues that the disputed domain name incorporates the Complainant’s marks in their entireties, simply appending the generic term “jobs”. The Complainant refers to Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, where the panel stated that, “As numerous prior panels have held, the 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.”
So in this case the Panel finds that the addition of the word “jobs” has no impact on the overall impression of the dominant part of the disputed domain name: “jobs” is a non-distinctive term that is commonly used in the commercial context. Likewise, the addition of “.com” does not alter the fact that the disputed domain name is confusingly similar to the Complainant’s marks.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and is satisfied that the Complainant has brought itself within the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant is one of the world’s largest commercial airlines operating in 61 countries on 6 continents.
The Complainant states that it has not authorized, licensed or consented to the Respondent’s registration and use of a domain name incorporating the DELTA and/or DELTA AIR LINES trademarks, or any confusingly similar variation of the Complainant’s marks.
The Complainant further states that, without its authorization or consent, the Respondent registered the domain name “a domain name confusingly similar to the DELTA and DELTA AIR LINES marks, and is using the Offending Domain to divert Internet traffic to generic webpages featuring links to websites offering for sale the services of Complainant’s direct competitors”.
The Complainant notes that the disputed domain name was registered in 2005, but argues that many UDRP panels have held that laches does not constitute a defence in proceedings under the Policy. For example, in Tom Cruise v. Network Operations Center / Alberta Hot Rods,WIPO Case No. D2006-0560, the panel raised the question whether the fact that the Complainant had delayed for 10 years following registration of the disputed domain name to bring an action against Respondent acted “as a bar to a finding in favor of Complainant?... [Concluding] [t]his Panel does not accept that there is meaningful precedent under the Policy for refusing to enforce trademark rights on the basis of a delay in bringing a claim following use of a disputed domain name.”
Paragraph 4(c) of the Policy sets out circumstances which, without limitation, may demonstrate a right or legitimate interest in a domain name. The Respondent was entitled to answer the Complainant’s allegations, and was entitled to demonstrate any right or interest in the domain name by way of – for example – the circumstances listed in paragraph 4(c) of the Policy. The Respondent has not done so.
And whilst it is for the Complainant to prove the three elements of paragraph 4(a) of the Policy, it is well-established that in relation to the second element, namely paragraph 4(a)(ii) of the Policy, once the Complainant has made out a prima facie case, it is then a matter for the Respondent to answer that case. The thinking behind this policy is clear: whether or not the Respondent has rights or legitimate interests is a question which the Respondent is best-placed to answer.
For the foregoing reasons, the Panel is satisfied that the Complainant has shown its compliance with the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant states that the Respondent must have been aware of the Complainant’s rights in the trademarks when it acquired the domain name, since the disputed domain name incorporates in their entirety the DELTA and DELTA AIR LINES marks.
The Respondent registered a domain name confusingly similar to Complainant’s marks,
“and used the Offending Domain 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 Delta under its DELTA and DELTA AIR LINES trademarks.”
Registration of a domain name that is confusingly similar to complainant's trademark, and which is then used to operate a “click-through” site, may be considered to be evidence of bad faith: Apple Inc. v. Domain Privacy Ltd., WIPO Case No. D2012-0620.
The Complainant in its Amended Complaint adds that the Respondent is not new to administrative proceedings under the Policy:
“Thirty-seven disputes have been filed with WIPO naming as the respondent ‘Private Registrations Aktien Gesellschaft’ or some variation of Respondent’s name in conjunction with ‘Domain Admin’ and/or its contact information…Similarly, 43 disputes have been filed with the National Arbitration Forum naming Private Registrations Aktien Gesellschaft as Respondent or some variation of Respondent’s name in conjunction with ‘Domain Admin’ and/or its contact information. Complainant believes the Respondent in each of these disputes is one and the same considering the almost identical name and the identical address and/or e-mail address information.”
In one such case, namely Bayerische Motoren Werke AG v. Private Registrations Aktien Gesellschaft, WIPO Case No. D2010-0898, the panel described the Respondent as a “serial cybersquatter”.
Again, it is appropriate to state that the Respondent was entitled to answer the Complainant’s arguments by serving a Response, but has chosen not to do so.
The Panel is satisfied that the Complainant has provided evidence of bad faith registration and use pursuant to paragraph 4(b)(iv) the Policy, and has proved the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Anthony R. Connerty
Sole Panelist
Date: December 17, 2012
Full & Egal Universal Law Academy