DECISION

SabreMark Limited Partnership v. KME

Claim Number:  FA0306000162171

PARTIES

Complainant is SabreMark Limited Partnership, Southlake, TX (“Complainant”) represented by Wendy L. Robertson, of Alston & Bird, LLP.  Respondent is KME, Delaware, ALGERIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sabredotres.com>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 11, 2003; the Forum received a hard copy of the Complaint on June 17, 2003.

On June 11, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <sabredotres.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On June 18, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 8, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@sabredotres.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On July 11, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <sabredotres.com> domain name is confusingly similar to Complainant’s SABRE and SABRE.RES mark.

2. Respondent does not have any rights or legitimate interests in the <sabredotres.com> domain name.

3. Respondent registered and used the <sabredotres.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, SabreMark Limited Partnership, has several trademark registrations for the SABRE mark worldwide (e.g., U.S. Reg. No. 1,219,417, registered on the Principal Register of the U.S. Patent and Trademark Office on December 7, 1982). Respondent has used the SABRE mark since 1962 with respect to travel related services, providing more than 56,000 travel agency locations to travel agents worldwide. Approximately 40% of the world’s travel is booked through Complainant’s SABRE GDS (Global Distribution System), which includes more than 400 airlines, approximately 60,000 hotels, 50 car rental companies, 9 cruise lines, 36 railroads and 232 operators.

Since as early as February 26, 2001, Complainant has sold an Internet booking engine to travel agencies under the SABRE.RES mark, pronounced “Sabre Dot Res” by consumers. This engine allows travel agencies to offer their customers the opportunity to make self-guided purchase decisions, view and select available seats on chosen flights, specifcy flight and price requirements, choose hotels based on various parameters and check gate and flight arrival and departure information.

Respondent, KME, registered the <sabredotres.com> domain name on May 13, 2003, and is not licensed or authorized to use Complainant’s marks for any purpose. Internet users who attempt to reach the disputed domain name are redirected to the <adultflics.com> domain name, which hosts an adult-oriented website. Internet users attempting to leave this domain name are subjected to a series of pop-up advertisements for additional adult-oriented content. All of Complainant’s attempts to reach Respondent failed due to incorrect WHOIS contact data for the disputed domain name.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark 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.

Identical and/or Confusingly Similar

Complainant has established rights in the SABRE mark through registration of the mark with the appropriate governmental agencies worldwide, as well as through widespread and continuous use of the mark in commerce. Additionally, Complainant has established common-law rights in the SABRE.RES mark through proof that the mark has gained secondary meaning with consumers.

Respondent’s <sabredotres.com> domain name is confusingly similar to Complainant’s SABRE.RES mark. Respondent replaces the “.” in Complainant’s common law mark by spelling out the word “dot,” while keeping the words SABRE and RES intact. In light of the fact that consumers refer to Complainant’s product under the SABRE.RES mark as “Sabre Dot Res,” this phonetical distinction is insufficient to overcome a finding of confusing similarity under Policy ¶ 4(a)(i). See  Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also YAHOO! Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name <yawho.com> is confusingly similar to Complainant’s YAHOO mark).

Accordingly, the Panel finds that the <sabredotres.com> domain name is confusingly similar to Complainant’s SABRE.RES mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent uses the <sabredotres.com> domain name to redirect Internet users to an adult-oriented website which features adult-oriented pop-up advertisements. While there is nothing illegitimate per se with using a domain name to host adult-oriented content, a domain name registrant cannot use the goodwill surrounding a trademark owner’s mark in order to attract Internet users to its websites. Respondent’s use of Complainant’s SABRE.RES mark for these purposes is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). These “safe harbor” provisions of the Policy are inapplicable to Respondent. See ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) (stating that the fact that the “use of the disputed domain name in connection with pornographic images and links tarnishes and dilutes [Complainant’s mark]” was evidence that Respondent had no rights or legitimate interests in the disputed domain name); see also Paws, Inc. v. Zuccarini a/k/a Country Walk, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”).

Respondent chose to enter false WHOIS contact information when it registered the disputed domain name. Thus, there is no evidence before the Panel to compel the conclusion that Respondent is “commonly known by” the disputed domain name pursuant to Policy ¶ 4(c)(ii), and the Panel finds that Respondent is not able to avail itself of this provision. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <sabredotres.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered and used the <sabredotres.com> domain name in bad faith. Respondent deliberately registered a domain name that was nearly identical to Complainant’s mark, and the Panel infers from the fact that the domain name does not even remotely spell a cognizable phrase that this registration was done with full knowledge of Complainant’s rights in the SABRE.RES mark. By using Complainant’s mark in its domain name registration to send Internet users to an adult-oriented website, Complainant tarnishes the goodwill surrounding Complainant’s mark, evidence that the domain name was registered and used in bad faith. See National Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (stating that “it is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques”); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO March 4, 2003) (stating that “whatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”).

The Panel thus finds that Respondent registered and used the <sabredotres.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <sabredotres.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  July 25, 2003

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