DECISION

America West Airlines v. domainchronicle

Claim Number:  FA0312000222038

PARTIES

Complainant is America West Airlines, Tempe, AZ (“Complainant”) represented by Christy Hubbard, of Lewis and Roca LLP, 40 N. Central Avenue, Phoenix, AZ 85004.  Respondent is domainchronicle, P.O. Box 1052, Xiamen, Fujian, China 252532 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <americawestairways.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.

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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 26, 2003; the Forum received a hard copy of the Complaint on December 29, 2003.

On December 29, 2003, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <americawestairways.com> is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com 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 December 31, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 20, 2004 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@americawestairways.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 January 28, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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 <americawestairways.com> domain name is confusingly similar to Complainant’s AMERICA WEST AIRLINES mark.

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

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

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

FINDINGS

Complainant owns numerous registrations for its AMERICA WEST AIRLINES mark with the United States Patent and Trademark Office (“USPTO”) (Reg. Nos. 1376326, 2065046, 2081265) and first registered the mark on December 17, 1985.  Complainant began using its AMERICA WEST AIRLINES mark on August 1, 1983.

Complainant uses its mark in connection with air transportation services, travel planning and tour services, and travel packages that include hotel rooms, car rentals, cruises, and airfare.  Consumers can explore Complainant’s services and travel options at Complainant’s websites, located at <americawest.com>, <americawestairlines.com>, and <americawestvacations.com>. 

By 2002, Complainant had grown to be the ninth largest commercial air carrier in the United States.  Complainant has spent millions of dollars promoting its mark and, as a result, the mark has gained widespread public recognition, as well as considerable goodwill.

The disputed domain name was registered by Chen Huang on October 7, 2003.  Complainant sent a cease-and-desist letter to Chen Huang on November 12, 2003.  A few days later, on or about November 20, 2003, the domain registration was transferred to Respondent.  Mr. Huang had also registered other domain names that are similar to Complainant’s mark including <ameriwestairlines.com>, registered on September 27, 2003, and <americawesttairlines.com>, registered on October 11, 2003.  These other domain names included identical content to the disputed domain name prior to and after the domain name transfer.

Respondent allegedly uses the domain name to offer travel-planning services.  Internet users who enter Respondent’s attached website are unable to exit the site due to a common technique called “mouse trapping.”  Additionally, in attempting to exit the attached website, users are bombarded with pop-up advertisements that provide for various contest registrations, as well as requests for the user to switch its homepage to Respondent’s website.

In a previous proceeding, a Panel concluded that Respondent registered and used a domain name in bad faith and ordered it transferred to a complainant.  See HSBC Holdings Plc. v. domainchronicle, D2002-1173 (WIPO Feb. 24, 2003).

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 AMERICA WEST AIRLINES mark through registration with the USPTO and continuous use in commerce since 1983.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to register all possible domain names that surround its substantive mark does not hinder Complainant’s rights in the mark. “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves.”).

The disputed domain name, <americawestairways.com>, is confusingly similar to Complainant’s AMERICA WEST AIRLINES mark because it merely changes the “airlines” portion of Complainant’s mark to “airways.”  Such a change simply shrouds an identical meaning in a different form.  The chosen form still describes Complainant and its specific air travel services.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Am. Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added descriptive terms, did not add any distinctive features capable of overcoming a claim of confusing similarity).

Policy ¶ 4(a)(i) is established for Complainant.

Rights or Legitimate Interests

Respondent has not asserted rights in the disputed domain name.  Therefore, the Panel may accept as true all allegations in the complaint.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint); see also Vert. Solutions Mgmt., Inc. v. Webnet-marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

There is no evidence to suggest that Respondent has been commonly known by the disputed domain name. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), because the domain name provides similar travel services as Complainant and offers links to Complainant’s competitors’ websites.  See Winmark Corp. d/b/a Play It Again Sports v. Giant Sports Factory, FA 128652 (Nat. Arb. Forum Dec. 6, 2002) (finding that Respondent had no rights or legitimate interests in a domain name that used Complainant’s mark to redirect Internet users to a competitor’s website); see also Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).

Policy ¶ 4(a)(ii) is established for Complainant.

Registration and Use in Bad Faith

The transfer of a domain name registration has been equated to “registration” for purposes of  Policy ¶ 4(a)(iii).  See Travant Solutions Inc. v. Cole, FA 203177 (Nat. Arb. Forum Nov. 29, 2003) (“where the domain name was transferred to a new registrant at a time when the new registrant’s registration of the domain name would be in bad faith, the transfer is tantamount to a new registration and the ‘bad faith’ requirement of Policy ¶ 4(a)(iii) can be proven against the current registrant”); cf. Schmidheiny v. Weber, [2003] USCA3 36; 319 F.3d 581, 66 U.S.P.Q.2d 1062 (3d Cir. 2003) (holding that the  “registration” of a domain name for the purposes of the Anti-cybersquatting Consumer Protection Act includes both the initial registration of the domain name and the subsequent re-registration of that domain name with a different registrar by a different registrant).

The fact that Respondent registered a domain name confusingly similar to Complainant’s mark and used it to provide services in competition with Complainant is evidence that Respondent registered and used the name in bad faith by interfering with and disrupting Complainant’s business, pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from Complainant to a competitor’s website in violation of Policy 4(b)(iii)).  

Additionally, Respondent is obviously using the disputed domain name to attract potential customers of Complainant to Respondent’s website to earn revenue through its travel services and various advertisements, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same services as Complainant via his website); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).

Finally, Respondent has engaged in mouse trapping, an inherently parasitic behavior that frustrates Internet-user intention and online use.  Mouse trapping has been held to be evidence of bad faith registration and use.  See Worldwinner.com, Inc. v. Zuccarini, FA 175289 (Nat. Arb. Forum Sept. 22, 2003) (finding mouse-trapping evidence of bad faith registration and use); see also Kidman v. Zuccarini d/b/a Cupcake Party, D2000-1415 (WIPO Jan. 23, 2001) (finding that Respondent’s use of mousetrapping techniques demonstrated bad faith).

 

Policy ¶ 4(a)(iii) is established for Complainant.

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

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

Louis E. Condon, Panelist

Dated:  February 11, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/206.html