DECISION

America West Airlines, Inc. v. Henry Tsung

Claim Number:  FA0401000232953

PARTIES

Complainant is America West Airlines, Inc., Tempe, AZ (“Complainant”) represented by Emily A. Bayton, of Lewis and Roca, LLP, 40 N. Central Avenue, Phoenix, AZ 85004.  Respondent is Henry Tsung, No.2, Alley 4, Lane 177, Swei Rd., Taipei, 356021, Taiwan (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

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

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically January 28, 2004; the Forum received a hard copy of the Complaint January 30, 2004.

On January 30, 2004, Iholdings.Com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <americawestvacatons.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 verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On February 2, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 23, 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@americawestvacatons.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 March 3, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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. The domain name registered by Respondent, <americawestvacatons.com>, is confusingly similar to Complainant’s AMERICA WEST VACATIONS mark.

2. Respondent has no rights to or legitimate interests in the <americawestvacatons.com> domain name.

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

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

FINDINGS

Complainant has offered air transportation services under the AMERICA WEST and AMERICA WEST AIRLINES marks since 1983.  Complainant has become the eighth largest commercial air carrier in the United States.

In 1990, Complainant began arranging travel tours under the marks AMERICA WEST and AMERICA WEST VACATIONS.  Complainant offers a full line of travel packages to consumers, including hotel rooms, car rentals, cruises and airfare.  Consumers are able to explore travel options and prices at Complainant’s online location <americawestvacations.com>.

Complainant owns multiple registrations for the AMERICA WEST AIRLINES mark with the United States Patent and Trademark Office (“USPTO”), including registration numbers 1376326 (Dec. 17, 1985), 2065046 (May 27, 1997), 2081265 (July 22, 1997).

Complainant owns the USPTO registrations for the AMERICA WEST mark (Reg. No. 1445610, June 30, 1987), as well as the AMERICA WEST VACATIONS mark (Reg. No. 2361406, June 27, 2000).

Respondent registered the disputed domain name, <americawestvacatons.com>, October 31, 2003.  The domain name’s attached website is used to offer travel services that include airline ticket booking, hotels and vacation packages; the site links to other well-known travel service companies such as Expedia and Orbitz.

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 will draw such inferences as the Panel 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 to and/or Confusingly Similar

Complainant established by extrinsic proof in this proceeding that Complainant has rights to the AMERICA WEST VACATIONS mark as a result of its registration with the USPTO and by continuous use in commerce. 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, <americawestvacatons.com>, is confusingly similar to Complainant’s AMERICA WEST VACATIONS mark because the name has merely omitted the letter “i” from the word “vacations,” resulting in a minor misspelling of Complainant’s mark.  This minor difference does not significantly distinguish the name from the mark under Policy ¶ 4(a)(i).  See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that misspelling words does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark); see also Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark).

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

Rights to or Legitimate Interests

Complainant established by extrinsic proof in this proceeding that it has rights to and legitimate interests in the mark contained in its entirety in the disputed domain name.  Complainant alleges that Respondent has no such rights. Since Respondent failed to respond to the Complaint, the Panel construes such failure to be an admission that Respondent lacks rights to and legitimate interests in the domain name. See 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); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”).

Respondent further did not offer evidence and nothing in the record suggests that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) and is not making a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because Respondent is using the domain name that is confusingly similar to Complainant’s mark to offer services that directly compete with Complainant’s business, AMERICA WEST VACATIONS. See 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

Complainant alleges that Respondent acted in bad faith by registering and using the disputed domain name, pursuant to Policy ¶ 4(b)(iii).  Because Respondent and Complainant are competitors operating in the same field of travel and vacation services, Respondent likely registered a domain name that is confusingly similar to Complainant’s mark primarily for the purpose of disrupting the business of Complainant. See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also 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 EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business).

Furthermore, Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent intentionally attempted to attract potential customers from Complainant to Respondent’s domain name by taking advantage of Internet users who misspell the word “vacations” and diverting them to Respondent’s competing website for commercial gain. 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 Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to resolve to a website offering similar services as Complainant into the same market).

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

DECISION

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

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

Hon. Carolyn Marks Johnson, Panelist

Dated: March 16, 2004

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