WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Southwest Airlines Co. v. R.S. Potdar a/k/a Dotsan
Case No. D2003-0861
1. The Parties
The Complainant is Southwest Airlines Co., of Dallas, Texas, United States of America. The Complainant is represented by Messrs Piper Rudnick of Los Angeles, California, United States of America.
The Respondent, who is not represented, is R S Potdar, of Mumbai, India, otherwise known as Dotsan. The Respondent appears to be known by the alias Dotsan as is evidenced by prior UDRP cases, which are cited by the Complainant. Contact information including the email and mailing address provided in the current domain name WHOIS listing for R S Potdar is identical to the email and mailing address provided to the Complainant as registrant contact information for Dotsan by the Registrar.
2. The Domain Name and Registrar
The Domain Name in dispute is <southwestairfare.com>. The Domain Name is registered with eNom, Inc., of Washington, United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by email on October 29, 2003, and in hard copy on October 31, 2003. On October 30, 2003 acknowledgement of receipt of the Complaint was given to the Complainant. On October 30, 2003, the Center requested registrar verification for the Domain Name. A response was received from the registrar, eNom, Inc on November 4, 2003. That indicated the technical contact as Dotsan as an organisation but with the name R S Potdar of Mumbai, India. Subsequently, a further response indicated the contact for the registrant as R S Potdar of the same address.
On November 7, 2003, the Center gave notice to the Complainant that there was a deficiency between the details of the registrant of record and the entity specified as the Respondent in the Complaint. In response to this an amended Complaint was filed by the Complainant by email on November 12, 2003, and by hard copy on November 14, 2003. In giving this decision the panel relies upon the amended Complaint.
On November 14, 2003, notification of the Complaint was given to the Respondent. No response was received and notification of the Respondentís default was served on December 9, 2003. This was sent by email to the Respondent. The Panel is satisfied that notification of the Complaint has been given to the Respondent and that the Respondent has also been given notification of default.
On December 18, 2003, a single member panel consisting of Mr. Clive Duncan Thorne was appointed. The Panel finds that it was properly constituted. Mr. Thorne has completed the necessary Declaration of Impartiality and Independence. The Panel understands that the requisite fees have been paid.
The original projected date for submission of the decision by the Panel was January 1, 2004, which is a public holiday in most jurisdictions. In the light of this and the Christmas holiday period, a short extension of time for the decision was necessary. The projected decision date is now January 6, 2004.
The language of the administrative proceedings is English. No further interlocutory orders have been made by the Panel.
4. Factual Background
The Complainant, Southwest Airlines Co, provides airline transportation services and a variety of travel related services including booking services for hotels, rental car and vacation packages throughout the United States. The Complainantís principal place of business is Dallas, Texas.
For over 30 years the Complainant has used the name and mark "SOUTHWEST" and "SOUTHWEST AIRLINES" in connection with its air transportation services in the United States. In order to protect its trademark rights, the Complainant has obtained numerous trademark registrations for the marks "SOUTHWEST", "SOUTHWEST AIRLINES" and variations thereof. These include US registration number 1738670 for "SOUTHWEST AIRLINES" which was first used in 1971, 1230081 for "SOUTHWEST", first used in 1971 and 2623807 for "SOUTHWEST.COM" which was first used in 1997. Copies of the certificates of registration for these and other marks are annexed at Annex C to the Complaint, which the Panel has considered.
The Complainant has become the fourth largest airline in the US in terms of passengers carried on domestic flights flying more than 64 million passengers a year to 59 airports throughout the USA with approximately 2,800 flights a day. The Panel notes that it is the only major short haul, low fare, high frequency point to point carrier in the US and provides approximately 90% of all discount air travel in the US. The Complainant has spent significant amounts of money to ensure that as a result of its advertising expenditure the trading name "Southwest" is recognised and is widely known throughout the United States. Southwest Airlines spends over US$100 million per year in production and publication of advertising.
Annexed to the Complaint at Annexes D to G are extracts from publications setting out details of Southwest Airlinesí marketing of its services and in particular, evidencing the manner in which it relies upon on-line bookings. According to the Complainant approximately 46% of its revenue for the first quarter of 2002, was generated by on-line bookings via its website at "www.southwest.com" and "www.southwestairlines.com".
The Complainant asserts that as a result of its trading activities the marks "SOUTHWEST" and "SOUTHWEST AIRLINES" have become distinctive and famous and have enjoyed such distinctiveness and fame since before the date of registration of the domain name in dispute.
The Panel accepts this evidence and in particular notes that the US trademark registration 2623807 for "SOUTHWEST.COM" was first used on June 1, 1997, whereas the date of registration of the domain name in dispute was, according to the registrar, July 26, 2001.
In the absence of a Response, the Panel finds that the evidence adduced by the Complainant is proven.
5. Partiesí Contentions
The Complainant seeks the transfer of the domain name in dispute from the Respondent in accordance with the Policy. The Complainant contends that the domain name is:-
(i) confusingly similar to the Complainantís marks and trading name;
(ii) the Respondent has no legitimate interest in the domain name;
(iii) the Respondent is registered and is using the domain name in bad faith.
There are no submissions in reply from the Respondent.
6. Discussion and findings
In order to succeed in its Complaint, the Complainant has to show:-
(a) that the domain name is identical or confusingly similar to trademarks and service marks in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate interest in respect of the domain name; and
(c) that the domain name has been registered and is being used by the Respondent in bad faith.
The Panel proceeds to deal with each of these elements in turn.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the domain name is "identical or confusingly similar to a trademark or service mark in which the Complainant has rights".
The Panel has already found on the evidence adduced by the Complainant that it has established trademark rights in the marks "SOUTHWEST", "SOUTHWEST.COM" and "SOUTHWEST AIRLINES".
The Complainant submits that the domain name <southwestairfare.com> fully incorporates the Complainantís trade name and registered mark "SOUTHWEST" in its entirety. The fact that the Respondent has added a generic term i.e. "air fare" to the Southwest mark does not obscure the near identity of the Respondentís domain name to the Southwest Airlines name and mark. In support of this submission, the Complainant relies upon a number of previous National Arbitration Forum decisions including two in which the Respondent used the same name "Dotsan" as the Respondent in this case.
The Panel, although finding the quoted decisions helpful, has no difficulty in accepting that the addition of a generic term to a Complainantís well known mark may be sufficient to be confusingly similar to the Complainantís mark, particularly in circumstances where the generic addition represents a description of one of the activities of the Complainant i.e. in this case, dealing in air fares and bookings. The Panel particularly takes into account the fact that the Complainant trades widely on-line by taking airline bookings on line and also owns the trademark (referred to above) "SOUTHWEST.COM".
The Panel finds that the domain name in dispute is confusingly similar to the Complainantís trademarks relied upon.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to show that the Respondent has no rights or legitimate interest in the domain name.
The Complainant submits:-
(i) the Respondent is a well known cyber-squatter who targets famous companies including famous travel industry companies and incorporates their trademarks in a domain name;
(ii) that its only use of the domain name is to divert consumers to the "vipfares.com" website, which offers travel, related services in direct competition to those of Southwest Airlines.
(iii) that the Respondent is not known by the name "Southwest Air Fare".
In support of the first submission, the Complainant relies upon a number of cited decisions of the National Arbitration Forum and WIPO, copies of which are annexed to the Complaint. In each case, the Respondent appears to be the same person as the Respondent to the present case. It would therefore appear that there is evidence of widespread use of domain names by the Respondent without any legitimacy. However, the Panel is reluctant to reach a finding based upon decisions involving third party Complainants. The evidence in such complaints may well be very different from the evidence in the present case.
The Complainantís second submission relates to the activity of the Respondent in diverting consumers to its "vipfares.com" website. The background to this arises from a demand letter, which was sent by Piper Rudnick on October 1, 2003, on behalf of the Complainant to Dotsan drawing its attention to the use of the "vipfares.com" website (Annex I). The letter asserts:-
"It appears that the www.southwestairfare.com domain name automatically directs users to a Vipfares.com website. The Vipfares website advertises and sells airline tickets for flights offered by a number of Southwest competitors but does not apparently offer flights available on Southwest ÖÖ."
The Complainant annexes at Annex H to the Complaint copies of the "vipfares.com" website showing the pages linked by the use of the domain name the subject of the current dispute. The Complainant submits that since the only use of the domain name is to divert consumers to the "Vipfares.com" website which is in direct competition to Southwest Airlines that this shows that there is no legitimate right on the part of the Respondent to the domain name. The Panel accepts this submission in the absence of evidence from the Respondent of a legitimate right to use the domain name.
The Complainantís third submission under this head is that the Respondent is not known by the name "Southwest Air Fare". In the Panelís view this is a compelling submission. There is no evidence before the Panel that the Respondent has made any use of the name "Southwest Air Fare".
It follows that the Complainant succeeds in showing that the Respondent has no legitimate interest.
C. Registered and Used in Bad Faith
The Complainant relies upon paragraph 4(a)(iii) of the Policy for the purpose of showing that a bad faith registration and use of a domain name can be established by the showing of circumstances indicating that the Respondent is using the domain name intentionally in an attempt to attract for commercial gain Internet users to an on-line location by creating a likelihood of confusion with the Complainantís mark as to its source sponsorship affiliation or endorsement of the on-line location. In this regard, it relies also upon paragraph 4(b)(iv) of the Policy.
In support of this submission the Complainant submits that the evidence of use of the domain name by the Respondent shows that this was for the sole purpose of intentionally attracting Internet users to the "www.vipfares.com" website by way of creating confusion.
The Panel accepts this submission, particularly when the allegation had been raised in a demand letter i.e. the letter of October 1, 2003, addressed to Dotsan and to which there is no evidence of a response.
The Complainant also relies upon a pattern of conduct by the Respondent in the serial targeting of famous trademarks. In particular, the Complainant pursuant to paragraph 4(b)(ii) of the Policy relies upon a pattern of conduct displayed by the Respondent as constituting further evidence of bad faith. It refers to a decision of the National Arbitration Forum which is exhibited as Annex V to the Complaint; Powellsí Books Inc v. Dotsan (NAF Case No. FA0202000104943) which involved a finding that the Respondentís pattern of registering infringing domain names is evidence that it registered and knew of the confusingly similar domain name now at issue in bad faith.
This Panel has read this decision and notes the Panelís findings that the Respondent had a "pattern of registering infringing domain names".
There is evidence of a pattern of activity in bad faith which taken with the failure on the part of the Respondent to deal with the allegations put to it in the demand letter of October 1, 2003, enables the Panel to find, which it does, that the Complainant has succeeded in showing that the Respondent registered and used the domain name in bad faith.
For all the foregoing reasons and in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules the Panel orders that the domain name, <southwestairfare.com>, be transferred to the Complainant.
Clive Duncan Thorne
Dated: January 5, 2004