WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ATA Airlines, Inc. v. Lorna Kang
Case No. D2004-0003
The Complainant is ATA Airlines, Inc., of Indianapolis, Indiana United States of America.
The Respondent is Lorna Kang, of Perak, Malaysia.
2. The Domain Name and Registrar
The disputed domain name <ataairline.com> (the "Domain Name") is registered with iHoldings.com Inc. d/b/a DotRegistrar.com ("the Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 6, 2004. On January 8, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On January 8, 2004, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details of the registrant and the administrative, billing, and technical contacts. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 January 27, 2004. In accordance with the Rules, paragraph 5(a), the due date for a Response was February 16, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent and the representative of the Complainant of the Respondentís default on February 18, 2004.
The Center appointed Antony Gold as the sole Panelist in this matter on March 1, 2004. The Panel finds that it was properly constituted and the Panelist 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 asserted and provided evidence in support of the following facts which, unless otherwise indicated, the Panel accepts as established. The Complainant is a wholly owned subsidiary of ATA Airlines Holdings Corporation ("ATA Airlines Holdings"). The Complainant was founded in 1973, and in 1981, was approved as an air carrier. The Complainant now provides a range of internal US flights as well as a full range of international airline services. In the United States, the Complainant, together with related group companies, has registered various service marks in respect of the Complainantís airline business. These service marks include the following:
ATA American Transair;
ATA Net Fares;
ATA Straight to the Gate;
On ATA Youíre On Vacation.
All of these marks are registered for air transportation and airline services. The Complainant is also the registrant of the domain name <ata.com>, which was registered on December 13, 1996. The Complainant states that this domain name has been used by the Complainant since approximately this date. The Complainant has also registered various other domain names for its services including the following:
The Respondent is an individual whose point of contact is through a P.O. Box contact in Malaysia. The Respondent registered the Domain Name on or about May 7, 2002.
The exact date of initial use of the Domain Name is not provided by the Complainant, though it is inferred that initial use by the Respondent commenced on or around May 7, 2002. The Complainant contends that, since the initial use of the Domain Name, users who typed in the URL incorporating the Domain Name are directed to a commercial site which offers air fares and ticketing services. The Complainant states that since December 21, 2003, those accessing the URL incorporating the Domain Name are redirected to a site "www.vipfares.com" and are provided with a "pop-up" offering gambling services via Super-Casino.com.
The "www.vipfares.com" website is a commercial website offering a variety of flights which approximately match search criteria entered by the user. The flights offered are provided by several airline carriers which are competitors of the Complainant. The website also offers links to vehicle rental, hotel and travel agent websites.
5. Partiesí Contentions
The Complainant is required to prove that each of the 3 elements specified in paragraph 4(a) of the Policy are applicable to the Domain Name. Specifically, the Complainant must establish that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Complainant makes the following assertions in relation to the Domain Name:
(i) The Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights.
The Complainant contends that the Domain Name is confusingly similar to the trading name of the Complainant and its associated group companies, namely "ATA Airlines." The only difference between such trading name and the Domain Name is the absence of "s" at the end of the Domain Name.
The Complainant further contends that the Domain Name is confusingly similar to one or more of the Complainantís service marks, as identified in section 4. In support of this position, the Complainant identifies that the Domain Name is identical to the Complainantís registered service mark for "ATA" when combined with the word which most obviously describes the Complainantís services, namely "airline."
The Complainant further contends that it is foreseeable that the Respondentís use of the Domain Name will cause confusion to consumers who, when searching for the Complainantís website, will type the Domain Name into their Internet browser and be redirected to the "www.vipfares.com" website instead of accessing the Complainantís website.
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant states that the Respondent is not affiliated with the Complainant in any way and has not been authorised by the Complainant to use any of the marks identified in section 4 above, the term "ATA Airline" or the Domain Name. In support of this argument, the Complainant provides an affidavit sworn by Brian T Hunt of the Complainant dated December 29, 2003.
The Complainant further contends that the Respondent is unable to demonstrate use or preparations to use the Domain Name in connection with a bona fide offering of goods or services. In support of this position, the Complainant draws the Panelistís attention to the decision in North West Airlines, Inc. v. Amjad Kausar, NAF Case No FA0209000124851 (October 31, 2002) which found that use of a confusing Domain Name aimed at diverting users seeking to access the Complainantís services to a competing website was not a "bona fide offering of goods and services."
The Complainant further contends that to the Complainantís knowledge, the Respondent has never used the term "ATA" or "ATA Airlines" and is not known, commonly or otherwise, by any such names.
The Complainant further contends that the Respondent is not making any legitimate non-commercial or fair use of the Domain Name. The Complainant submits that the website to which users seeking to access the Domain Name are redirected, namely "www.vipfares.com", provides flight booking services and associated travel organisation services and is accordingly run on a commercial basis. The Complainant also contends that, in providing links and advertisements for online gambling services, the Respondent is paid directly or indirectly through such advertising.
The Complainant further contends that, in using the Domain Name, the Respondent is trading on the value of the Complainantís marks in an effort to divert consumers to the Respondentís website or other sites to which users are ultimately redirected. The Complainant refers to the case of Madonna Ciccone P/k/a Madonna v Dan Parisi and "Madonna" WIPO Case No. D2000-0847 (October 12, 2000).
Furthermore, the Complainant also contends that the Respondentís website clearly competes with the Complainantís website and that there can be no reasonable explanation to impute good faith to the Respondent in its selection and use of the Domain Name.
(iii) The Domain Name was registered and is being used in bad faith.
In support of this position, the Complainant provides that the Complainantís name and the service marks (and those of its associated group companies) are well known through extensive marketing and advertising. The Complainant submits that the Respondent must have known about the Complainantís marks and reputation in registering and utilising the Domain Name; that the Domain Name is almost identical to the Complainantís service marks and trading name, and that the Respondent is utilising the Complainantís reputation by attracting users to the Respondentís website for commercial gain.
The Complainant further contends that the Domain Name gives an appearance of a connection with services provided by the Complainant, and the Respondent seeks to take advantage of typographical errors made by Internet users.
The Complainant further contends that the Respondentís colour scheme of blue and gold/orange is similar to the Complainantís colour scheme and is further evidence of the Respondentís intention to confuse internet users by intentionally using the Domain Name in bad faith to redirect users to the Respondentís website.
In further support of the Respondentís bad faith in registering the Domain Name, the Complainant provides evidence of a list of at least 15 UDRP Decisions that the Respondent has lost in recent years. The Complainant states that the Respondent is an habitual cybersquatter and that the cases cited evidence previous bad faith registrations by the Respondent.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The relevant part of the Domain Name is "Ataairline." For the purposes of assessing whether a Domain Name is identical or confusingly similar to a trade or service mark in which the Complainant has rights, the ".com" suffix is disregarded, it being a necessary component of a ".com" Top Level Domain Name.
It is noted that the Complainant does not have a registration for "ATA Airlines" as a trademark or service mark, although the Panel notes that the Complainant has registered the domain name <ataairlines.com>. The Complainant produced no evidence to suggest that it has unregistered rights in this name (save to the extent that it can be inferred that web traffic through any website established at <aairlines.com> has given the Complainant unregistered rights in the name). However, the addition of a descriptive word associated with the Complainantís activities to a word in which the Complainant has rights can mean that the collocation should be used for the purposes of assessing similarity. "Airline" is a word which is descriptive of the business most closely associated with the Complainant, namely the provision of airline services. In accordance with decisions such as ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625, the Panelist finds that the term "airline" should be considered generic. The combined word comprising the Domain Name, namely "ataairline," is thus found to be confusing similar to the Complainantís registered mark "ATA." It is also found that the Complainant has rights in this mark.
In support of its suggestion that the Domain Name is identical or confusingly similar to a mark in which it has rights, the Complainant has made a further contention. This is that consumers searching for the Complainantís website, type the Domain Name into their Internet browser and are re-directed to "www.vipfares.com." It is said that such consumers are likely to suffer confusion, having concluded that the Domain Name is confusingly similar to the Complainantsí "ATA" mark. This will be further considered in connection with the issue of bad faith, addressed at point 6(c) below.
Accordingly the Panelist finds that the Complainant satisfies paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant states that the Respondent is not affiliated with the Complainant in any way and has never been authorised to use any relevant marks or the term "ataairline." The Complainant has produced evidence of this in the form of a sworn affidavit as mentioned in section 5 above. Since the Respondent has not taken the opportunity to refute this evidence and there is no evidence to the contrary, the Panelist accordingly finds that the position on this issue is as described by the Complainant.
The Complainant further contends that, for the reasons stated in section 5 above, the Respondent is unable to demonstrate any legitimate interest in the Domain Name, via the provisions of paragraph 4(c)(i) of the Policy, as the Respondent is not using the Domain Name in connection with a "bona fide offering of goods or services." The Complainant also contends that the Respondent is unable to demonstrate a legitimate interest in the Domain Name pursuant to paragraph 4(c)(ii) of the Policy as the Respondent has never been known by, or used, the terms "ATA" or "ATA Airline." In addition, the Complainant contends that the Respondent is unable to demonstrate that it is making a legitimate non-commercial or fair use of the Domain Name pursuant to paragraph 4(c)(iii) of the Policy, because its website is operated for commercial gain and the Respondent intends to divert users to the Respondentís website from the Complainantís website.
The Respondent has not taken the opportunity to rebut the Complainantís allegations and the Panelist can find no evidence to suggest that any circumstances set out in paragraph 4(c) of the Policy are applicable. Accordingly, the Panelist finds that the Respondent has no rights or legitimate interest in respect of the Domain Name and that the Complainant satisfies paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances which shall be evidence of the Respondentís bad faith in registering the Domain Name. Paragraph 4(b)(iv) provides that such evidence can be found in the event that the Respondent has "intentionally attempted to attract, for commercial gain, internet users to [the Respondentís] website or other online location by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or inducement of [the Respondentís] website or location or of a product or service on [the Respondentís] website or location."
In support of the Complainantís contention that the Respondentís use of the Domain Name falls within paragraph 4(b)(iv) of the Policy, the Complainant asserts that the Complainantís name and associated service marks are well known in the industry through extensive marketing and advertising. Whilst the Complainant has not provided any evidence of such extensive marketing or advertising, given the fact that the Respondent operates in the same market as the Complainant; and the website "www.vipfairs.com" offers for sale flights on airlines competing with the Complainant, the Panelist is satisfied that the Respondent was aware of both the Complainant and its associated marks and reputation.
The Complainant suggests that the Respondentís intention to attract internet users to its website for commercial gain, and, in particular, to create a likelihood of confusion as to the source of the Respondentís website, is evidenced, in part, by the similarity between the Complainantís corporate colour scheme and the colour scheme used on the Respondentís website. The Panelist finds that there is insufficient evidence to suggest that the selection of colours on the Respondentís website was intended to cause confusion. However, the Complainant also asserts that, by its registration and use of the Domain Name, the Respondent appears to be seeking to take advantage of typographical errors which can be made by Internet users when typing website addresses into their browser. The Panelist accepts that the Domain Name seeks to take advantage of typographical errors which can be made by Internet users and thus is likely to result in confusion for such users.
The Panelist concludes from the Complainantís evidence as a whole that the Respondentís intention in registering and using the Domain Name was to attempt to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation or endorsement of its web site. The Panelist is mindful in this respect of the Respondentís failure to submit a response, and of the evidence provided by the Complainant of other UDRP decisions adverse to the Respondent.
Given the above, the Complainant has demonstrated all points necessary under paragraph 4(b)(iv) of the Policy required to demonstrate bad faith on behalf of the Respondent. Accordingly, the Panelist finds that the Domain Name was registered and is being used in bad faith and the Complainant satisfies paragraph 4(a)(iii) of the Policy.
Having concluded that the Domain Name was registered and used in bad faith, it is not necessary to consider whether there are any additional circumstances which might also constitute evidence of bad faith pursuant to the non-exhaustive list of factors set out in paragraph 4(b) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panelist orders that the Domain Name be transferred to the Complainant.
Dated: March 15, 2004