WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LIAT (1974) Ltd. v. Mark Armstrong
Case No. D2006-1574
1. The Parties
1.1 The Complainant is LIAT (1974) Ltd., Antigua and Barbuda, represented by INC Business Lawyers, Canada.
1.2 The Respondent is Mark Armstrong, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <liat.com> (the “Domain Name”) is registered with eNom, Inc. dba Dynames.com, Inc.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2006. On December 13, 2006, the Center transmitted by email to eNom, Inc. dba Dynames.com, Inc. a request for registrar verification in connection with the domain name at issue. On December 18, 2006, eNom, Inc. dba Dynames.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant. 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”).
3.2 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 December 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2007.
3.3 The Center appointed Matthew S. Harris as the sole panelist in this matter on January 29, 2007. The Panel finds that it was properly constituted. The Panel 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
4.1 The Complainant’s full name is LIAT (1974) Ltd. It (or its predecessors in business) has been providing airline services since 1956 and has been trading under the LIAT name since at least September 1974. “LIAT” is an acronym for “Leeward Islands Air Transport”. The Complainant provides airline services to various territories in the Caribbean.
4.2 The Complainant has applied for a service mark in the word LIAT in the United States. However, that application has yet to proceed to grant.
4.3 Little is known about the Respondent save that he would appear to be an individual. He registered the Domain Name in 1997.
4.4 As at the October 30, 2006, the web page that operated from the Domain Name took the form of a map of the Caribbean. At the top of the website were what would appear to be links for the booking of air tickets and hotel reservations. The website also contained the following text:
“- HIGHLY RECOMMENDED BY THE REAL CAPTAIN MORGAN
LIAT FLY NOW - Bill Me Later®
- The MOST Convenient and Secure WAY TO BOOK ALL OF YOUR TRIPS FROM NOW ON.
- No lengthy application. It’s easier than entering your credit card
- No credit card number to enter. After we have confirmed your reservation, LIAT FLY NOW - Bill Me Later® will send you a statement in the mail. You can pay the entire balance with no additional charges (free interest) or, if you prefer, you can pay a portion of the balance and regular interest charges will apply.”
5. Parties’ Contentions
5.1 The Complainant recognises that it does not yet hold a registration in the name LIAT as a service mark and therefore contends that questions arise in this case as to:
(i) whether the Policy applies to unregistered trademarks; and
(ii) whether the mark at issue has acquired sufficient distinctiveness through use and promotion to identify the source of services as the Complainant.
5.2 The Complainant refers to the WIPO Overview of WIPO Panel Views on selected UDRP Questions in support of the contention that the Policy does extend to “common law” trademarks.
5.3 So far as the second question is concerned, it refers to the decision in Action Sports Videos v. Jeff Reynolds, WIPO Case No. D2001-1239 to support the proposition that “common law service mark rights exists where a party proves that there is enough goodwill and reputation in and to a name and sufficient association of the same with the party itself, no matter how strong or weak those trademark or service mark rights may be”. This the Complainant contends is a “relatively low burden of persuasion”.
5.4 It then goes on to provide evidence of its reputation in a manner which is said to be consistent with the decision of the US courts in Paco Sports Limited v. Paco Rabahn Parfums 86. F.Supp.2d 305, 313. That evidence includes:
(i) an affidavit from the legal counsel and company secretary which maintains that:
(a) since at lease 1990 the Complainant has consistently carried over 100,000 passengers on a monthly basis to various Caribbean destinations;
(b) the Complainant has annual sales revenues of approximately US$70 million and spent US$8.5 million last year on advertising and marketing; and
(c) the LIAT mark is “a very well known regionally recognised mark within the Caribbean”.
(ii) copies of unsolicited media coverage including printouts from the “Caribbean Net News” and “Atwonline.com” websites;
(iii) traffic rank statistics for the Complainant’s own website at <fly-liat.com>, which is said to show “a relationship between customers and prospective customers to the mark “LIAT” which is owned and displaced by the [Complainant] on it’s other websites”.
5.5 In conclusion, the Complainant maintains that its rights have “reach[ed] a sufficient level of goodwill at least within the Caribbean, such that the Complainant has established a right in the LIAT mark”. Consequently the Domain Name is said to be identical to the Complainant’s common law service mark.
5.6 The Complainant further contends that the Respondent does not have any rights or legitimate interests with respect to the Domain Name. In this respect it states as follows:
(i) The Domain Name was registered in 1997, and yet the Respondent has not used or made any demonstrable preparations to use the Domain Name in connection with any bona fide offering of goods or services as contemplated by paragraph 4(c)(i) of the Policy. Instead the Respondent:
(a) “receives financial compensation for the advertisement and sale of services which are in direct competition with the [Complainant] using a domain name that is identical to the [Complainant’s mark]”; and
(b) is using the goodwill of the mark to “bait customers, to sell them various travel services, including the very services sold by the [Complainant]”.
(ii) The Respondent has never been commonly known by the Domain Name as contemplated by paragraph 4(c)(ii) of the Policy . There is “nothing generic about the service mark LIAT” and the “Respondent is not and has never been an authorised retailer of [the] Complainant’s services”. The Complainant refers to the decision in Houghton Mifflin Co. v. Wetherman, Inc., WIPO Case No. D2001-0211 and notes that the Respondent has “taken no steps to prevent customer confusion”.
(iii) The “Respondent is not making a non-commercial or fair use of the Domain Name” as contemplated under paragraph 4(c)(iii) of the Policy.
5.7 The Respondent is also said to have registered or used the Domain Name in bad faith. His activities are said to fall within paragraph 4(b)(iv) of the Policy in that he has “intentionally attempted to attract, for financial gain, Internet users to [the] website … by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the] website or location or of a product or service on [the] website or location”. In support of that contention, the Complainant asserts that:
(i) “Consumers interested in finding the [Complainant’s] services do so by attempting to use the Domain Name, only to be confused by the website located at the Domain Name”. Further, a “consumer searching for the [Complainant’s] website using search engines such as Google would be misled by [the] Respondent’s website because it appears alongside references to the [Complainant] and its services”. There is therefore “initial interest confusion”.
(ii) The Respondent has “linked the disputed Domain Name to a reservation system that promotes the services of [the] Complainant’s chief competitors”.
5.8 Lastly the Complainant accepts that the Respondent registered the Domain Name nine years ago and as “a general rule, the law does favour those who felt they serve their rights in timely manner”. However, the Complainant submits that it had “no less than five separate communications with the Respondent” and that the “Respondent has consistently thwarted the transfer of the domain name with his continued outrageous demands for money or services or both”. Exactly what form those demands took is not explained but the Complainant contends that at no time did it “acquiesce to Respondent’s registration or use of the disputed domain name”.
5.9 The Complainant also makes reference to the Final Report of the WIPO Internet Domain Name Process (April 30, 1999) that is said to make it clear that claims of waiver, estoppel, acquiescence or latches do not apply in UDRP proceedings. It also refers in this respect to decisions in The E.W.Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447, and First Franklin Financial Corporation and National City Corporation v. The Franklin Savings and Loan Company, WIPO Case No. D2005-0762.
5.10 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Paragraph 15(a) of the Rules directs the Panel to decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and principles of law that the Panel deems applicable.
6.2 Under paragraph 5(e) of the Rules, if the respondent does not submit a response and in the absence of exceptional circumstances, “the Panel shall decide the dispute based upon the Complaint”. Further, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel “shall draw such inferences therefrom as it considers appropriate”. This Panel does not find there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent it determining the dispute, notwithstanding the failure of the Respondent to lodge a Response.
6.3 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (para. 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (para. 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (para. 4(a)(iii)).
6.4 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, finds as set out below.
A. Identical or Confusingly Similar
6.5 The Panel, of course, accepts the Complainant’s contention that common law rights in a name or “unregistered trademarks” can constitute rights in a trademark for the purposes of paragraph 4(a) of the Policy. As the Complainant rightly points out this is quite clear from the cases referred to in the WIPO Overview of WIPO Panel Views on selected UDRP Questions.
6.6 However, the manner in which the Complainant puts its case in this respect is problematic. To explain why, it is helpful to make reference to the decision of this Panel in Antonio de Felipe v. Registerfly.com, WIPO Case No. D2005-0969. In that decision the Panel explored in some detail the scope and rationale of the recognition of non-registered trademark rights under the Policy. In that case unregistered rights had been claimed in a personal name of an artist. Having reviewed the WIPO Overview and a number of the relevant cases, the Panel stated at paragraph 6.15 and 6.16 of that decision, as follows:
“6.15 Regardless of the exact extent of possible unregistered trademark rights [in common law and civil law jurisdictions] for the purposes of the Policy, one thing is reasonably clear. Unregistered trademark rights do not exist in some nebulous way across the breadth of the countries in which a complainant proves it has a reputation. These rights derive from national laws and do not exist divorced from such laws. They therefore depend upon the extent to which the laws of a particular country recognise or do not recognise that the activities of the complainant provide unregistered rights in that country. A personal name is capable of qualifying as an unregistered trademark recognised by the Policy, but in determining whether it does in a particular case a panel will look to the jurisdictions in which those rights are claimed. The panel will then determine whether the complainant can show that the name provides an unregistered right in at least one of these jurisdictions.
“6.16 There is a practical point that is worth making here. A panel deciding a case under the Policy will not always have knowledge of the laws of the jurisdiction in which unregistered trademarks are claimed. A complainant bears the burden of showing that it has rights recognised by paragraph 4(a)(i) of the Policy. Therefore any complainant claiming unregistered trademark rights would be wise not only to provide evidence of the activities that are alleged to found those rights but also to provide evidence that as a matter of law those activities are recognised as giving unregistered trademarks rights in that jurisdiction. This is particularly so if relevant unregistered rights in that jurisdiction have not been unambiguously recognised in previous UDRP decisions.”
6.7 The difficulty in this case is that it is far from clear what national law the Complainant relies upon in this case. At one point it makes reference to the law of the United States, but the Complainant does not appear to claim common law rights in the US jurisdiction or that it undertakes any activity in the United States.
6.8 Instead, it simply maintains that the Complainant has “reach[ed] a sufficient level of goodwill at least within the Caribbean, such that the Complainant has established a right in the LIAT mark”. This is precisely the sort of claim to rights in “some nebulous way across the breadth of the countries in which a complainant proves it has a reputation” that was criticised by the Panel in Antonio de Felipe as misconceived.
6.9 Nevertheless, despite the problematic way in which the Complainant has put its case, the Panel is able to conclude from the material provided that the Complainant does have common law rights in the name LIAT which are sufficient for the purposes of the Policy.
6.10 The reason for this is that the Complaint makes it clear to the Panel’s satisfaction that the Complainant either directly or through its subsidiaries is engaged in the provision of extensive air services in and between a number of Caribbean territories. The evidence provided indicates that these territories include (but are not limited to) Antigua and Barbuda, St Kitts and Nevis, and Grenada. Indeed, there is also affidavit evidence to the effect that Antigua and Barbuda is the Complainant’s “principal place of business”. All are now independent states but until relatively recently these states were crown colonies. As a consequence they all have common law legal systems and share the Eastern Caribbean Supreme Court as their Superior court of record.
6.11 In the circumstances, the Panel is prepared to accept that at least one (if not all) of the states in question recognises a law of passing off that is essentially the same as or at least very similar to the law of passing off in England and Wales (the jurisdiction in which the Panel in this case is legally qualified). Therefore, the Panel is also prepared to accept that the Complainant’s activities in these Caribbean states mean that it has sufficient goodwill and reputation in the name “LIAT” to provide it with unregistered trademark rights in at least one of those states. These rights are sufficient for the purposes of paragraph 4(a)(i) of the Policy.
6.12 Disregarding the suffix “.com” in the Domain Name, the Domain Name is identical to the “LIAT” name in which the Complainant has rights. In the circumstances, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.13 In the absence of a Response, the Panel accepts that the Respondent registered the Domain Name and used the Complainant’s name without having obtained the consent or permission of the Complainant.
6.14 The Panel also accepts that there is no evidence to suggest that the Respondent owns any trademarks or service marks which correspond with the Domain Name. Nor is there any evidence suggestion that the Respondent has ever been known or commonly known by a name incorporating “LIAT”. Lastly, the Panel accepts that the Respondent is not making a legitimate non-commercial or fair use of the Domain Name.
6.15 In short, the Panel accepts that none of the factors identified in paragraph 4(c) of the Policy demonstrating a legitimate right or interest exist in this case. Whilst the list is non-exhaustive, it is common practice for a complainant positively to assert that each of these factors does not apply. In this way a complainant hopes to make out a prima facie case under this heading so that the burden of proof will then pass to the respondent.
6.16 However, in this case the matter is more straight-forward. As the Panel explains in greater detail under the heading “Bad Faith” below, the Panel has reached the conclusion that the Respondent chose the Domain Name in the knowledge of the Complainant’s interest and reputation in that name and is now using the name to divert Internet users who are looking for information about the Complainant to his website in order to gain a commercial advantage. Using a domain name in this manner does not provide a registrant with legitimate right or interest in the name.
6.17 In the circumstances, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.18 Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances, which if found to be present by a panel evidence bad faith registration and use of a domain name.
6.19 In this case the Complainant alleges that the Respondent’s activity falls within 4(b)(iv) of the Policy. This refers to a situation where:
“using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
6.20 The Panel has little difficulty in concluding that this is indeed how the Domain Name was being used prior to these proceedings. The website page that the Complainant exhibits to its Complaint shows that in October 2006, the Respondent was operating a site that appeared to offer air tickets and hotel reservations. It is still being used in this manner at the date of this decision. There is extensive use throughout the website of the phrase “LIAT Fly Now - Bill Me Later®”. Therefore, the Panel is of the view that there is a real risk that any person accessing the website is likely to form the conclusion that this is either the website of the Complainant or at least there is some form of commercial affiliation between the Complainant and the Respondent.
6.21 The Panel accepts the Complainant’s submission that the case is in this respect similar to that in Marriott International, Inc. v. Vladimir Kyznetsov, NAF Case No. FA95648 (in which the respondent had registered the domain name <mariottrewards.com> and used it to route Internet traffic to another website that promoted travel and hotel services identical to those offered by the complainant).
6.22 Of course, the Complainant provides only evidence of what the website has looked like since late 2006. There is no evidence before the Panel as to the manner in which the website operated in earlier years. This is problematic. As this Panel stated in Silvie Tomčalová a.k.a. Sylvia Saint v. Juan Campos, WIPO Case No. D2006-0379:
“Further, it should be remembered that Paragraph 4(a)(iii) requires not just bad faith use but registration in bad faith. Of course, frequently one can be inferred from the other, but the Panel would expect the Complainant at least to address the point. This is particularly so in this case where the Disputed Domain was not registered recently. It was registered nearly eight years ago.”
6.23 Can one therefore in this case infer from the content of the website since October 2006, that it was the intention of the Respondent when he registered the Domain Name over nine years earlier to produce a website of this sort? If there were no evidence before the Panel that the web page in question was atypical of the sort of website that has been accessible from that website since registration, then the Panel might be prepared to infer on the basis of that material that such intent was present at registration.
6.24 However, there is a complication on this occasion in that there is some evidence before the Panel that suggests that the website now relied upon may not be typical. This takes the form of a letter from the Complainant to the Respondent dated January 26, 2000. That letter makes no complaint about the registration of the Domain Name. Instead, the letter complained about the publication on the website of the following words:
“Warning - LIAT Airlines faces imminent Bankruptcy - Beware of Booking and Losing your Money on this Airline - Fly American Airlines or Seek Alternatives - Do not risk being ripped off”
6.25 Nevertheless, on balance, and not withstanding this material, the Panel believes that the Complainant has made out a case of bad faith registration. A key factor in reaching this conclusion is the Complainant’s contention (supported by a print out of the entry from Wikipedia in relation to the word “LIAT”) that the name “LIAT” has no possible generic meaning. This is not contradicted by the Respondent. Therefore, the logical inference from this in the absence of any explanation from the Respondent is that the Respondent was aware of the Complainant at the time of registration in 1997. (The fact that the Respondent is based in Miami, a city with extensive connections with the Carribean, is also a factor that to a limited degree supports that conclusion).
6.26 This combined with the more recent use of the Domain Name, leads the Panel to conclude that the Complainant has at the very least made out a plausible case that the Domain Name was more likely than not registered by the Respondent with the intention in some manner or other to take advantage of the reputation and goodwill associated with the LIAT name to the commercial benefit of the Respondent.
6.27 In the circumstances the Panel concludes on the evidence before it that, on balance, the Domain Name both was registered and is being used in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Delay in commencement of proceedings
6.28 This lastly leaves the question of the Complainant’s delay in bringing these proceedings. The Complainant itself recognises that this delay does not assist its case. For example, the Panel has already explained above how the delay has complicated this case when it came to the assessment of the requirement of bad faith registration.
6.29 However, the Panel is prepared to accept at least for the purposes of the decision and in the absence of argument to the contrary from the Respondent, that the Complainant is right when it asserts that doctrines of acquiescence or latches do not apply in UDRP proceedings. The Complainant relies upon a number of UDRP decision in this respect. Other relevant decisions include The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616, and this Panel’s own decision in McMullan Bros., Limited, Maxol Limited, Maxol Direct Limited Maxol Lubricants Limited, Maxol Oil Limited Maxol Direct (NI) Limited v. Web Names Ltd, WIPO Case No. D2004-0078.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <liat.com> be transferred to the Complainant.
Matthew S. Harris
Dated: February 12, 2007