WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Delta Air Lines, Inc. v. (1) WhoisGuard, (2) 3D/Adi Saputra
Case No. D2012-0053
1. The Parties
The Complainant is Delta Air Lines, Inc. of Atlanta, Georgia, United States of America (“United States”), represented by Dorsey & Whitney, LLP, United States.
The Respondents are (1) WhoisGuard of Los Angeles, California, United States; and (2) 3D/Adi Saputra of Denpasar, Bali, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <northwesternairlines.net> (the “Domain Name”) is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2012. On January 13, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On January 17, 2012, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint, namely Respondent WhoisGuard. The Center sent an email communication to the Complainant on January 18, 2012 providing the registrant and contact information disclosed by the Registrar, namely Respondent 3D/Adi Saputra, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 20, 2012. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondents WhoisGuard and 3D/Adi Saputra of the Complaint, and the proceedings commenced on January 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2012. The Respondents did not submit any formal response. Accordingly, the Center notified the Respondents’ default on February 17, 2012.
The Respondent 3D/Adi Saputra transmitted an email to the Center on February 17, 2012 requesting an explanation of the administrative proceedings. On March 1, 2012, the same Respondent transmitted an email to the Center stating that the Domain Name had been sold in October 2011.
The Center appointed Steven A. Maier as the sole panelist in this matter on March 2, 2012. 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
As no formal Response has been filed in this matter the following facts, which appear from the Complaint, are undisputed.
The Complainant is the owner of numerous registrations throughout the world for the trademarks NORTHWEST AIRLINES and NORTHWEST. These include, for example, US registered trademark number 1,718,838 for NORTHWEST AIRLINES registered on September 22, 1992 in International Class 39 for air transportation services and US registered trade mark number 1,616,090 for NORTHWEST registered on October 2, 1990 in International Class 39 for air passenger and cargo transportation services. The Complainant has additional registrations for similar marks in, for example, France, the United Kingdom of Great Britain and Northern Ireland and Japan.
Northwest Airlines is the name of a passenger airline which began service in 1926 in Minnesota, United States, originally as Northwest Airways. It was the sixth largest airline in the world when it merged with the Complainant in 2008 to create the world’s largest airline. The Complainant has continued to make extensive use of the names and marks NORTHWEST AIRLINES and NORTHWEST since the date of the merger and the marks have acquired vast goodwill as identifiers of the Complainant’s services.
The Domain Name was registered on October 2, 2010. When the Complainant first became aware of the Domain Name it was registered to a registrant named TopInWeb of Moscow, Russian Federation but this changed to the Respondent WhoisGuard in or before October 2011. As the website to which the Domain name resolved did not materially change at that time, the Complainant believes the original registrant simply placed the name in the hands of a private registration service. The Respondent WhoisGuard continued to be the registrant until the date of the Complaint, but as of the date of the commencement of the administrative proceedings the underlying registrant of the Domain Name was the Respondent 3D/Adi Saputra.
The Domain Name has at all material times resolved to a website at “www.northwesternairlines.net”. At the date of the Complaint this constituted a “pay-per-click” website, prominently headed “Northwest Airlines” and containing links to various sites including those operated by the Complainant’s competitor airlines and airline ticketing sites competing with the Complainant’s ticket sales. The website also utilized pictures of the Complainant’s planes and contained a copyright notice that further utilized the Complainant’s trademark.
5. Parties’ Contentions
The Complainant submits that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
In particular, the operative part of the Domain Name, i.e. “nortwesternairlines”, is identical to the Complainant’s mark NORTHWEST AIRLINES but for the addition of the letters “ern”. An addition of this nature is inconsequential and does not serve to distinguish the Domain Name from the Complainant’s mark (see e.g. LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840).
The Complainant submits that the Respondents have no rights or legitimate interests in respect of the Domain Name.
In particular, the Complainant has exclusive rights in the well-known trade marks NORTHWEST AIRLINES and NORTHWEST in connection with air transportation services and has not authorized the Respondents to use those marks.
Further, the Respondents have not used, or made any demonstrable preparations to use, the Domain Name or any name corresponding with it in connection with any bona fide offering of goods and services. The Respondents’ use of the Domain Name described above is not bona fide. The Complainant submits that the Respondents would be unable to make bona fide use of the Domain Name in any event, in view of the Complainant’s exclusive rights.
The Respondents have not been commonly known by the Domain Name.
Nor are the Respondents making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Respondents’ use is commercial in that they are using the Domain Name to connect to a “pay-per-click” website. Furthermore, their use is unfair as they are misleadingly using the Complainant’s trademarks, as well as pictures of its planes, to divert ticket sales away from the Complainant.
The Complainant submits that the Domain Name was registered and is being used in bad faith.
The Respondents registered the Domain Name with the intention of capitalizing on the Complainant’s goodwill in its well-known trademarks.
It is inconceivable in view of the nature of the Respondents’ website, i.e. linking to sites selling airline tickets and to the Complainant’s competitors, that the Respondents were unaware of the Complainant’s marks. In any event, where a complainant’s trademark is well known, prior panels have found it unlikely that the respondent would have registered a corresponding domain name without knowing of the complainant’s mark (see e.g., Veuve Cliquot Ponsardin, Maison Fondee in 1772 v. The Polygenix Group Co, WIPO Case No. D2000-0163).
Further, given the renown of the Complainant’s trademarks, the Respondents’ use of the Domain Name is likely to confuse consumers into believing that the Respondents and the links shown on their website are endorsed by or affiliated to the Complainant, or that the Respondents’ use of the Domain Name is endorsed by the Complainant. The Respondents’ use of the Complainant’s trademarks also constitutes a false designation of origin.
The Respondents’ bad faith is exacerbated by the fact that the original registrant, TopInWeb, was notified of the Complainant’s rights and its objection in October 2011 at which time the Complainant requested a transfer of the Domain Name, but no response was received to that communication.
The Complainant requests a transfer of the Domain Name.
The Respondents did not formally reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondents have no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it is the owner of the registered trademarks NORTHWEST AIRLINES and NORTHWEST in numerous territories and that it has a substantial international reputation in those marks in the field of air transportation services. Accordingly the Panel finds that the Complainant has rights in the marks NORTHWEST AIRLINES and NORTHWEST for the purpose of paragraph 4(a) of the Policy. While the operative part of the Domain Name is “northwesternairlines” rather than “northwestairlines”, the Panel accepts the Complainant’s submission that the addition of the letters “ern” in the Domain Name is immaterial. In the circumstances, the Panel finds that the Domain Name is confusingly similar to the Complainant’s mark NORTHWEST AIRLINES.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, there are three sets of circumstances in particular (but without limitation) to which the respondent may point to demonstrate a right or legitimate interest in the domain name in dispute. These are:
(i) before any notice to the respondent of the dispute, its use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) that the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) that the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
The Panel accepts the Complainant’s submissions in this regard. The Respondents have tendered no evidence in this case, and on the evidence available to it the Panel does not consider that any of the above, or any other circumstances which would tend to indicate any legitimate interest of the Respondents in the Domain Name, are present. It is to be inferred from all the circumstances that the Respondents registered and are using the Domain Name with the primary intention of diverting Internet users who intend to access a website operated or endorsed by the Complainant to their own website offering competing services and links to the Complainant’s competitors. This is unfairly to take advantage of the Complainant’s goodwill. To the extent that the Respondents are using the Domain Name to offer goods and services, such offering is not bona fide in the circumstances. There is no evidence that the Respondents have been commonly known by the Domain Name, and the circumstances set out in subparagraph (iii) above plainly do not apply.
C. Registered and Used in Bad Faith
The Panel finds that the conclusions it has reached under “Rights or Legitimate Interests” above are also indicative of bad faith on the part of the Respondents.
In addition, paragraph 4(b)(iv) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“by using the domain name, you have 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.”
The Panel finds that the Respondents’ registration and use of the Domain Name falls within this provision. The Panel finds that, by their use of the Domain Name and the Complainant’s trade mark NORTHWEST AIRLINES, the Respondents are intentionally attracting Internet users who intend to access a website operated or endorsed by the Complainant to the Respondents’ own commercial website. Further, the Respondents are taking unfair advantage of the Complainant’s goodwill by diverting those Internet users to ticket sales and other services offered by the Complainant’s competitors.
The Panel concludes accordingly that the Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <northwesternairlines.net> be transferred to the Complainant.
Steven A. Maier
Dated: March 14, 2012