WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

United Airlines, Inc v. United Airline Dot Com

Case No: D2002-0835

 

1. The Parties

1.1. The Complainant in this administrative proceeding is United Air Lines, Inc. of Chicago, Illinois, United States of America.

1.2. The Respondent is United Airline Dot Com, of Daegu, Republic of Korea.

 

2. The Domain Name and Registrar

The Domain Name in dispute is <unitedairline.com>, which is registered with Tucows Inc.

 

3. Procedural History

3.1. A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on September 5, 2002, by email and on September 10, 2002, four hard copies were received by the Center.

3.2. An acknowledgement of the receipt of the Complaint was sent by email to the Complainant on September 7, 2002.

3.3. A request for Registrar Verification was sent to the Registrar Tucows, Inc. on September 7, 2002, requesting it to inter alia confirm that a copy of the Complaint had been received by them; confirm that the domain name in issue is registered with them; etc. The Registrarís confirmation letter was received by the Center on September 9, 2002.

3.4. On September 11, 2002, the Center was satisfied with the formal requirements of the Policy, the Rules for the Uniform Domain Name Dispute Resolution Policy (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel independently agrees with the assessment of the Center in this regard. The Complainant also paid on time and in the required amount the fees for a three-member Panel .

3.5. No formal deficiencies having being recorded, on September 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, Registrar and ICANN), setting a deadline of October 1, 2002, by which time the Respondent could file a Response to the Complaint.

3.6. Having reviewed the communications records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent".

3.7. On October 2, 2002, not having received any Response, the Center sent the parties a formal notification of the Respondentís default.

3.8. In view of the Complainantís designation of a three member panel, on October 18, 2002, the Center has appointed Mr. Pravin Anand, Ms. Boh Young Hwang and Mr. Jeffrey M. Samuels to serve as the Panelists. The Panel was required to forward its decision to the Center by November 1, 2002.

3.9. Due to certain exceptional circumstances the panelists deferred in forwarding their decision to the Center by November 11, 2002. The Center sent a notification to all parties on November 1, 2002, by email informing the same.

 

4. Factual Background

4.1. For over seventy years, Complainant has been one of the largest commercial airline operators and transportation service providers in the world. As of January 2002, Complainantís services reached 118 destinations in 26 countries worldwide, including the Republic of Korea. Complainant has continually used throughout the world its famous trade name, United Air Lines, Inc., and its famous trademark and service mark UNITED AIRLINES. Complainant promotes and markets its services through a diverse and complex advertising and distribution network including the Internet, television and radio commercials, magazines, and newspapers.

Complainant has a very active presence on the Internet. Complainantís website, which may be accessed at "www.unitedairlines.com", offers information about Complainantís various services, and provides fare and scheduling information. Further, customers can book and pay for air travel through Complainantís website.

4.2. Complainant also owns multiple registrations for its UNITED AIRLINES trademark and service mark, which it has used exclusively and continuously since at least as early as May 1953, in connection with its air transportation services. Complainant is the owner of six U.S. service mark registrations for the mark UNITED AIRLINES, including:

a. UNITED AIRLINES (and Design) in International Class 39 (Reg. No. 2,085,846);

b. U UNITED AIRLINES (stylized) in International Class 39 (Reg. No. 1,857,943);

c. UNITED AIRLINES U (and Design) in International Class 39 (Reg. No. 1,808,020);

d. UNITED in International Class 39 (Reg. No. 1,750,451);

e. UNITED AIRLINES (and Design) in International Class 39 (Reg. No. 1,598,941); and

f. UNITED AIR LINES (and Design) in International Class 39 (Reg. No. 627,996).

Complainant owns two Korean service mark registrations for the mark UNITED AIRLINES, including:

a. UNITED AIRLINES (and Design) in Korean Class 108 (Reg. No.18,657);

b. UNITED AIRLINES in Korean Class 108 (Reg. No. 6,424).

4.3. Complainant also owns 186 trademark and service mark registrations and pending applications for the marks UNITED AIRLINES and UNITED AIRLINES (and Design) in 62 countries and territories, other than the Republic of Korea and the United States, worldwide.

In addition, Complainant owns and operates the following Internet domain names in connection with its airline services, and the goods and services that it markets in connection therewith:

<unitedairlines.com>; <unitedairlines.de>; <unitedairlines.com.au>; <unitedairlines.be>; <unitedairlines.com.hk>; <unitedairlines.co.in>; <unitedairlines.it>; <unitedairlines.co.jp>; <unitedairlines.nl;unitedairlines.nz>; <unitedairlines.com.sg>; <unitedairlines.co.th>; <unitedairlines.com.uk>

4.4. Complainant spent over one billion U.S. dollars in the past five years extensively promoting and advertising its products and services under its registered UNITED AIRLINES marks. Moreover, United has provided products and/or services for the past five years to an average of over 80 million customers per year. As a result, the UNITED AIRLINES marks have come to be associated by members of the relevant consuming public with products and services of only the highest quality. In short, the UNITED AIRLINES marks have become incredibly valuable assets of Complainant. The goodwill symbolized by the UNITED AIRLINES marks in relation to transportation services belongs exclusively to Complainant.

The domain name <unitedairline.com> was originally registered on May 20, 2001. As of October 5, 2001, the listed registrant of the domain name was Hotbaby Inc., Wilhelminalann 19, Haarlem, 1905, Netherlands ("Hotbaby"). At that time, the domain servers for the <unitedairline.com> domain name were, in listed order:

NS1.MYDOMAIN.COM 216.34.13.236

NS2.MYDOMAIN.COM 64.75.34.132

Hotbaby linked the <unitedairline.com> domain name to a web site containing pornographic content. On October 22, 2001, Complainantís Counsel sent letters and e-mails to Hotbaby and Namezero.com Inc., which had acquired Mydomain.com, advising them of Complainantís rights in the UNITED AIRLINES name and marks, and of the confusion, mistake, deception and tarnishment that would likely result from Hotbabyís continued use of the <unitedairline.com > domain name. Immediately thereafter, on October 23, 2001, Namezero.com responded by notifying Complainant that it had removed the <unitedairline.com > domain name from its servers.

4.5. Sometime after October 23, 2001, and prior to January 24, 2002, Respondent became the registered owner of the <unitedairline.com> domain name. As of January 24, 2002, the domain servers for the unitedairline.com domain name were listed as:

NS1.KRSERVER.NET 211.174.178.13

NS2.KRSERVER.NET 211.174.178.14

The e-mail address for Respondentís administrative contact was listed as "whoisnet@orgio.net". At that time, Respondent had linked the <unitedairline.com> domain name to the web site located at yahoo.com. This site features, among others, a "travel" link, which allows access to airline fares of Complainantís competitors.

4.6. As of May 30, 2002, Respondent had changed its domain servers to:

NS11.HANGHANG.COM 203.233.237.211

NS12.HANGHANG.COM 203.233.237.212

The registrar of record had also been changed to Tucows, Inc. The e-mail address for Respondentís administrative contact remained "whoisnet@orgio.net". At that time, Respondent had linked the <unitedairline.com> domain name to the web site located at hotwire.com, which features airline fares for the "Major Airlines," including airline fares of Complainantís competitors.

On July 8, 2002, Complainant sent an e-mail to Hotwire.com, notifying it that Internet users attempting to access the unitedairline.com web site were being re-directed to hotwire.com. Hotwire.com responded by writing, in pertinent part:

We do not promote this type of marketing activity and, in fact, are actively fighting right now. We pro-actively tell affiliates NOT to redirect any misspellings or Ďcloseí URLs to Hotwire. Specific to this case, we immediately contacted this affiliate to correct the situation . . .I hope youíll accept our sincere apologies . . . we view URL redirection (and any other kind of cyber-squatting activity where individuals or companies take advantage of misspellings or derivations of official company Web sites) as completely unacceptable. Consumers who type in an URL fully expecting to go to a United Airlineís Web site should not be redirected to another site.

On July 9, 2002, in an e-mail to the Complainant, Hotwire.com notified the Complainant that the <unitedairline.com> domain name was being used by Adlinks Co. ("www.adlinks.com"). WHOIS searches conducted at uwhois.com, and tucows.com, indicated that Adlinks Co.ís address is listed as P.O. Box 1991 songhyun-dong, daegu, 704-340. This address is virtually identical to Respondentís registered address. Moreover, the information for Adlinks administrative contact is virtually identical to that listed for the Respondent.

4.7 Immediately after Hotwire demanded that Adlinks Co. remove the link between "unitedairline.com" and "hotwire.com", Respondent switched the link from "hotwire.com" to "priceline.com", another site that features vacation deals and airline fares, including airline fares of Complainantís competitors.

On July 9, 2002, Complainant sent an e-mail to "priceline.com", notifying it that the <unitedairline.com> domain name was being re-directed to "priceline.com", and requesting that the re-direction be immediately stopped. Priceline.com responded by contacting Respondent and having it immediately stop directing traffic to "priceline.com".

4.8. Sometime between July 9, 2002 and July 10, 2002, Respondent again re-directed the <unitedairline.com> web site; this time from <priceline.com> to <overture.com>. On or about July 18, 2002, Respondent re-directed the <unitedairline.com> web site from overture.com to directory.engine54.com. This site also featured airfare and vacation deals, including airline fares of the Complainantís competitors.

4.9. Sometime between July 18, 2002, and August 16, 2002, Respondent re-directed the "unitedairline.com" web site from "directory.engine54.com" to "air.onetravel.com", a site that features airfare deals, including airline fares of Complainantís competitors. As of the date of filing of this Complaint, Respondent has continued to re-direct Internet users from the <unitedairline.com> domain name to the "air.onetravel.com" web site.

4.10. Respondent is not affiliated with the Complainant in any way. At no time has Complainant licensed or otherwise authorized the Respondent to use Complainantís name or marks.

 

5. Parties Contentions.

A. The Complainant has raised the following contentions:

Identical or Confusing Similarity

Respondentís domain name, <unitedairline.com>, is confusingly similar to Complainantís famous trade name United Air Lines, Inc., famous registered trademark and service mark UNITED AIRLINES, and Internet domain name <unitedairlines.com>. But for the lack of the pluralizing "s" in the domain name, it is identical to Complainantís registered marks and Complainantís domain name. Such a de minimis difference between a domain name and a trademark is insufficient to overcome a finding of "confusing similarity." Moreover, the domain name <unitedairline.com> is a likely misspelling of Complainantís registered marks and Internet domain name <unitedairlines.com>.

Rights or Legitimate interest

Respondent has no rights or legitimate interests in the <unitedairline.com> domain name. Respondent does not own trademark applications or registrations covering the mark UNITEDAIRLINE or UNITED AIRLINE, and did not make use of those names or marks prior to Complainantís adoption and use of its famous trade name United Air Lines, Inc., famous trademark and service mark UNITED AIRLINES, and Internet domain name <unitedairlines.com>.

Bad Faith

By using the domain name, Respondent has intentionally attempted to attract Internet users, for commercial gain, to the Respondentís web site or other on-line location, by creating a likelihood of confusion with the Complainantís marks. There can be no doubt that Respondent has relentlessly and through the use of a domain name bearing confusing similarity to Complainantís name and marks, attempted to confuse and divert consumers. Respondent uses the domain name to divert Internet consumers from Complainant to another site where competing goods and services are sold. Respondent has demonstrated bad faith by linking the domain name to the "yahoo.com", "hotwire.com", "priceline.com", "overture.com", "directory.engine54.com", and "air.onetravel.com" web sites, majority of which advertise vacation deals and airline fares, and none of which are endorsed or sponsored by Complainant.

B. The Respondent has not filed any Response in these proceedings.

 

6. Discussions and findings

Paragraph 4(a) of the Policy requires the Complainant to prove the following:

- that the domain name registered by the Respondent is identical and confusingly similar to a trademark or service mark in which the Complainant has rights; and

- that the Respondent has no legitimate interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

Each of these requirements will be dealt with separately.

A. Complainantís trademark rights; identical/confusing similarity

6.1. A mere lack of pluralizing "s" of the Complainantís domain name will not make the Respondentís domain name different from the domain name of the Complainant. The Complainant has, in support of its case, submitted the decision rendered in WIPO Case No. D2001-0249, Activeworlds v. Carnatic Trade Links, where the Panelist held that activeworld.com is confusingly similar to ACTIVEWORLDS mark despite pluralizing Ďsí in the domain name and this Panel finds that in the instant case based on the precedent set in Activeworlds v Carnatic Trade Links, it is clear that the domain name <unitedairline.com> is confusingly similar to the Complainantís domain name unitedairlines.com which is their trademark and service mark.

B. Rights or Legitimate Interests

6.2 The history of the ownership and use of the domain name demonstrates that Respondent has no rights or legitimate interests in the <unitedairline.com> domain name. Respondent does not own trademark applications or registrations covering the mark UNITEDAIRLINE or UNITED AIRLINES, and did not make use of those names or marks prior to Complainantís adoption and use of its famous trade name United Air Lines, Inc., famous trademark and service mark UNITED AIRLINES, and Internet domain name <unitedairlines.com>.

6.3 Respondent has not made any 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. There is no evidence that Respondent has made any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. Merely linking its domain name to web sites of others, and specifically web sites that offer air fares of Complainantís competitors, does not constitute Ďdemonstrable preparationsí or a Ďbona fide offering.í Moreover, Respondent is not now making, nor has it ever made, any legitimate noncommercial or fair use of the domain name. Respondentís use of the domain name has been limited to the linking of various third-party sites, the overwhelming majority of which feature airline fares of Complainantís competitors. There is no evidence that Respondent has made any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. Respondent is merely attempting to trade on the fame of Complainantís name and marks.

6.4 The Complainant has submitted Anheuser-Busch Inc. v. Dumas WIPO Case No. D2001-0651; Madonna Ciccone v. Parisi, WIPO Case No. D2000-0847; America Online, Inc. v. Fu, WIPO Case No. D2000-1374 in support of its contentions and based on the precedent set by these cases this Panel finds that the Respondent does not have any legitimate rights in the domain name <unitedairline.com>.

C. Bad Faith

6.6. Paragraph 4(b) of the Policy enumerates certain illustrative circumstances which, 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.

6.7. The circumstances under which Respondent acquired and maintains the domain name establish that it has acted in bad faith. The Respondent actually knew of Complainantís rights in its name and marks and this is evidenced by Respondentís association of the domain name with Complainantís industry by linking the <unitedairline.com> domain name to multiple sites featuring vacation deals and airline fares, including airline fares of Complainantís competitors.

6.8. Respondentís attempts to conceal its true identity are further evidence of its bad faith. Respondentís registered address and administrative contact information is virtually identical to that of Adlinks Co. Thus, it appears that the Respondent and Adlinks are one and the same, or at least related; a fact that became apparent after <Hotwire.com> provided Complainant with Adlinksí information. In a transparent effort to establish the legitimacy of its domain name, the Respondent has registered under the name "United Airline Dot Com." Such activity constitutes bad faith.

6.9 Respondent has intentionally attempted to attract Internet users, for commercial gain, to its web site or other on-line location, by creating a likelihood of confusion with the Complainantís marks. There can be no doubt that Respondent has relentlessly and through the use of a domain name bearing confusing similarity to Complainantís name and marks, attempted to confuse and divert consumers. This becomes even more apparent based on the Respondentís attempts to conceal its true identity. Respondent uses the domain name to divert Internet consumers from Complainant to another site where competing goods and services are sold.

 

7. Decision

For all of the foregoing reasons, the Panel decides that the domain name registered by the Respondent is identical and confusingly similar to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the Respondentís domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the impugned domain name be transferred to the Complainant.

 


 

Mr. Pravin Anand
Presiding Panelist

Mr. Jeffrey M. Samuels
Panelist

Ms. Boh Young Hwang
Panelist

Dated: November 9, 2002