WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Delta Air Lines, Inc. v. myself

Case No. D2013-0752

1. The Parties

The Complainant is Delta Air Lines, Inc., of Atlanta, Georgia, United States of America (“USA”), represented by Ladas & Parry LLP, Digital Brands Practice, Chicago, Illinois, USA.

The Respondent is myself of Atlanta, Georgia, USA, self-represented.

2. The Domain Name and Registrar

The disputed domain name <myskymiles.com> (“Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2013, naming as Respondent Domains by Proxy, LLC. On April 26, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 29, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 3, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on May 14, 2013, to substitute “myself” as the name of Respondent rather than Domains by Proxy, LLC.

The Center verified that the Complaint together with the amendment to the 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 Respondent of the Complaint, and the proceedings commenced on May 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 6, 2013. An informal email communication was received by the Center on June 8, 2013, from a person identifying himself as “Graham Street” / “respondant” [sic].

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on June 14, 2013. 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

Complainant states that it is “one of the world’s largest commercial airlines serving more than 160 million customers each year to more than 340 destinations in 61 countries on six continents” and that it “employs more than 80,000 employees worldwide and operates a mainline fleet of more than 700 aircraft.”

Complainant states, and provides evidence to support, that it is the registrant of numerous trademark registrations worldwide for the SKYMILES trademark, including U.S. Reg. No. 1,968,255 (first used in commerce on April 7, 1994; registered on April 16, 1996) for use in connection with “passenger air transportation services, namely providing a program of bonus awards for frequent travelers.” These registrations are referred to collectively hereafter as the “SKYMILES Trademark.”

Complainant states, and provides evidence to support, that Respondent is using the Disputed Domain Name in connection with a website “featuring pay-per-click links related to the airline industry and credit card industry, for which Respondent undoubtedly receives ‘click-through’ fees.”

Complainant sent a demand letter to Respondent on April 11, 2012, a copy of which was provided as an annex to the Complaint, to which Complainant states that it did not receive a reply.

The Disputed Domain Name was created on August 2, 2010.

5. Parties’ Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

- The Disputed Domain Name is confusingly similar to a trademark in which Complainant has rights because it incorporates the SKYMILES Trademark in its entirety and appends the “related” term “my” thereto.

- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, Complainant “has not authorized, licensed or consented to Respondent’s registration and use of a domain name incorporating the SKYMILES trademark, or any confusingly similar variation of [Complainant’s] marks”; “nothing in the WHOIS information related to the Offending Domain indicates that Respondent is commonly known by the designation SKYMILES or ‘myskymiles’”; and Respondent failed to respond to Complainant’s demand letter.

- Respondent registered and is using the Disputed Domain Name in bad faith because, inter alia, in violation of paragraph 4(b)(iv) of the Policy, “Respondent has registered a domain name confusingly similar to Delta’s SKYMILES mark and used the Offending Domain to divert Internet users to Respondent’s website, where Respondent likely garners click-through fees for each Internet user who selects one of the links. Moreover, these links on Respondent’s website further divert Internet traffic to websites that offer travel, transportation, and/or credit card services for sale, in direct competition with the services offered by Delta under its SKYMILES mark.” Further, “Respondent’s registration and use of the <myskymiles.com> domain to divert Internet traffic to Complainant’s direct competitors establishes Respondent’s bad faith registration and use of the Offending Domain under Policy 4 (b)(iii) because the domain was registered for the purpose of disrupting the business of a competitor.” Further, “Respondent’s failure to counter the allegations of the cease-and-desist letter amounts to adoptive admission of the allegations.”

B. Respondent

Respondent did not reply to Complainant’s contentions. However, in an e-mail to the Center on June 8, 2013, a person identifying himself as “Graham Street” / “respondant” [sic] stated: “My only request, if you would pass it along to the panelist(s), is that I would like them to note that the sample screens provided by the complaintant as evidence of bad faith are simply the default godaddy ‘parked domain’ pages. These appear on any website which has not yet been configured with customer supplied content. The respondant has not profited nor do they intend to profit from the links which appear on godaddy's parked domain pages. Thus, the respondent assserts that the complainant has failed to demonstrate that the registration or use of this domain is in bad faith.”

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the SKYMILES Trademark.

As to whether the Disputed Domain Name is identical or confusingly similar to the SKYMILES Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “myskymiles”), as it is well-established that the top-level domain (i.e., “.com”) should typically be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).

As numerous previous panels (including this Panel) have found, the addition of the word “my” to a disputed domain name, in addition to a complainant’s trademark, “do[es] nothing to diminish confusing similarity.” Public Service Electric & Gas Company v. ryan roettger, WIPO Case No. D2012-0623.

Accordingly, the Panel finds that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant has argued that, inter alia, Complainant “has not authorized, licensed or consented to Respondent’s registration and use of a domain name incorporating the SKYMILES trademark, or any confusingly similar variation of [Complainant’s] marks”; “nothing in the WHOIS information related to the Offending Domain indicates that Respondent is commonly known by the designation SKYMILES or ‘myskymiles’”; and Respondent failed to respond to Complainant’s demand letter.

Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.

Accordingly, as a result of Complainant’s reasonable allegations and without any evidence from Respondent to the contrary, the Panel is satisfied on the evidence that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

Here, Complainant specifically alleges that bad faith exists pursuant to both paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. Among other things, Complainant has stated that the display of “pay-per-click links related to the airline industry and credit card industry” constitute bad faith under paragraph 4(b)(iv) of the Policy.

Repeatedly under the Policy, panels have found that use of a domain name in connection with a monetized parking page, under the circumstances present here, amounts to bad faith under paragraph 4(b)(iv). See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850; Columbia Pictures Industries, Inc. v. North West Enterprise, Inc., WIPO Case No. D2006-0951; and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753.

Although an e-mail sent to the Center after the deadline for a response, purportedly from Respondent, indicates that the links were merely the result of the Registrar’s “default” parking page, this does not negate bad faith given that “a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content – for example, in the case of advertising links appearing on an ‘automatically’ generated basis.” WIPO Overview 2.0, paragraph 3.8.

Accordingly, the Panel finds that Complainant has proven the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <myskymiles.com> be transferred to Complainant.

Douglas M. Isenberg
Sole Panelist
Date: June 26, 2013