WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Metropolitan Nashville Airport Authority v. WhoisGuard Protected, WhoisGuard, Inc. / Zura Tsertsvadze, UCM
Case No. D2020-1150
1. The Parties
The Complainant is The Metropolitan Nashville Airport Authority, United States of America (“United States”), represented by Adams and Reese LLP, United States.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Zura Tsertsvadze, UCM, Georgia.
2. The Domain Name and Registrar
The disputed domain name <bna-airport.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2020. On May 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 8, 2020, 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 the Complainant on May 18, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 18, 2020.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for the Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2020.
The Center appointed Antony Gold as the sole panelist in this matter on June 22, 2020. 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
The Complainant, with headquarters in Nashville, Tennessee, United States, operates Nashville International Airport. The Complainant’s airport was established over 80 years ago. In the fiscal year 2019, it served 17.1 million passengers, which represented a 15 percent increase in growth from 2018.
The Complainant is the owner and proprietor of a number of trade marks it uses in connection with its activities. These include;
- United States service mark, registration number 4417041 for BNA in class 39, registered on October 15, 2013. This mark claims a first use in commerce date of 1937;
- United States service mark, registration number 4378854 for NASHVILLE INTERNATIONAL AIRPORT in class 39, registered on August 6, 2013.
The Complainant’s principal website is at <flynashville.com>. A secondary website at <bnavisionnashville.com> provides information on a substantial renovation project for the airport. Both websites feature a stylized form of the Complainant’s BNA trademark.
The disputed domain name was registered on March 24, 2020. The Complainant has provided screen prints of the website to which the disputed domain name resolved as of April 2020. The home page of the website is headed “BNA-AIRPORT.COM”. Beneath that is a further heading; “Nashville International Airport (Berry Field) (USA)” and underneath that is some descriptive text about the airport. Further down the home page are boxes intended to contain information about departures, arrivals, terminals, and other similar information of potential value to users of the airport’s facilities1 . That is followed by some more descriptive information about the airport.
In pdf landscape format, the screen prints of the home page of the Respondent’s website run to 5 pages. On the fifth page, in small and relatively faint font, appear the words “Bna-airport.com © 2020 - Not the official airport website”. The same disclaimer appears at the foot of other sections of the Respondent’s website which deal with, for example, Airport Services, Arrivals, and Car Rentals.
On April 17, 2020 one of the Complainant’s business partners forwarded the Complainant an email it had received the previous day from an email address linked to the disputed domain name thanking the business partner for mentioning its Nashville International Airport Guide on its website and asking “we’re just wondering if it would be possible for you to include a link to our site as well, in case your readers want to know more about what we do and the newest information about guide to Nashville International Airport”. It was evident from the business partner’s covering email that it was confused as to whether or not the email it had received from the Respondent had any connection with the Complainant, not least because it was the Complainant’s Nashville International Airport Guide which the business partner had referenced on its website and not that of the Respondent.
Following receipt of a letter from the Complainant’s advisors, dated April 17, 2020, seeking the transfer of the disputed domain name to the Complainant, the Respondent replied stating; “This is just an airport guide, informational website, not the official airport website. We have written this in our website’s footer and anyone can see it anytime. We have never said or written that this is official or something like that. Anyone has a right to do a informational website or a guide to the city, airport etc. If we have something on our website and you hold copyright on it, please send us copyright documents and we will delete any logo or image that you own copyright”.
5. Parties’ Contentions
The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. The disputed domain name consists of the Complainant’s BNA mark together with a hyphen and the word “airport.” The dominant element of the disputed domain name is the Complainant’s trade mark and the addition of a hyphen and the word “airport” do not prevent the disputed domain name from being confusing similar to the Complainant’s BNA mark.
The Complainant says also that the Respondent has no rights or legitimate interests with respect to the disputed domain name. To the Complainant’s knowledge, “BNA Airport” is not the Respondent’s name and the Respondent is not known, and has never been commonly known, as “BNA Airport”. The Respondent is not, and has never been a licensee or franchisee of the Complainant. Furthermore, the Respondent has never been authorized by the Complainant to register or use the Complainant’s BNA mark or to apply for or use any domain name incorporating that mark.
The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, or in a legitimate noncommercial or fair manner. The disputed domain name currently directs to a website using the Complainant’s BNA and NASHVILLE INTERNATIONAL AIRPORT trade marks and copyright images to advertise goods and services identical to those offered by the Complainant. The Respondent misleads Internet users into believing that the Complainant operates the website found at the disputed domain name. Such conduct constitutes definitive evidence of the Respondent’s bad faith; see Educational Testing Service v. Ahmed Ali, Tito, WIPO Case No. D2018-0173.
The Respondent’s use of the Complainant’s BNA trade mark cannot be characterized as a legitimate noncommercial or fair use of the disputed domain name. In addition, some of the images featured by the Respondent in its website have been unlawfully copied from the Complainant’s website and therefore infringe the Complainant’s intellectual property. This further reinforces the lack of legitimate or fair use of the disputed domain name; see, for example, CNU Online Holdings, LLC v. Mardva Logsdon, cashnetusafinance, WIPO Case No. D2017-0732.
In its correspondence with the Complainant, the Respondent argues that its website is “informational,” and that visitors to the website can read its disclaimer. Not only is some of the information provided about the Complainant’s airport inaccurate but the appearance of a disclaimer does not entitle the Respondent to register the disputed domain name nor to direct it to a website which reproduces copyrighted images from the Complainant’s website. Moreover, the disclaimer is insufficient, as it is hidden in the fine print at the bottom of the website, and does not clarify that the Respondent is not affiliated with the Complainant.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. Given the Complainant’s trade mark registrations for BNA and their fame and reputation, it is implausible that the Respondent could have been unaware of the Complainant at the time of registration. The Respondent clearly had the Complainant in mind when registering the disputed domain name as it incorporates the word “airport”, which is descriptive of the Complainant’s business, and the Respondent’s website focuses entirely on goods and services at the Complainant’s airport. The Respondent is using the disputed domain name in bad faith to divert Internet users to its website and to mislead them into believing that it is operated by the Complainant; see paragraph 4(b)(iv) of the Policy.
Finally, the Complainant has been advised by one of its counterparts, of the registration of numerous other domain names incorporating well-known airport IATA codes followed by “-airport.com” and use of each domain name in connection with a website masquerading as the official website for the corresponding airport. All of the domain names appear to be registered with the same Registrar, privacy service and web host and the websites utilize a common format, indicating that the domain names have been registered by the same party.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the 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.
A. Identical or Confusingly Similar
The Complainant has provided details of many of the registered service marks it owns for BNA. These establish the Complainant’s rights in this mark.
As a technical requirement of registration, the generic Top-Level Domain (“gTLD”), that is “.com” in this case, is typically disregarded when making the comparison between a complainant’s mark and the domain name in issue. The only difference between the Complainant’s BNA service mark and the disputed domain name is the addition of a hyphen (which is of no significance in this context) followed by the word “airport”. This additional word does not prevent a finding that the disputed domain name is confusingly similar to the Complainant’s mark. As explained at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The Complainant’s BNA service mark is clearly recognizable within the disputed domain name and the Panel accordingly finds that it is confusingly similar to a service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or legitimate interests in a domain name. These are, summarized briefly: if the respondent has been using the domain name in connection with a bona fide offering of goods or services, if the respondent has been commonly known by the domain name, or if the respondent has been making a legitimate noncommercial or fair use of the domain name.
Consideration of the first of these circumstances requires examination of the specific use which the Respondent has made of the disputed domain name. In this respect, the Panel takes into account the following factors.
First, as the Complainant has asserted, the Respondent’s website does not clearly and/or sufficiently explain that it is not the official website of the Complainant. It is necessary to scroll right to the bottom of a very lengthy home page, which many Internet users are unlikely to do, before encountering a short disclaimer in small, faint type; “Bna-airport.com © 2020 - Not the official airport website”. Although the same disclaimer appears in a similar font, at the foot of other sections of the Respondent’s website, it will also only be seen by Internet users who scroll to the bottom of the relevant page.
The importance of a disclaimer can usefully be considered in the context of earlier decisions of UDRP panels which have addressed the analogous position of resellers and distributors who use the trade mark of the brand owner whose goods or services they supply. In those circumstances, one of the criteria a reseller/distributor needs to establish in order for its offering of goods and services to be considered bona fide is that its website “accurately and prominently disclose[s] the registrant’s relationship with the trademark holder”; see section 2.8.1 of the WIPO Overview 3.0. Without such a disclaimer, some form of confusion on the part of Internet users as to the relationship between the website operator and the complainant is inevitable. The same consideration applies mutatis mutandis here; the limited disclaimer used by the Respondent does not clearly set out that it has no connection whatsoever with the Complainant, nor is it prominent and visitors to the Respondent’s website will be misled as a consequence.
Second, the Respondent has taken images from the Complainant’s website, in breach of the Complainant’s copyright, and used them in its website. Whether this is has been to try and engender a belief amongst Internet users visiting its website that they have arrived at the Complainant’s website and/or as an inexpensive short-cut for populating its own website with content, such a course is not an indicator of a bona fide offering of services. Third, the Complainant has produced evidence that, in an attempt to obtain greater profile for its website, the Respondent has attempted to confuse at least one third party into thinking that its website is the official website of the Complainant and it is reasonable to infer that this is unlikely to be an isolated occurrence.
Fourth, the Respondent in the response to the Complainant’s cease and desist letter argues that the website has merely an informational purpose. However, the Panel considers it is highly improbable that the Respondent does not have some form of underlying commercial plan in which the Respondent unfairly leverages the association which many Internet users will make between the disputed domain name and the Complainant’s airport seems very likely. This view is reinforced by the Respondent’s contacts with the Complainant’s business partners creating a confusion by association with the Complainant. Activities of this nature are unlikely to be merely non-commercial or bona fide in character. Even if the Respondent’s website was to be merely for informational purposes, the Panel would still find a risk of confusion due to the manner that Respondent uses the disputed domain name (a risk that has been evidenced by the Complainant).
Having regard to all of the above, the Panel finds that the Respondent’s website does not comprise a bona fide offering of goods or services.
The second and third circumstances under paragraph 4(c) of the Policy are inapplicable; there is no evidence that the Respondent is commonly known by the disputed domain name and the use to which the disputed domain name has been put is commercial in character and does not constitute fair use. As explained at section 2.5.1 of the WIPO Overview 3.0; “Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner”.
The Complainant has made a strong prima facie case under the second element, unrebutted, and the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The use of the Complainant’s BNA trade mark coupled with the fact that, shortly after registration of the disputed domain name, the Respondent was using it to promote a website which offered information about the Complainant’s airport makes it evident that the Respondent had the Complainant in mind when it registered the disputed domain name.
BNA is not the sole identifier which the Complainant uses to refer to its airport. By way of example, the Complainant’s website describes its airport as “Nashville International Airport” and as “Nashville International Airport (BNA)”. However, the Complainant’s BNA mark is in regular and widespread use by it, is closely associated with the Complainant’s airport and use by non-authorized parties as a disputed domain name comprised of the BNA mark with the term “airport” is apt to cause confusion to Internet users.
Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out in paragraph 4(b)(iv) of the Policy is if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The Respondent will have been aware, as at the date of the registration of the disputed domain name of its propensity to confuse Internet users into believing that there was a connection between it and the Complainant, particularly if used to resolve to a website providing information about the Complainant’s airport and its associated services. Moreover, the form of the Respondent’s website is such that many Internet users are likely to believe that it is operated by, or with the approval of, the Complainant. Furthermore, the facts and matters addressed above in the context of the second element suggest that, notwithstanding the limited use of a disclaimer by the Respondent, any confusion caused is intentional on its part. Its conduct accordingly falls squarely within the circumstance outlined at paragraph 4(b) of the Policy and the Panel therefore finds that the disputed 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 disputed domain name <bna-airport.com> be transferred to the Complainant.
Date: July 6, 2020
1 It is unclear from the screen prints appended to the Complaint as to whether these boxes have been populated with data.