Southwest Airlines Co. v. herbert mastro
Claim Number: FA2111001974504
Complainant is Southwest Airlines Co. (“Complainant”), represented by Tara K. Hawkes of Holland & Hart LLP, Colorado, USA. Respondent is herbert mastro (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <employee-southwestair.com>, registered with Hosting Concepts B.V. d/b/a Registrar.eu.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 23, 2021; the Forum received payment on November 23, 2021.
On November 29, 2021, Hosting Concepts B.V. d/b/a Registrar.eu confirmed by e-mail to the Forum that the <employee-southwestair.com> domain name is registered with Hosting Concepts B.V. d/b/a Registrar.eu and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Registrar.eu has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Registrar.eu registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 1, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@employee-southwestair.com. Also on December 1, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 27, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is a renowned United States based airline.
Complainant has rights in the SOUTHWEST mark based upon registration with the United States Patent and Trademark Office (“USPTO”).
The <employee-southwestair.com> domain name is confusingly similar to Complainant’s mark because Respondent has incorporated the entire mark and added the generic word “employee,” the descriptive word “air,” a hyphen, and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <employee-southwestair.com> domain because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s SOUTHWEST mark. Additionally, Respondent fails to use the at-issue domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the name to pass its self-off as Complainant.
Respondent has registered and uses the <employee-southwestair.com> domain name in bad faith because Respondent attempts to pass off as Complainant in furtherance of a phishing scheme. In addition, bad faith is found because Respondent had constructive and/or actual notice of Complainant’s rights in the SOUTHWEST mark at the time of registration given the mark’s fame and Complainant’s registration of the mark with the USPTO.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the SOUTHWEST AIRLINES and SOUTHWEST trademarks.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the SOUTHWEST AIRLINES trademarks.
Respondent uses the at-issue domain name to pass itself off as Complainant and to address a website mimicking Complainant’s genuine website in furtherance of phishing for internet users’ personal information.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel limits its analysis to Complainant’s SOUTHWEST AIRLINES mark although Complainant’s SOUTHWEST mark might also service as a basis for the instant complaint under Policy ¶ 4(a)(i).
Complainant shows that it has multiple registrations for its SOUTHWEST AIRLINES trademark including registrations with the USPTO and CIPO. Any one of such registrations is sufficient to demonstrate Complainant’s rights in the SOUTHWEST AIRLINES mark under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”). Complainant additionally shows that that it has rights in its SOUTHWEST trademark by virtue of the mark’s registration with the USPTO.
Next, Respondent’s <employee-southwestair.com> domain name contains Complainant’s SOUTHWEST AIRLINES trademark less its space and with its AIRLINE term abbreviated as “air,” proceeded by the term “employee” and a hyphen, with all followed by the top-level domain name “.com.” The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish Respondent’s <employee-southwestair.com> domain name from the SOUTHWEST AIRLINES trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <employee-southwestair.com> domain name is confusingly similar to Complainant’s SOUTHWEST AIRLINES trademark. See Rockwell Automation v. Zhao Ke, FA 1760051 (Forum Jan. 2, 2018) (“The disputed domain name <rockwellautomation.co> corresponds to Complainant's registered ROCKWELL AUTOMATION mark, with the space omitted and the ".co" top-level domain appended thereto. These alterations do not distinguish the domain name from Complainant's mark for purposes of the Policy.”); see also, Black Hills Ammunition, Inc. v. ICS INC, FA 1541572 (Forum Mar. 4, 2014) (finding that the <black-hillsammo.com> domain name is confusingly similar to the BLACK HILLS AMMUNITION mark under Policy ¶ 4(a)(i).); see also Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for <employee-southwestair.com> identifies the domain name’s registrant as “herbert mastro”, and the record before the Panel contains no evidence showing that Respondent is commonly known by SOUTHWEST AIRLINES or by <employee-southwestair.com>. The Panel therefore concludes that Respondent is not commonly known by the <employee-southwestair.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Moneytree, Inc. v. Matt Sims / MoneyTreeNow, FA1501001602721 (Forum Mar. 3, 2015) (finding that even though the respondent had listed “Matt Sims” of “MoneyTreeNow” as registrant of the <moneytreenow.com> domain name, the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii), because he had failed to list any additional affirmative evidence beyond the WHOIS information).
Respondent uses <employee-southwestair.com> to pass itself off as Complainant and to address a website that copies Complainant official website in content and design. Respondent’s imposter website further displays a “Jobs” webpage where internet users can view job openings purportedly available at Southwest Airlines and “apply” for a job by providing the user’s personal information. Notably, the website’s online job application form requires potential applicants to give their name, email, phone, address, resume, Social Security number, and digital copies of their photo ID using Respondent’s web form apparently in furtherance of a phishing scheme or other form of fraud. Respondent’s use the of the domain name to enable Respondent’s fraudulently collection of personal private data is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Vivendi Universal Games v. Ballard, FA 146621 (Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”).
Given the forgoing, Complainant satisfies its initial burden and absent evidence to the contrary shows Respondent’s lack of rights and legitimate interests in the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and legitimate interests, Respondent uses the confusingly similar <employee-southwestair.com> domain name to pass itself off as Complainant and address a website mimicking Complainant’s official website. Using a confusingly similar domain name in such manner falsely indicates that there is a sanctioned relationship between Complainant and Respondent when there is no such relationship and demonstrates Respondent’s bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv) because the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content” and used the website to gain access to users’ cryptocurrency accounts); see also, Twitter v. Domain Admin, FA 1607451 (Forum Apr. 2, 2015) (“Respondent’s use of the domain name disrupted Complainant’s business and misappropriated the trademark value of Complainant’s mark to wrangle visitors to its website thereby demonstrating Respondent’s bad faith registration and use of the name pursuant to Policy ¶ 4(b)(iii).”).
Next and as also mentioned above, Respondent’s imposter website is used to defraud internet users into giving up personal private data. Respondent’s ultimate use of <employee-southwestair.com>, to phish for the personal private data of third parties, clearly indicates Respondent’s bad faith registration and use of the at-issue domain name under Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)).
Furthermore, Respondent had actual knowledge of Complainant’s rights in the SOUTHWEST AIRLINES mark when it registered <employee-southwestair.com> as a domain name. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s mimicry of Complainant’s official website in the website addressed by <employee-southwestair.com>. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name further shows Respondent’s bad faith registration and use of <employee-southwestair.com> pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <employee-southwestair.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 28, 2021
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