Gerald R. Ford International Airport Authority v. Zurab Tsertsvadze
Claim Number: FA2201001982577
Complainant is Gerald R. Ford International Airport Authority (“Complainant”), represented by Staci R. DeRegnaucourt of Varnum LLP, Michigan, USA. Respondent is Zurab Tsertsvadze (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <grand-rapids-airport.com>, registered with NameCheap, Inc..
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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 31, 2022; the Forum received payment on January 31, 2022.
On January 31, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <grand-rapids-airport.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 February 2, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2022 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@grand-rapids-airport.com. Also on February 2, 2022, 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 February 28, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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 made the following contentions.
Complainant is an airport in Michigan. Complainant has common law rights in the GRAND RAPIDS AIRPORT, GRR, and Gerald R Ford International Airport Authority marks. Respondent’s <grand-rapids-airport.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds hyphens in between along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <grand-rapids-airport.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its GRAND RAPIDS AIRPORT mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead passes off as Complainant and offers parked click-through links at the disputed domain name’s resolving website.
Respondent registered and uses the <grand-rapids-airport.com> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by passing off as Complainant on the disputed domain name’s resolving website and offering parked, pay-per-click link. Respondent registered the disputed domain name with knowledge of Complainant’s rights in the GRAND RAPIDS AIRPORT mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United State entity which owns and operates the airport at Grand Rapids in Michigan.
2. Complainant has established its common law trademark rights in the GRAND RAPIDS AIRPORT mark and that it acquired those rights at least from 2015.
3. Respondent registered the <grand-rapids-airport.com> domain name on June 29, 2021.
4. Respondent has used the disputed domain name to pass itself off as Complainant and to offer parked click-through links at the disputed domain name’s resolving website.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has common law rights in the GRAND RAPIDS AIRPORT, GRR, and Gerald R Ford International Airport Authority marks. It is sufficient if Complainant establishes its common law trademark rights in one of those marks and as it is clear that it has common law trademark rights in the GRAND RAPIDS AIRPORT and as the domain name is virtually indentical to that mark, there is no need to make a ruling with respect to other potential trademarks, although obviously Complainant also uses the other expressions from time to time as a trademark as the need arises. Under Policy ¶ 4(a)(i), common law rights may suffice in lieu of a registered trademark, and may be demonstrated through a variety of factors, including longstanding use of a mark, holding an identical domain name, advertising expenditures, and public or media recognition of the mark. See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (“Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”); see also Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant makes out a strong case that it has common law rights in the GRAND RAPIDS AIRPORT mark dating back to 1954. Complainant provides screenshots of its website at <grr.org>, which contains all of the features one would expect to find on the website of an airport and also contains Complainant’s address as “Grand Rapids” where the airport is located. Complainant also provides an IATA code assigned to its airport, which associates the GRR and GERALD R FORD INTERNATIONAL AIRPORT marks with the location Grand Rapids. In other words, it must be common knowledge and widely assumed throughout the United States that the Grand Rapids Airport at Grand Rapids is the airport operated by Complainant as its business. Any member of the public would also naturally assume on good grounds that the expression GRAND RAPIDS AIRPORT is one of the names adopted by Complainant to identify the source of its goods and services, although it also refers to it as the Gerald R Ford International Airport. Therefore, the Panel finds that Complainant has established its common law rights in the GRAND RAPIDS AIRPORT mark under Policy ¶ 4(a)(i) and that it acquired them at least from the year 2015 which is of course well prior to the registration of the domain name.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s GRAND RAPIDS AIRPORT mark. Complainant argues Respondent’s <grand-rapids-airport.com> domain name is identical or confusingly similar to the GRAND RAPIDS AIRPORT mark. Under Policy ¶ 4(a)(i), adding hyphens as spaces and the “.com” gTLD is generally insufficient in differentiating the disputed domain name from the mark it wholly incorporates as in the present case. See ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). The disputed domain name incorporates the GRAND RAPIDS AIRPORT mark, inserts hyphens between each word, and adds the “.com” gTLD to the end of the mark. But they are merely typographical features; the substance of the situation is that the domain name is identical to the trademark. Therefore, the Panel finds Respondent’s domain name is identical to Complainant’s GRAND RAPIDS AIRPORT mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s GRAND RAPIDS AIRPORT mark and to use it in its domain name, making only minor typographical changes;
(b) Respondent registered the <grand-rapids-airport.com> domain name on June 29, 2021;
(c) Respondent has used the disputed domain name to pass itself off as Complainant and to offer parked click-through links at the disputed domain name’s resolving website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(f) Complainant argues that Respondent is not commonly known by the <grand-rapids-airport.com> domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS Information may demonstrate that a Respondent is not commonly known by the disputed domain name, while a lack of information demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The WHOIS of record identifies Respondent as “Zurab Tsertsvadze”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its GRAND RAPIDS AIRPORT mark in the disputed domain name. See Registrar Verification Email. Therefore, as the Panel agrees, it finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(g) Complainant argues that Respondent is not using the <grand-rapids-airport.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed to pass off as a Complainant or imply an affiliation with Complainant and host advertisements related to Complainant’s business may not be considered bona fide offerings of goods or services, nor legitimate noncommercial or fair uses. See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”); see also Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services). Complainant provides screenshots of the disputed domain name’s resolving website, which features information about Complainant and uses Complainant’s marks along with pictures of its airport. In fact, Respondent’s website holds itself out as being the website of the Grand Rapids Airport which it is not, so it is passing itself off as Complainant. Respondent is therefore misleading the public and using the name of Complainant’s airport to promote commercial services from which Respondent is clearly intended to benefit. See Compl. Ex. 3. Complainant notes in that regard the website hosts click-through links to advertisements for other travel services. See id. Therefore, the Panel finds Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). There is clearly no way in which any of Respondent’s conduct could give rise to its having a right or legitimate interest in the domain name.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent uses the <grand-rapids-airport.com> domain name to disrupt Complainant’s business for commercial gain. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to pass off and/or imply an affiliation with Complainant to attract users to the disputed domain name’s resolving website, where Complainant hosts click-through links to generate revenue. See The Prudential Insurance Company of America v. Henrique Bryan Souza / DATAMIX ENSINO DE INFORMATICA, FA 1718308 (Forum Apr. 3, 2017) (finding bad faith where the respondent used the disputed domain name to resolve to a website upon which the respondent imitated the complainant’s mark, logo, and color scheme to create a “strikingly similar” website); see also Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (Finding Respondent uses the domain names to point to a site which offers links relating to Complainant’s business. “Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.”). The Panel recalls Complainant’s screenshots of the disputed domain name’s resolving website, which features information about Complainant and uses Complainant’s marks along with pictures of its airport. See Compl. Ex. 3. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant argues that Respondent registered the <grand-rapids-airport.com> domain name in bad faith arising from Respondent’s actual knowledge of Complainant’s rights in its GRAND RAPIDS AIRPORT mark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be demonstrated through Respondent’s use of the disputed domain name’s resolving website. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). The Panel recalls Complainant’s screenshots of the disputed domain name’s resolving website, which features information about Complainant and uses Complainant’s marks along with pictures of Complainant’s airport. See Compl. Ex. 3. Complainant also provides screenshots of an email from the Respondent which may show its knowledge of Complainant as well. See Compl. Ex. 5. Therefore, as the Panel agrees, it finds Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the GRAND RAPIDS AIRPORT mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression. There is clearly no way in which any of Respondent’s conduct could give rise any conclusion other than that it registered and has used the domain name in bad faith.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <grand-rapids-airport.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: March 1, 2022
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