Air Tahiti Nui v. International Domains,
Inc.
Claim Number: FA0205000114332
PARTIES
Complainant
is Air Tahiti Nui, El Segundo, CA,
USA (“Complainant”) represented by Evelyn
D. Sahr, of Condon & Forsyth,
LLP. Respondent is International Domains, Inc., Port
Vila, VANUATU (“Respondent”) represented by Dominique Antz.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <airtahitinui.com>,
registered with DomainDiscover.com.
PANEL
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.
Clive
Elliott as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically
on May 17, 2002; the Forum received a hard copy of the Complaint on May 21,
2002.
On
May 20, 2002, DomainDiscover.com confirmed by e-mail to the Forum that the
domain name <airtahitinui.com>
is registered with DomainDiscover.com and that the Respondent is the current
registrant of the name. DomainDiscover.com
has verified that Respondent is bound by the DomainDiscover.com registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On
May 22, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 11,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@airtahitinui.com by e-mail.
A
timely Response was received and determined to be complete on June 5, 2002.
The
Forum received an Additional Submission, filed by the Complainant, on June 5,
2002. The Respondent then responded to this Submission by e-mail on June 11,
2002. The Additional Submission complies with Supplemental Rule 7, which
requires that such Additional Submission be submitted to the Forum and the
opposing party not later than 5 calendar days after the Response is submitted.
Accordingly, it appears that the rule was complied with and that the said
documents can be considered by the Panel.
On June 24 2002, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Clive Elliott
as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant is an airline. It was founded
in 1996 and began flying in 1998. Complainant uses its mark in connection with
air transportation services between Papeete, Tahiti, French Polynesia; Los
Angeles, California; and Paris, France
Complainant asserts common law trademark
rights arising from use of its corporate name in commerce in the U.S. and
abroad, and statutory trademark rights arising from its foreign registration of
its corporate name with the Institut National de la Propriete Industrielle
(“INPI”), the French Patent and Trademark Registry.
It is asserted that the Air Tahiti Nui
and <airtahitinui-usa.com> service marks are well established in
connection with air transportation and travel services. It is also asserted Complainant started its
web site in July of 1999 and it makes prominent use of its service marks as
exemplified through its use on Complainants’ business stationery, online reservations
system, promotional literature and publicity photographs.
It
is alleged that Respondent registered the domain name <airtahitinui.com>
and then placed a notice on the site stating that the domain name was for
sale. On August 11, 2001, after seeing
the offer to sell the domain name on the web site, Complainant says it
contacted Respondent requesting information regarding the sale price for the <airtahitinui.com>
domain name.
Complainant alleges that on August 13, 2001, Respondent
replied indicating that it had entered into a contract with another airline
which offered that airline a two-month option to purchase the domain name.
Respondent then sent an e-mail to Complainant suggesting
that it visit the <airtahitinui.com>
web site. The e-mail is exhibited. Upon
visiting the site, Complainant became aware that users were being redirected to
a pornographic web site
Later,
Respondent contacted Complainant offering to sell the domain name to the
Complainant for $300,000.
Complainant
states it refused to purchase the domain name for $300,000 and did not reply to
Respondent’s offer.
It is submitted by the Complainant that:
·
Respondent’s
use of the domain name <airtahitinui.com>
is identical to the service mark Air Tahiti Nui and confusingly similar to the
service mark Air Tahiti Nui and domain name <airtahitinui-usa.com> in
which the Complainant has rights.
·
Internet
users are likely to assume that Complainant’s official web site is located at
the URL <airtahitinui.com>.
·
Respondent
is disparaging the goodwill associated with the Air Tahiti Nui mark by
redirecting potential customers to a pornographic web site.
·
Consumers
have an expectation that the <airtahitinui.com>
web site will direct them to the services of Complainant, not pornography.
·
Respondent’s
only use of the domain name is to forward the user to another web site, which
offers pornographic material. There is
nothing on that web site to indicate Air Tahiti Nui as a name by reference to
which Respondent is making a bona fide offering of goods or services.
·
Respondent deliberately connected the <airtahitinui.com> domain name to this pornographic site with
the aim of quickly bringing the situation to Complainants’ attention in a way
that would cause significant concern and elicit a prompt and lucrative offer
from the Complainants to purchase the domain name.
The Additional Submission lodged by Complainant depicts a
range of pornographic images taken from a web site said to be accessible by the
<airtahitinui.com> domain
name.
Finally, it is asserted that, in violation of Paragraph 5 of
the Domain Registration Agreement that Respondent entered into with the
Registrar, DomainDiscover.com, Respondent has failed to provide the name of an
authorized contact person although the Respondent is a corporation. Furthermore, the Respondent has failed to
“submit accurate and reliable contact details and [to] promptly correct and
update them during the term of the Domain registration.”
B.
Respondent
Respondent states that it is a young Internet company
based in Vanuatu, which wants to develop non-profit web sites for the South
Pacific island’s cultures. It asserts that when it registered the domain name <airtahitinui.com> it
took all precautions and ascertained that “Air Tahiti Nui” was not a registered
trademark and was thus available for registration and use.
Respondent
points out that the French dictionary has more than 16 different
meanings for the
word"air”:“wind,atmosphere,air,feeling,music,space,breath,temperure,attitude,outside,expression,face,form,caractere,impression,physiognomy,them…”
and that "air” is
synonymic (sic) of melody, music and impression. It is also pointed out that
" Tahitinui " means in South Pacific language (sic) all the islands
of the South Pacific around Polynesia, Vanuatu, Hawaii, Fiji, Tonga, Tahiti,
Easter Island and the Cook Islands.
Accordingly, it is asserted that Respondent chose the
domain name <airtahitinui.com> for
its future Internet web site dedicated to the Polynesian music and culture
because “air Tahitinui " means " South Pacific culture (music, art,
languages…) ".
Respondent asserts that when it registered the domain
name <airtahitinui.com> it was unaware
of the use of the domain name the subject of this dispute, whether as a domain
name trade mark or otherwise.
Respondent states that when it registered the domain
name, it was from the catalogue of " expired domain names " of the
registrar www.buydomains.com . On this basis, it submits:
-
that the
domain name <airtahitinui.com> was
previously registered for several years
by another third party.
-
that the
former registrant did not renew his
booking.
-
that the
domain name <airtahitinui.com> had been never disputed with the former
registrant because it was again for sale normally on the Internet.
-
that the Complainant had no interest in the domain
name <airtahitinui.com>; and
-
that the Complainant preferred to wait 3 years before
engaging in a dispute with the new registrant , namely the Respondent.
Respondent refers to various other similar named
businesses, including:
·
Tahiti Nui Travel;
·
Air Tahiti;
·
Tahiti Nui Television; and
·
Tahiti Nui Productions.
It also asserts
that “air Tahitinui” are very usual words and that Complainant chose
for its airline company a very common generic name, exposing itself to
confusion with other entities.
Respondent denies it has never been in touch with the
Complainant and does not want to sell the domain name <airtahitinui.com> to
it. In this regard, it asserts the e-mails purportedly sent by it are false. It
does however accept that at one point a “facetious employee” decided to link <airtahitinui.com> to a
so called " funny cartoons " web site to amuse his friends. However,
it states that this was not a pornographic web site and Respondent offered to
put a stop to it as “soon as possible”.
(1) the domain name <airtahitinui.com> is identical or confusingly similar to the
AIR TAHITI NUI trade/service mark;
(2) the Respondent has no rights or legitimate
interests in respect of the <airtahitinui.com>
domain name; and
(3)
the <airtahitinui.com> domain
name was registered and is being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution
Policy (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 the Complainant must prove each of the following
three elements to obtain an order that a domain name should be cancelled or
transferred:
(3) the domain name registered by the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights;
(4) the 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.
Identical
and/or Confusingly Similar
Complainant was
founded in 1996 and has been continually operating aircraft using the AIR
TAHITI NUI service mark since 1998. It has been operating a web site under the
<airtahitinui-usa.com> domain name since July 1999. Complainant makes use
of its service mark on stationary, on an online reservation system and its web
site.
Complainant
asserts that it owns a registered French service mark, however, no Reg. No. or
other evidence is provided. No weight can be given to this.
Complainant
argues for recognition of its common law rights due to its international
presence and the subsequent continuous use of its AIR TAHITI NUI service mark
since inception in 1996. The ICANN dispute resolution policy is “broad in
scope” in that “the reference to a trademark or service mark ‘in which the complainant
has rights’ means that ownership of a registered mark is not
required–unregistered or common law trademark or service mark rights will
suffice” to support a domain name Complaint under the policy. McCarthy
on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000); see also British Broad. Corp. v. Renteria,
D2000-0050 (WIPO Mar. 23, 2000) (noting that the UDRP “does not distinguish
between registered and unregistered trademarks and service marks in the context
of abusive registration of domain names” and applying the UDRP to “unregistered
trademarks and service marks”).
Respondent’s
contested <airtahitinui.com>
domain name reflects Complainant’s AIR TAHITI NUI common law mark in its
entirety. Spaces are inconsequential when conducting an “identical” inquiry
under Policy ¶ 4(a)(i). See Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see
also Tech. Prop., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000)
(finding that the domain name <radioshack.net> is identical to
Complainant’s mark, RADIO SHACK).
Respondent
asserts that Complainant’s AIR TAHITI NUI mark is commonplace and generic.
While the components may be widely used in the Pacific (and possibly elsewhere)
the combination seems, on the evidence, to be used exclusively by Complainant
and on this basis to be capable of attracting common law rights.
<Airtahitinui.com> and AIR TAHITI NUI are, apart from the
“com” element, identical and in the context of the Pacific region the
likelihood of confusion between the two is high.
For
the above reasons it is found that the ground is made out.
Rights
or Legitimate Interests
Complainant
argues that, pursuant to Policy ¶ 4(c)(ii), Respondent is not known as “Air
Tahitinui” or by the <airtahitinui.com>
domain name it registered. Complainant has not licensed Respondent to use its common
law mark, nor is Respondent authorized to operate under Complainant’s AIR
TAHITI NUI mark. See Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
Respondent does not have rights in a domain name when Respondent is not known
by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name).
Respondent
argues that it chose the disputed domain name for its future
Internet web site dedicated to the Polynesian music and culture because “air
Tahitinui " means " South Pacific culture (music, art, languages…)
". There is no evidence to support this contention. Absent such evidence
and in the light of other contradictory evidence as discussed below, one
reasonable and available inference is that this is a convenient re-construction
to justify its actions. The Panel declines to accept the argument.
Complainant in
turn argues that Respondent’s disputed domain name is not being used in
connection with a bona fide offering of goods or services under Policy ¶
4(c)(i). Complainant contends that Respondent’s only use of the domain name is
to forward Internet users to another web site, which offers pornographic
material. Complainant maintains that there is nothing on that web site
indicating Respondent has a legitimate interest in the <airtahitinui.com> domain name.
Complainant
believes Respondent’s activities tarnish Complainant’s AIR TAHITI NUI mark. See MatchNet plc v. MAC Trading,
D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of
goods or services to use a domain name for commercial gain by attracting
Internet users to third party sites offering sexually explicit and pornographic
material, where such use is calculated to mislead consumers and tarnish the
Complainant’s mark); see also Brown &
Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding
that infringing on another's well-known mark to provide a link to a
pornographic site is not a legitimate or fair use).
Additionally,
Respondent’s use of the disputed domain name to channel users to a pornographic
web site is not a legitimate noncommercial or fair use of the domain name under
Policy ¶ 4(c)(iii). See Nat’l Football
League Prop., Inc. v. One Sex Entm't. Co., D2000-0118 (WIPO Apr. 17, 2000)
(finding that the Respondent had no rights or legitimate interests in the
domain names <chargergirls.com> and <chargergirls.net> where the
Respondent linked these domain names to its pornographic web site); see also Land O’ Lakes Inc. v. Offbeat Media
Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding that use of a domain
name to attract/redirect to another pornographic site is not a legitimate use).
Complainant’s contentions have merit. Respondent’s acceptance that at one point a “facetious
employee” linked <airtahitinui.com>
to so called" funny cartoons " to amuse his
friends, suggests there is a basis for Complainant’s Complaint. Respondent’s
blank denial of any contact with Complainant regarding sale of the domain name
has to be contrasted to Complainant’s detailed account of the alleged contact.
Further,
there is evidence that Respondent sent an e-mail to Complainant suggesting that
it visit the <airtahitinui.com>
web site. This is consistent with the
general thrust of Complainant’s Complaint and in particular with the assertion
that upon visiting the site, Complainant became aware that users were being
redirected to a pornographic web site.
The Additional Submission lodged by Complainant depicting a
range of pornographic images taken from a web site said to be accessible by the
<airtahitinui.com> domain name
is also consistent with the Complainant’s factual and legal contentions.
For
these reasons it is found that Respondent has no legitimate interest or right
in the disputed domain name and accordingly that this ground is made out.
Registration
and Use in Bad Faith
Complainant
asserts that Respondent’s initial registration of the domain name contained a
notice stating that the domain name was for sale. Complainant alleges that
Respondent then took various other steps to bring the domain name to its
attention and eventually contacted it offering to sell the domain name for
$300,000. Complainant asserts that Respondent’s actions constitute bad faith
pursuant to Policy ¶ 4(b)(i). See
Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat.
Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name]
bad faith is some accompanying evidence that the domain name was registered
because of its value that is in some way dependent on the trademark of another,
and then an offer to sell it to the trademark owner or a competitor of the
trademark owner"); see also Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad
faith where Respondent offered domain names for sale).
Complainant
alleges that Respondent was constructively aware of the existence of its AIR
TAHITI NUI mark via Complainant’s <airtahitinui-usa.com> web site and its
residence within Complainant’s sphere of operations. Respondent’s subsequent
registration and use of the disputed, identical domain name represents bad
faith under Policy ¶ 4(a)(iii). See
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here
an alleged infringer chooses a mark he knows to be similar to another, one can
infer an intent to confuse"); see
also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17,
2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration).
Additionally,
Complainant believes Respondent deliberately connected the <airtahitinui.com> domain name to a pornographic site with
the aim of quickly bringing the situation to the Complainant’s attention.
Complainant argues that the registration and use of the disputed domain name to
redirect Internet users to web sites offering pornographic material warrants a
finding of bad faith registration and use under Policy ¶ 4(a)(iii). See MatchNet
plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association
of a confusingly similar domain name with a pornographic web site can
constitute bad faith); see also Ty, Inc.
v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent
contrary evidence, linking the domain names in question to graphic,
adult-oriented web sites is evidence of bad faith).
Once again these
assertions appear to have merit and nothing Respondent has said is sufficient
to rebut the prima facie case Complainant has made out.
Lastly, it is
asserted that Respondent failed to “submit accurate and reliable contact
details and [to] promptly correct and update them during the term of the Domain
registration.” Complainant asserts that Respondent failed to provide the name
of an authorized contact person despite Respondent alleging that it is a
corporation. This constitutes bad faith registration of the disputed domain
name. See Home Dir., Inc. v. HomeDirector,
D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading
information in connection with the registration of the domain name is evidence
of bad faith); see also Video Direct Distrib. Inc. v. Video Direct,
Inc., FA 94724 (Nat. Arb. Forum June 5, 2000) (finding that Respondent
acted in bad faith by providing incorrect information to the registrar
regarding the owner of the registered name).
Given that, for
the reasons stated above, Complainant has established its case on this ground,
no view need be expressed on this issue in this particular case.
DECISION
Given
the above findings the <airtahitinui.com>
domain name shall be transferred to the Complainant.
Clive Elliott, Panelist
Dated: July 8, 2002
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