International Air Transport Association v. Saw Entertainment group, inc. c/o Olegas Smeltsovas
Claim Number: FA1107001398525
Complainant is International Air Transport Association (“Complainant”), represented by Leanne Stendell of Haynes and Boone, LLP, Texas, USA. Respondent is Saw Entertainment group, inc. c/o Olegas Smeltsovas (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fixiata.com>, registered with Joker.com.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 13, 2011; the National Arbitration Forum received payment on July 13, 2011.
On July 19, 2011, Joker.com confirmed by e-mail to the National Arbitration Forum that the <fixiata.com> domain name is registered with Joker.com and that Respondent is the current registrant of the name. Joker.com has verified that Respondent is bound by the Joker.com 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 July 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 2011 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@fixiata.com. Also on July 19, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 11, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <fixiata.com> domain name is confusingly similar to Complainant’s IATA mark.
2. Respondent does not have any rights or legitimate interests in the <fixiata.com> domain name.
3. Respondent registered and used the <fixiata.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, International Air Transport Association, is the owner of the IATA mark. Complainant has multiple registrations for its mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,321,405 registered February 19, 1985). In order to expand the recognition of its brand, Complainant also as numerous foreign trademark registrations for its IATA mark. For example, the mark is registered with the Intellectual Property Office of New Zealand (“IPONZ”) (Reg. No. 722,484 registered January 12, 2006) and the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA741235 registered June 01, 2009). Complainant is an international trade group for airlines and uses the IATA mark in connection with a variety of services provided to airlines such as defining airline rules and regulations and improving safety and environmental standards.
Respondent, Saw Entertainment group, inc. c/o Olegas Smeltsovas, registered the <fixiata.com> domain name on October 26, 2010. The disputed domain name resolves to a website which offers information about hotel room rates, hotel reservations, and vacation deals from InterContinental Hotels Group. Respondent, through the email address listed on the disputed domain name’s WHOIS record, demonstrates a general offer to sell the <fixiata.com> domain name.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant contends that it has established rights in its IATA mark. The registration of a mark with a federal trademark authority, regardless of which country the registration and parties are in, is sufficient to establish rights in a mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Complainant has provided evidence of the IATA mark’s registration with the USPTO (e.g., Reg. No. 1,321,405 registered February 19, 1985). The Panel thus finds that Complainant has rights in the IATA mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that the <fixiata.com> domain name is confusingly similar to its IATA mark. The addition of a generic term does not sufficiently distinguish a domain name from a mark incorporated within a domain name. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). The addition of a generic top-level domain (“gTLD”) is similarly insufficient to render the domain name distinct from the asserted mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Respondent’s only changes to the IATA mark within the disputed domain name were the addition of the generic term “fix” and the gTLD “.com.” The Panel therefore finds that the <fixiata.com> domain name is confusingly similar to Complainant’s IATA mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is met.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case. Therefore, the burden shifts to Respondent to contradict Complainant’s assertions, but Respondent’s failure to respond allows the Panel to infer that Respondent does not have rights and legitimate interests in the <fixiata.com> domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). The Panel will review the record for information suggesting that Respondent has rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent is not commonly known by the disputed domain name. This determination can be made by the Panel by reviewing the WHOIS listing for the disputed domain name as well as any additional information provided by Complainant. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name). The WHOIS listing for the <fixiata.com> domain name lists “Saw Entertainment group, inc. c/o Olegas Smeltsovas” as the domain name registrant. Furthermore, Complainant argues that it is in no way associated with Respondent and has never given Respondent license to use its IATA mark in any capacity. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further contends that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). The <fixiata.com> domain name resolves to a website which offers a variety of services such as hotel reservation capabilities and rate listings. These things are unrelated to the IATA mark. Therefore, the Panel finds that Respondent’s use of the disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Wells Fargo & Co. v. Nadim, FA 127720 (Nat. Arb. Forum Nov. 29, 2002) (finding that the respondent’s use of the complainant’s WELLS FARGO mark to redirect Internet users to a domain name featuring magazine subscriptions was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
A general offer to sell a domain name is often taken as evidence in support of a lack of rights and legitimate interests in the disputed domain name. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name). The WHOIS information for the <fixiata.com> domain name displays contact information for the domain name registrant, Respondent, including an email address. The email address listed is “sales@wetplace.com.” The Panel finds, without contradiciton from Respondent in a response, that this email address is tantamount to a general offer to sell the disputed domain name. Therefore, the Panel finds that Respondent’s willingness to sell the <fixiata.com> domain name demonstrates a lack of rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).
The Panel finds that Policy ¶ 4(a)(ii) is met.
Panels have found in the past that a general offer of sale for a disputed domain name demonstrates bad faith on the part of the respondent. See Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”). The WHOIS listing for the <fixiata.com> domain name includes a contact email address for Respondent. The email address listed is “sales@wetplace.com.” The Panel, without the benefit of a Response from Respondent, takes this to be a general offer to sell the disputed domain name. Therefore, the Panel takes Respondent’s willingness to sell the disputed domain name to be evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i).
Complainant contends that Respondent has registered and used the <fixiata.com> domain name due to the likelihood of confusion in order to profit commercially. The registration and use of a disputed domain name to offer services unrelated to the complainant’s mark in order for commercial gain has been found to demonstrate bad faith registration and use. See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). Respondent registered a confusingly similar domain name which will have certainly caused confusion to Internet users as to the affiliation Respondent has to Complainant. Due to this confusion, Internet users will proceed to Respondent’s website. While there, it is likely that some will purchase services offered through the disputed domain name. The Panel infers that Respondent profits from the sale of these services. Therefore, the Panel finds that the <fixiata.com> domain name was registered and used as a result of the potential for commercial gain in bad faith under Policy ¶ 4(b)(iv).
The Panel finds that Policy ¶ 4(a)(iii) is met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fixiata.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 12, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page