Alaska Air Group, Inc., and its subsidiary, Alaska Airlines v. D-Max Limited
Claim Number: FA1307001510953
Complainant is Alaska Air Group, Inc., and its subsidiary, Alaska Airlines (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is D-Max Limited (“Respondent”), Nevis.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <alaksaairlines.com>, <alaskaairliines.com>, <alsaskaair.com>, and <alsaskaairlines.com>, registered with Fabulous.com Pty Ltd.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 22, 2013; the National Arbitration Forum received payment on July 22, 2013.
On July 23, 2013, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <alaksaairlines.com>, <alaskaairliines.com>, <alsaskaair.com>, and <alsaskaairlines.com> domain names are registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the names. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 25, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 14, 2013 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@alaksaairlines.com, postmaster@alaskaairliines.com, postmaster@alsaskaair.com, postmaster@alsaskaairlines.com. Also on July 25, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 names be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The two Complainants in this matter are Alaska Air Group, Inc., and its subsidiary, Alaska Airlines. Complainant contends that Alaska Airlines Group, Inc. owns Alaska Airlines, and both entities own the ALASKA AIRLINES mark.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel finds that the evidence in the Complaint is sufficient to establish an acceptable nexus or link between the Complainants, and treats them as a single entity in this proceeding. The Complainants will hereafter be collectively referred to as “Complainant” throughout this decision.
A. Complainant
Complainant Alaska Airlines is an airline carrier based in Seattle, Washington, and serves over 45 cities throughout the western United States. Complainant enjoys widespread consumer recognition, and has made substantial investment in advertising and promoting its ALASKA AIRLINES marks. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the ALASKA AIRLINES mark (Reg. No. 1,561,416 registered October 17, 1989). See Complainant’s Exhibit E.
Respondent registered the <alaksaairlines.com>, <alaskaairliines.com>, <alsaskaair.com>, and <alsaskaairlines.com> domain names on or after May 18, 2004, significantly after Complainant’s right in the ALASKA AIRLINES mark arose in 1989 by way of trademark registration. Respondent causes each of the disputed domain names to resolve to websites featuring generic click-through links to third-party websites, some of which directly compete with Complainant’s business. Respondent receives fees in exchange for hosting the disputed domain names. Each of the <alaksaairlines.com>, <alaskaairliines.com>, <alsaskaair.com>, and <alsaskaairlines.com> domain names are confusingly similar to Complainant’s ALASKA AIRLINES mark, and Respondent neither has permission to use the mark, nor can it claim to be commonly known by any of the domain names. Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names, and instead competes with Complainant’s business by its use of the domains. Respondent has demonstrated a history of bad faith registration and use by registering domain names that incorporate well-known marks belonging to other entities. Respondent causes disruption to Complainant’s business by its use of the domain names to host competing pay-per-click links, and makes a profit from the disputed domain names by confusing consumers and attracting Internet traffic to the disputed domain names. Respondent registered each of the <alaksaairlines.com>, <alaskaairliines.com>, <alsaskaair.com>, and <alsaskaairlines.com> domain names in a clear example of typosquatting, and thereby registered the domains in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Alaska Air Group Inc., and its subsidiary, Alaska Airlines who list their address as Seattle, WA, USA. Complainant owns and operates airline locations throughout the USA and Mexico. Complainant also owns the USA registered family of ALASKA AIR marks dating back to at least as early as 1989 and conducts business on the internet at its official website located at <alaskaairlines.com>.
Respondent is D-Max Limited which list its address in pertinent part as Charlestown, Nevis. Respondent’s registrar’s address is listed as being in Queensland, Australia. Respondent registered the disputed domain names on or after May 18, 2004.
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(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.”).
Complainant makes the claim that it owns the ALASKA AIRLINES mark as a result of its USPTO registration (Reg. No. 1,561,416 registered October 17, 1989). Previous panels have reached the conclusion that where a complainant demonstrates through evidence that it owns a USPTO registration for its mark, the complainant has satisfied Policy ¶ 4(a)(i) for a finding of rights in the mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel finds that Complainant’s USPTO registration serves to establish Complainant’s rights in the ALASKA AIRLINES mark pursuant to Policy ¶ 4(a)(i). The Panel makes its finding despite the fact that Respondent appears to be located in Nevis, as Complainant is not required to have a registration in Respondent’s country of residence. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant makes the contention that the <alaksaairlines.com>, <alaskaairliines.com>, <alsaskaair.com>, and <alsaskaairlines.com> domain names are each confusingly similar to the ALASKA AIRLINES mark. Complainant alleges that the generic top-level domain (“gTLD”) “.com” does not distinguish the domain names from the mark under Policy ¶ 4(a)(i). Previous panels have stated that a gTLD added to a mark does not affect the confusing similarity between the mark and the domain name. See 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.”). The Panel finds that a gTLD in a mark fails to distinguish the mark from the domain name under Policy ¶ 4(a)(i).
Complainant also contends that Respondent registered domain names that vary from Complainant’s mark by a single character. The Panel notes that each domain name is missing the space within the words of the mark, the <alaksaairlines.com>, <alsaskaair.com>, and <alsaskaairlines.com> domain names juxtapose letters in the mark, and the <alaskaairliines.com> domain name includes an additional letter “i.” The panel in Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005), found that transposing the letters in a mark to create a domain name nonetheless results in confusingly similar domain names to the complainant’s mark. Additionally, in Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), the panel stated that eliminating spaces from between the terms of the mark does not establish distinctiveness from the complainant’s mark. The Panel finds that by adding or juxtaposing letters within a mark and removing the spacing in the mark, the domain names fail to be distinguishable from Complainant’s mark. Further, the addition of a single letter has been found not to negate confusing similarity. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks).
Finally, the Panel notes that the <alsaskaair.com> domain name not only contains letters juxtaposed from the original ALASKA AIRLINES mark, it also removes part of the word “airlines” from Complainant’s mark. The panel in WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001), stated that the disputed domain name was confusingly similar to the complainant’s mark, where the domain name was <westjets.com> and the complainant’s mark was WEST JET AIR CENTER. The Panel finds that the <alaksaairlines.com>, <alaskaairliines.com>, <alsaskaair.com>, and <alsaskaairlines.com> domain names are confusingly similar to Complainant’s ALASKA AIRLINES mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant makes the allegation that Respondent has not been commonly known by the disputed domain names, citing Respondent’s lack of trademark or intellectual property rights in the domain names, and the WHOIS record, which Complainant argues suggests that Respondent is known as an entity other than the mark associated with Complainant. Complainant argues that it has not licensed, authorized, or otherwise permitted Respondent to register domain names incorporating Complainant’s ALASKA AIRLINES mark. In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel stated that the respondent was not known by the disputed domain name, concluding that the evidence such as the WHOIS information, and the complainant’s assertion that it did not authorize the respondent’s use of the mark supported such a finding. The Panel finds that since Respondent does not have permission from Complainant to use the ALASKA AIRLINES mark, and the WHOIS record demonstrates that the registrant of each domain name is “D-Max Limited,” that Respondent lacks rights or legitimate interests in the <alaksaairlines.com>, <alaskaairliines.com>, <alsaskaair.com>, and <alsaskaairlines.com> domain names. Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses each of the disputed domain names to establish and maintain a website redirecting unsuspecting Internet users to a website that contains generic links to third-party websites, which Complainant claims includes links owned by competitors. Complainant argues that Respondent receives a profit for each website visitor that clicks on the linked website, and contends that such use fails to constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel finds that by hosting a website offering pay-per-click links for users to click on, thereby generating revenue, Respondent does not use the disputed domain names to make a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain names. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent is a “recalcitrant, serial cybersquatter,” demonstrated both by Respondent’s ownership of domain names outside the current dispute that appear to be typosquatted from famous marks and by previous UDRP decisions adverse to Respondent that held that Respondent engaged in a pattern of bad faith registration. See LinkedIn Corp. v. D-Max Ltd., FA 1413956 (Nat. Arb. Forum Dec. 10, 2011); see also Vanguard Trademark Holdings USA LLC v. D-Max Ltd., FA 1466780 (Nat. Arb. Forum Nov. 22, 2012). The Panel finds that evidence of past UDRP decisions concluding Respondent registered and used domain names in bad faith is evidence supporting a finding in the current dispute that Respondent has established a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). The Panel finds that Respondent has established a pattern of registering disputed domain names in bad faith pursuant to Policy ¶ 4(b)(i) and thus the Panel infers bad faith registration and use in the present dispute as a result.
Complainant contends that Respondent registered the <alaksaairlines.com>, <alaskaairliines.com>, <alsaskaair.com>, and <alsaskaairlines.com> domain names with the purpose of disrupting Complainant’s business, and argues that such behavior demonstrates bad faith registration and use. Complainant asserts that Respondent hosts pay-per-click links at the resolving website which promote products that compete with Complainant, and thereby disrupts Complainant’s business. Complainant urges the Panel to find that Respondent’s effort to divert consumers is evidence of bad faith. The Panel notes that Respondent registered the <alaksaairlines.com>, <alaskaairliines.com>, <alsaskaair.com>, and <alsaskaairlines.com> domain names, and uses them to host hyperlinks to Complainant’s services, and also includes hyperlinks for similar services, including “Best Airline Tickets,” and “Air Alaska.” See Complainant’s Exhibit H. The Panel finds that by maintaining websites at the disputed domain names that feature hyperlinks to competitors’ websites, Respondent’s registration and use is representative of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant further contends that Respondent receives click-through fees by hosting hyperlinks at the resolving websites, earned each time a misdirected Internet user accesses the websites leading from the displayed links. Complainant argues that Respondent’s registration and use of the <alaksaairlines.com>, <alaskaairliines.com>, <alsaskaair.com>, and <alsaskaairlines.com> domain names is a product of bad faith because Respondent uses the disputed domain names to attract and mislead consumers for its own profit. The Panel finds that by registering names that are confusingly similar to Complainant’s ALASKA AIRLINE mark, and using the corresponding websites to host links to Complainant’s competitors, Respondent’s registration and use of each of the disputed domain names was in bad faith pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant accuses Respondent of typosquatting the <alaksaairlines.com>, <alaskaairliines.com>, <alsaskaair.com>, and <alsaskaairlines.com> domain names, arguing that Respondent selected domain names that are intentionally misspelled, with the purpose of ensnaring Internet users who mistype Complainant’s mark when attempting to access Complainant’s website. Complainant claims that Respondent’s typosquatting is evidence of bad faith registration, because it “removes any doubt as to whether or not the misspelling was intentionally designed to improperly capitalize on Complainant’s famous Mark and its related business.” The Panel agrees as to the <alaksaairlines.com>, <alaskaairliines.com>, and <alsaskaairlines.com> domain names, and finds that Respondent’s typosquatting demonstrates its bad faith registration pursuant to Policy ¶ 4(a)(iii). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.). The Panel notes, however, that while the <alsaskaair.com> domain name appears to be a misspelled variation of Complainant’s ALASKA AIRLINES mark, the domain name contains only a portion of the mark, omitting an entire word, and thus does not fall within the realm of what can be considered typosquatting as found by previous panels as typosquatting.
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <alaksaairlines.com>, <alaskaairliines.com>, <alsaskaair.com>, and <alsaskaairlines.com>, domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: September 3, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page