Delta Air Lines, Inc. v. Chad Meyerson
Claim Number: FA1509001636800
Complainant is Delta Air Lines, Inc. (“Complainant”), represented by Jeffrey R. Baxter of Dentons US LLP, Atlanta, Georgia, USA. Respondent is Chad Meyerson (“Respondent”), Smithfield, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <delta.tours> (the “Disputed Domain Name”), registered with GoDaddy.com, LLC.
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.
Douglas M. Isenberg as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 8, 2015; the Forum received payment on September 8, 2015.
On September 9, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <delta.tours> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 September 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 2015 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@delta.tours. Also on September 10, 2015, 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.
A timely Response was received and determined to be complete on September 28, 2015.
On October 5, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Douglas M. Isenberg 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it was founded in 1928 and is known as a worldwide leader in air transportation services for persons, property and mail, serving more than 170 million customers each year. Complainant further states, and provides evidence to support, that it is the owner of numerous trademark registrations for the word DELTA, including U.S. Reg. No. 523,611 (registered November 19, 1957), for use in connection with travel-related services (the “DELTA Trademark”).
Complaint states that the Disputed Domain Name was registered on July 8, 2015, that “[w]ithout [Complainant’s] authorization, Respondent is likely intending to use the <delta.tours> domain to divert Internet users seeking [Complainant’s] official website online to Respondent's website” and that “Respondent likely also intends to garner click-through fees from Internet users who come to Respondent's site looking for Complainant's official websites online or to otherwise improperly capitalize on the goodwill of Complainant's marks.”
Complainant argues the following:
· The Disputed Domain Name is identical or confusingly similar to the DELTA Trademark because the Disputed Domain Name “contains precisely the mark (delta) protected by Complainant's [trademark] registration, and is very similar in sound, appearance and overall commercial impression. The only difference is that Respondent has added a generic top-level domain name of ‘.tours’ following the mark. This change, however, does not sufficiently distinguish the domain name from Complainant's mark pursuant to Policy ¶4(a)(i) because the mark remains the dominant element of the domain name.”
· Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Complainant has not authorized or licensed Respondent to register or use domain names that incorporate Complainant's DELTA and DELTA AIR LINES marks”; “[t]here is no affirmative evidence to suggest that Respondent is commonly known by any variation of the designation ‘DELTA,’ or commonly known as <delta.tours>, or any other evidence of record suggesting that Respondent is commonly known by the <delta.tours> domain name”; “[a]lthough the domain name is currently parked, Respondent likely intends to improperly capitalize on the goodwill of Complainant's marks” and that “[s]uch use of a confusingly similar domain name and trademark is an effort to attract Complainant's own customers and cause confusion, and is not use in connection with a bona fide offering of goods or services pursuant to Policy 4(c)(i), and is not a legitimate, noncommercial or fair use of the domain name pursuant to Policy 4(c)(iii)”; and previous panels under the UDRP have “repeatedly found that respondents who have registered domain names similar to the Delta marks have no rights or legitimate interests in respect of the domain name under Policy 4(a)(ii).”
· Respondent has registered and is using the Disputed Domain Name in bad faith because, inter alia, “Complainant is informed and believes, and on that basis alleges, that Respondent intentionally procured a domain name containing Complainant's DELTA and DELTA AIR LINES marks and did so for Respondent's illicit commercial gain”; “Complainant's attempt to transfer the <delta.tours> domain name without invoking the arbitration system was unsuccessful-an indication of bad faith by Respondent”; “Complainant's DELTA and DELTA AIR LINES marks are famous and internationally known among the general public” and, therefore, “Respondent's intentional registration of a confusingly similar domain name suggests an opportunistic attempt to trade in bad faith upon Complainant's fame and goodwill”; “Respondent registered the <delta.tours> domain name with actual or constructive knowledge of Complainant's rights”; Respondent “likely intends to sell the domain name or use the infringing domain name to divert Internet users to Respondent's website for unrelated services or where Respondent will likely garner click-through fees for each Internet user misdirected to Respondent's website”; and previous panels under the UDRP have “repeatedly found that, in circumstances similar to those here, respondents who have registered domain names that are similar to Delta's marks have intended to use the domain name in bad faith under Policy ¶4(a)(iii).”
B. Respondent
Respondent states that he is “the founder and majority owner of the travel website, Jauntaroo (www.jauntaroo.com),” which “was launched in 2011 and profiles travel destinations around the world.”
Respondent argues the following:
· The Disputed Domain Name is not identical or confusingly similar to the DELTA Trademark because the Disputed Domain Name “in no way references Delta Airlines, Delta Vacations or any of Delta’s subsidiaries”; “[a] simple online search yields numerous companies/entities around the world that utilize the Delta name; including companies that specifically use ‘Delta Tours’ as their incorporated names”; and “[a]t no point during th[e] sunrise phase [for the .tour gTLD] did [Complainant] ever attempt to register the .tour domain name.”
· Respondent has rights or legitimate interests in respect of the Disputed Domain Name because:
The original intent in acquiring the delta.tours domain was to create a landing page for Delta, UT [Utah, USA] and drive traffic to the website where customers can find information on this destination. In fact, when I acquired the delta.tours domain on July 7, 2015, it was purchase[d] along with 4 other .tours domains…. The other .tours domain names were Utah.tours, Idaho,tours, Yellowstone.tours and lgbt.tours. These domains, in addition to delta.tours, are all legitimate domains to help drive interest and web traffic to Jauntaroo’s website featuring travel destinations. We are in the process of building out a landing page for Delta, UT….
I have not made any final decision regarding the long-term use of the delta.tours domain, but for now it will be used in connection with Jauntaroo’s travel website.
In support of the foregoing, Respondent provided a receipt from GoDaddy dated July 8, 2015, showing registration of the following domain names all on the same date: <delta.tours>, <lgbt.tours>, <utah.tours>, <yellowstone.tours> and <idaho.tours>.
· Respondent has not registered and is not using the Disputed Domain Name in bad faith because:
At no point to date have I used the delta.tours domain to infringe upon or harm Delta Airlines or Delta Vacations in any manner, nor do I intend to do so. The only use of delta.tours currently is to redirect to my travel site, Jauntaroo, regarding travel and tours to destinations around the world. The same holds true for the other .tours domains that I registered in the same order as when I purchased delta.tours.
The Panel finds that the Disputed Domain Name is identical to a trademark in which Complainant has rights; and that Respondent is not using the Disputed Domain Name in bad faith. Accordingly, for the reasons set forth below, the Panel makes no findings with respect to whether the Respondent has rights or legitimate interests in respect of the Disputed Domain.
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.
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the DELTA Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the DELTA Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “delta”), as it is well-established that the top-level domain (i.e., “.tours”) may be disregarded for this purpose. See WIPO Overview 2.0, paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”). Although, in some previous decisions under the UDRP, panels have found that the top-level domain is relevant when it forms part of the relevant trademark (see, e.g., Securian Financial Group, Inc. v. me s / enom, NAF Claim No. 1595614, finding the disputed domain name <minnesota.life> confusingly similar to the trademark MINNESOTA LIFE), this panel is aware of no previous decision in which the top-level domain negated a finding of confusing similarity, nor is this panel willing to do so here.
Further, the fact that Complainant failed to register the Disputed Domain Name during the sunrise period for the <.tours> gTLD is irrelevant to paragraph 4(a)(i) of the UDRP.
Given that the second-level portion of the Disputed Domain Name is identical to the DELTA Trademark, it is self-evident that the Disputed Domain Name is identical or confusingly similar to the DELTA Trademark for purposes of the Policy.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
As stated above, given that the Panel in the instant case finds that Complainant has failed to prove the third element of the Policy – that is, paragraph 4(a)(iii) – the Panel makes no findings with respect to the third element of the Policy.
Complainant states that the Disputed Domain Name “is currently parked.” Complainant argues how it believes Respondent “is likely intending to use” the Disputed Domain Name, and what Respondent “will presumably” do with the Disputed Domain Name. (Emphasis added.)
Under some circumstances, such passive holding of a domain name can establish a lack of rights or legitimate interests. As set forth in the landmark case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the following circumstances are evidence of bad faith where a respondent is passively holding a domain name:
(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in [multiple] countries,
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,
(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
Here, Complainant has presented evidence of only the first of these five considerations. And, by showing additional domain names under the <.tours> gTLD that it registered on the same date as the Disputed Domain Name and stating that he intends to use the Disputed Domain Name in connection with his existing travel site, as a landing page for the city of Delta, Utah (a plausible explanation), Respondent has provided evidence that contradicts the second of these considerations.
Therefore, under the circumstances present in the record of this proceeding, the Panel cannot conclude that Respondent registered and is using the Disputed Domain Name in bad faith.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <delta.tours> domain name REMAIN WITH Respondent.
Douglas M. Isenberg, Panelist
Dated: October 19, 2015
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