Transportes Aereos Portugueses, S.A. v.
Domain Deluxe
Claim Number: FA0504000454449
Complainant is Transportes Aereos Portugueses, S.A. (“Complainant”),
represented by William G. Pecau, of Steptoe and Johnson LLP,
1330 Connecticut Ave., N.W., Washington, DC 20036. Respondent is Domain Deluxe (“Respondent”), 16/F
Cheung Kong Center, 2 Queens Road Central, Hong Kong, HK.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <tapportugal.com>, registered with The
Registry At Info Avenue d/b/a IA Registry.
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 Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
11, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 13, 2005.
On
April 14, 2005, The Registry At Info Avenue d/b/a IA Registry confirmed by
e-mail to the National Arbitration Forum that the domain name <tapportugal.com>
is registered with The Registry At Info Avenue d/b/a IA Registry and that
Respondent is the current registrant of the name. The Registry At Info Avenue
d/b/a IA Registry has verified that Respondent is bound by the The Registry At
Info Avenue d/b/a IA Registry 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
April 14, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 4, 2005
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@tapportugal.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
May 10, 2005, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed the Honorable
Charles K. McCotter, Jr. (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.” 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 <tapportugal.com>
domain name is confusingly similar to Complainant’s TAP mark.
2. Respondent does not have any rights or
legitimate interests in the <tapportugal.com> domain name.
3. Respondent registered and used the <tapportugal.com>
domain name in bad faith.
B.
Respondent failed to submit a response in this proceeding.
Complainant is
an international airline that has been the national carrier of Portugal for 58
years. Complainant has continuously and extensively used the TAP mark in
connection with its airline services in the United States since at least as
early as 1979. Complainant holds several trademark registrations on the
Principal Register of the United States Patent and Trademark Office that
incorporate the TAP mark, including Reg. No. 2,176,375 (issued July 28, 1998).
Complainant also operates a website at the <tap.pt> domain name.
Complainant owns more than 100 domain names that incorporate the TAP mark, more
than 25 of which also contain the word “Portugal.”
Respondent
registered the <tapportugal.com> domain name on January 11, 2002.
The domain name resolves to a website that offers services and links to
services that are directly related to Complainant’s services. The services
offered on the website include the sale of airline tickets, travel packages,
and information on travel destinations served by Complainant. Respondent is not
licensed or authorized to use any of Complainant’s marks.
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.
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 has
established that it has rights in the TAP mark through registration with the
United States Patent and Trademark Office and through continuous use of the
mark in commerce for 58 years. See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive and have acquired
secondary meaning.”); see also Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding
that panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive and
that a respondent has the burden of refuting this assumption).
The <tapportugal.com>
domain name is confusingly similar to Complainant’s TAP registered trademark.
The domain name fully incorporates the mark while simply adding the geographic
term “Portugal,” which is the country where Complainant is based, and the
“.com” generic top-level domain (“gTLD”). Adding a geographic term and a gTLD
does not distinguish the domain name from Complainant’s mark. Thus, the Panel
finds that the domain name is confusingly similar to Complainant’s mark under
Policy ¶ 4(a)(i). See Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar); see also VeriSign, Inc.
v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity
between the complainant’s VERISIGN mark and the <verisignindia.com> and
<verisignindia.net> domain names where the respondent added the word
“India” to the complainant’s mark); see also Wal-Mart Stores, Inc. v. Walmarket Canada,
D2000-0150 (WIPO May 2, 2000) (finding that the <walmartcanada.com>
domain name was confusingly similar to the complainant’s famous mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to submit a response in this proceeding. In the absence of a response,
the Panel accepts as true all reasonable allegations contained in the Complaint
unless clearly contradicted by the evidence. Complainant alleges that
Respondent lacks rights and legitimate interests in the <tapportugal.com>
domain name. Neither Respondent nor the evidence contradicts this allegation.
Furthermore, because Respondent has failed to submit a response, Respondent has
failed to propose any set of circumstances that could substantiate its rights
or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond
allows all reasonable inferences of fact in the allegations of a complaint to
be deemed true); see also Desotec
N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that
failing to respond allows a presumption that a complainant’s allegations are
true unless clearly contradicted by the evidence); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
respondent failed to invoke any circumstance which could demonstrate any rights
or legitimate interests in the domain name).
Respondent is
not using the <tapportugal.com> domain name in connection with a
bona fide offering of goods or services under Policy ¶ 4(c)(i) or making a
legitimate noncommercial or fair use of the domain name under Policy ¶
4(c)(iii) because the domain name is confusingly similar to Complainant’s mark
and redirects unsuspecting Internet users to a website that provides links to
services that compete with Complainant. The Panel infers that Respondent receives
pay-per-click fees when Internet users follow the links on its website.
Respondent makes opportunistic use of Complainant’s mark in order to capitalize
on the goodwill associated with the TAP moniker. See Yahoo! Inc. v. Web
Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the
respondent’s use of a confusingly similar domain name to operate a
pay-per-click search engine, in competition with the complainant, was not a
bona fide offering of goods or services); see also Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that the
respondent’s appropriation of the complainant’s mark to market products that
compete with the complainant’s goods did not constitute a bona fide offering of
goods and services); see also Winmark Corp. v. In The Zone, FA 128652
(Nat. Arb. Forum Dec. 6, 2002) (finding that the respondent had no rights or
legitimate interests in a domain name that used the complainant’s mark to
redirect Internet users to a competitor’s website).
No evidence
before the Panel suggests that Respondent is commonly known by the <tapportugal.com>
domain name. The domain name’s WHOIS information indicates that the
registrant of the disputed domain name is known as “Domain Deluxe” and is not
known by the confusingly similar second-level domain that infringes on
Complainant’s TAP mark. Moreover, Respondent is not licensed to use
Complainant’s mark. Thus, Respondent lacks rights and legitimate interests in
the domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v.
Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in the
respondent’s WHOIS information implies that the respondent is ‘commonly known
by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses
a confusingly similar variation of Complainant’s TAP mark in the <tapportugal.com>
domain name to ensnare unsuspecting Internet users. Respondent then
redirects the users to a website that links to various airline and other travel
services. The Panel infers that Respondent receives pay-per-click fees when
Internet users follow the links on its website. Thus, Respondent is profiting
from the unauthorized use of Complainant’s registered mark in the domain name.
Such infringement is evidence of bad faith registration and use under
Policy ¶ 4(b)(iv). See Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where the respondent directed Internet users seeking the
complainant’s site to its own website for commercial gain); see also Kmart
v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a
respondent profits from its diversionary use of the complainant’s mark when the
domain name resolves to commercial websites and the respondent fails to contest
the complaint, it may be concluded that the respondent is using the domain name
in bad faith pursuant to Policy ¶ 4(b)(iv)).
The disputed
domain name, which is confusingly similar to Complainant’s registered mark,
resolves to a website that provides links to websites that offer services that
compete with Complainant. Respondent’s use of the <tapportugal.com>
domain name establishes that Respondent registered and used the domain name for
the purpose of disrupting the business of a competitor, which evidences bad
faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competed with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that
the respondent diverted business from the complainant to a competitor’s website
in violation of Policy ¶ 4(b)(iii)).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of the domain name, additional factors
can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel must look at the
“totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”).
Respondent’s
registration of the disputed domain name, which incorporates Complainant’s mark
and a geographic term associated with Complainant’s business, suggests that
Respondent knew of Complainant’s rights in the TAP mark. Additionally,
Complainant’s trademark registrations on the Principal Register of the United
States Patent and Trademark Office gave Respondent constructive notice of
Complainant’s mark. Moreover, the fact that Respondent’s website promotes
services that compete with Complainant’s services evidences Respondent’s
knowledge of Complainant’s rights in the mark. Thus, the Panel finds that Respondent
chose the <tapportugal.com> domain name based on the distinctive
and well-known qualities of Complainant’s mark, which evidences bad faith
registration and use under Policy ¶ 4(a)(iii). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding bad faith registration and use where it was “inconceivable that
Respondent could make any active use of the disputed domain names without
creating a false impression of association with Complainant”); see also Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a
legal presumption of bad faith, when the respondent reasonably should have been
aware of the complainant’s trademarks, actually or constructively.”); see
also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”); see also Pfizer,
Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the
link between the complainant’s mark and the content advertised on the
respondent’s website was obvious, the respondent “must have known about
Complainant’s mark when it registered the subject domain name”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <tapportugal.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: May 19, 2005
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