Cathay Pacific Airways Limited v. Irfan Yaksi
c/o DEVCON International, LLC
Claim Number: FA0604000679549
PARTIES
Complainant is Cathay Pacific Airways Limited (“Complainant”), represented by Brent E. Routman, of Merchant & Gould,
P.C., 80 South 8th Street, Suite 3200 IDS Center, Minneapolis, MN 55402. Respondent is Irfan Yaksi c/o DEVCON International, LLC (“Respondent”),
400 Hudson St., Hackensack, NJ 07601.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cathaypacific.us>,
registered with Tucows Inc.
PANEL
The undersigned certify that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
Hon. Richard M. Markus, Hon. Richard DiSalle and Dennis A. Foster as
Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on April 14, 2006; the Forum received a hard copy
of the Complaint on April 17, 2006.
On April 17, 2006, Tucows Inc. confirmed by e-mail to the Forum that
the domain name <cathaypacific.us>
is registered with Tucows Inc. and that the Respondent is the current
registrant of the name. Tucows Inc. has
verified that Respondent is bound by the Tucows Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution
Policy (the “Policy”).
On April 19, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of May 9, 2006 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD
Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On May 18, 2006, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the Forum
appointed Hon. Richard M. Markus, Hon. Richard DiSalle and Dennis A. Foster
as Panelists.
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. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any
rules and principles of law that the Panel deems applicable, without the
benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <cathaypacific.us> domain name is identical to Complainant’s CATHAY PACIFIC mark.
2. Respondent does not have any rights or legitimate interests in the <cathaypacific.us> domain name.
3. Respondent registered and used the <cathaypacific.us> domain name in bad faith.
4. Complainant is the owner of a total of thirty-five (35) trademark or service mark registrations for the mark CATHAY PACIFIC in twenty-six (26) countries, including the United States. Complainant also owns an additional one hundred and seventeen (117) trademark registrations for marks incorporating the name CATHAY PACIFIC in twenty-five (25) countries, including in the United States. Exhibit A.
5. Complainant is also the owner of the registered domain name <cathaypacific.com>, registered on September 15, 1995. The website <cathaypacific.com> has been in active use since early 1996. Exhibit C.
6. Complainant, Cathay Pacific Airways Limited, was founded on September 24, 1946, and is an international airline based in Hong Kong. Complainant offers scheduled passenger and cargo services to 92 destinations around the world.
7. Complainant has spent considerable sums in advertising and promoting its goods and services under the CATHAY PACIFIC mark over the many years in which the mark has been used.
8. Respondent registered the disputed domain name, <cathaypacific.us>, on August 19, 2004. Exhibit E.
9. There is no indication that Respondent is commonly known by the name CATHAYPACIFIC.
10. Respondent never applied for a license or permission from Complainant to use its trademarked name.
11. When a computer user accesses Respondent’s domain name, the user is initially directed to a page advertising the services and goods of competitors of Complainant. Complainant believes that it is reasonable to conclude that Respondent receives revenues, click fees, and/or commercial gain by creating a likelihood of confusion between the disputed domain name and Complainant’s mark through the operation of Respondent’s website located at the disputed domain name.
12. The mark CATHAY PACIFIC is an invented mark and is not a term commonly used in the daily English language. Clearly, it does not seem plausible that Respondent did not know of Complainant’s existence due to the fame of the Complainant’s mark and the fanciful nature of the mark.
13. Respondent uses the disputed domain name to intentionally attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.
14. Circumstances indicate that Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name. Exhibit F.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
--Complainant, Cathay Pacific Airways
Limited, is a major airline based in Hong Kong. Complainant flies to destinations all over the world, and is
well-known all over the world.
--The disputed domain name, <cathaypacific.us>,
contains Complainant’s well-known trademark, CATHAY PACIFIC.
--Respondent uses the disputed domain name to
connect the Internet navigator to other web sites that sell air transportation
services that compete with Complainant.
DISCUSSION
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 the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and
draw such inferences as it considers appropriate pursuant to Paragraph 14(b) of
the Rules.
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:
(1) the domain name registered by the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights; and
(2) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Complainant has exhibited a number of its CATHAY PACIFIC United States trademark registrations, including Principal Register No. 1,371,775 dated November 19, 1985 in international class 39 for “transportation services.” Exhibit B. Also at Exhibit B, Complainant has provided a fair sampling of its other United States CATHAY PACIFIC trademark registrations. Further on, at Exhibit D, Complainant has provided examples of how it uses the CATHAY PACIFIC trademark to conduct its airline business. The Panel finds that Complainant has established that it has trademark rights in the name CATHAY PACIFIC.
The disputed
domain name, <cathaypacific.us>, is identical to Complainant’s
CATHAY PACIFIC trademark. Therefore,
the Panel finds that Complainant has met its burden of proof under paragraph
4(a)(i) of the Policy to show that the disputed domain name is identical or
confusingly similar to a trademark or service mark in which Complainant has
rights.
Complainant alleges that Respondent is not authorized to use the disputed domain name and is not commonly known by the CATHAY PACIFIC name. In the absence of any evidence on record to the contrary, the Panel accepts this as true.
At Exhibit G, the Complainant shows how Respondent essentially uses the disputed domain name containing Complainant’s CATHAY PACIFIC trademark, <cathaypacific.us>, to connect to other websites that offer air transport and related services. As Complainant argues, the Panel finds this was not a bona fide offering of goods and services before this dispute arose, as would be allowed to Respondent under paragraph 4(c)(i) of the Policy. See Royal Bank of Scotland Group plc v. PARRY, FA 615243 (Nat. Arb. Forum, February 10, 2006).
The Panel finds it obvious that Respondent is not attempting to make a noncommercial or fair use of the disputed domain name—paragraph 4(c)(iii) of the Policy—because all evidence points to Respondent deriving income from its practice of connecting the disputed domain name to other commercial web sites.
Complainant makes a number of arguments that purport to show that Respondent registered and is using the disputed domain name in bad faith. Notably, Complainant contends that Respondent attempted to sell the disputed domain name back to Complainant for far more than Respondent paid for it, in violation of the bad faith provision at paragraph 4(b)(i) of the Policy.
Complainant bases this on the fact that Respondent asked Complainant to make an offer once Complainant sent a cease and desist cum demand for transfer notification to Respondent in March 2006. Complaint Exhibit F. The Panel does not find Complainant’s argument convincing: it is not at all apparent that Respondent registered the disputed domain name on August 19, 2004 with the idea of selling it back to Complainant or a competitor for much more than he paid for it. If this were the case, Respondent surely would have approached Complainant before a year and a half had elapsed, and even then, only in response to a communication from Complainant.
On the other hand, the Panel finds Complainant’s argument under paragraph 4(b)(iv) of the Policy to be most persuasive. Respondent is using the disputed domain name, <cathaypacific.us>, to connect the Internet navigator (“attract for commercial gain”) to other web sites that offer services comparable to Complainant’s. It is only reasonable to infer that Respondent is doing this in exchange for fees from third party competitors of Complainant. See San Mar Corporation v. Gary Roth FA 651022 (Nat. Arb. Forum Apr. 6, 2006); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003).
The Panel finds that Complainant has met its burden of proof under paragraph 4(a)(iii) of the Policy to show that Respondent registered and is using the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cathaypacific.us> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Richard M. Markus (Ret.), Hon. Richard DiSalle (Ret.), Dennis A. Foster, Panelists
Dated: June 1, 2006
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