Aero California S.A. DE C.V. v. Domain Active Pty. Ltd.
Claim Number: FA0612000874576
Complainant is Aero California S.A. DE C.V. (“Complainant”), represented by Marc
A. Paul, of Steptoe & Johnson LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <aero-california.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On January 5, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 25, 2007 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@aero-california.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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:
Complainant is a commercial and cargo airline based in
Complainant has been providing air transportation services
for passengers, mail, and property since 1982 under the AERO CALIFORNIA mark,
and has provided service into the
Complainant’s main website is located at the <aerocalifornia.com> domain name.
Complainant has registered the AERO CALIFORNIA trademark
with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,328,013,
issued
Respondent’s <aero-california.com> domain name,
which it registered on
Respondent’s <aero-california.com> domain name is confusingly similar to Complainant’s AERO CALIFORNIA mark.
Respondent does not have any rights to or legitimate interests in the domain name <aero-california.com>.
Respondent registered and uses the <aero-california.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical and confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has registered the AERO CALIFORNIA mark in the
More to the immediate point, the <aero-california.com>
domain name is confusingly similar to Complainant’s AERO CALIFORNIA mark, for
the only difference between the mark and the domain name is a hyphen. Such a minor alteration is insufficient to
avoid a finding of confusing similarity under Policy ¶ 4(a)(i). See Health Devices Corp. v.
Complainant has therefore sufficiently established this element of the Policy.
Complainant asserts that Respondent lacks rights and
legitimate interests in the <aero-california.com>
domain name. Complainant has the initial
burden of proof in establishing that Respondent has no rights or legitimate
interests in its domain name. Once
Complainant makes out a prima facie case in support of its allegations,
the burden shifts to Respondent to show that it does have rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii). See
Hanna-Barbera
Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a
complainant must first make a prima facie case that a respondent lacks
rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show
that it does have rights or legitimate interests in a domain name); see also AOL LLC v.
Gerberg, FA 780200 (Nat. Arb. Forum
Complainant
must first make a prima facie showing that Respondent does not have rights or
legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights to or legitimate interests in the domain name at issue. See Geocities v. Geocities.com, D2000-0326
(WIPO June 19, 2000) (finding that a respondent has no rights or legitimate
interests in a domain name because that respondent never submitted a response
or provided the panel with evidence to suggest otherwise); see also Bank
of Am. Corp. v. McCall, FA 135012
(Nat. Arb. Forum
Respondent's failure to respond not only
results in its failure to meet its burden, but also will be viewed as evidence
itself that Respondent lacks rights and legitimate interests in the disputed
domain name.
However, the Panel will nonetheless
examine the record to determine if there is any basis for concluding that Respondent
has rights or legitimate interests under Policy ¶ 4(c).
We first observe in this connection that Respondent has
registered the domain name <aero-california.com> under the name of “Domain Active Pty. Ltd.,”
and there is no other evidence in the record suggesting that Respondent is
commonly known by the disputed domain
name. Consequently, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii).
See Gallup, Inc.
v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Moreover, Respondent’s <aero-california.com>
domain name, which is confusingly similar to Complainant’s AERO CALIFORNIA mark,
resolves to a commercial-oriented website featuring links to various travel
websites, some of which compete with Complainant’s airline. In Expedia, Inc. v.
Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005), a respondent
also used a domain name confusingly similar to a complainant’s mark to maintain
a website featuring links to travel services that competed with the business of
that complainant. The panel in that case
concluded that such use was not a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant has thus sufficiently established this element of the Policy.
There is no dispute in the record of this proceeding that Respondent is using the confusingly similar <aero-california.com> domain name to redirect Internet users seeking Complainant’s travel services to its own website containing links to Complainant’s competitors. In Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000), a panel found that a respondent’s use of the <identagene.com> domain name, which was confusingly similar to a complainant’s IDENTIGENE mark, to operate a website offering Internet users services similar to those of that Complainant constituted bad faith registration and use of the domain because it was likely to cause consumer confusion as to the source or sponsorship of the services offered. Likewise, Respondent is taking advantage of consumer confusion as to the source, affiliation, sponsorship or endorsement of the disputed domain name and profiting from the goodwill associated with the AERO CALIFORNIA mark. Respondent’s registration and use of the <aero-california.com> domain name thus constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name there in question was obviously connected with a complainant’s well-known marks, thus creating a likelihood of confusion for a respondent’s commercial gain).
In addition, it appears that Respondent registered the <aero-california.com>
domain name with at least constructive knowledge
of Complainant’s rights in the AERO
CALIFORNIA trademark by virtue of
Complainant’s prior registration of that mark with the United States Patent and
Trademark Office. Registration of a
confusingly similar domain name despite such constructive knowledge is, without
more, evidence of bad faith registration and use of the domain name pursuant to
Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum
For these reasons, Complainant has sufficiently established this element of the Policy.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <aero-california.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 14, 2007
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