Town of Islip, a municipal corporation organized under the laws of the State of New York v. Black sheep Television Ltd.
Claim Number: FA1008001339861
PARTIES
Complainant is Town of Islip, a municipal corporation organized under the laws of the State of New York (“Complainant”), represented by Peter J. Pizzi, of Connell Foley LLP, New York, USA. Respondent is Black sheep Television Ltd. (“Respondent”), represented by Howard E. Greenberg, of Law Offices of Howard E. Greenberg Esq., P.C., New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <macarthurairport.com>, <islipairport.com>, <islipmacarthurairport.com>, <islipairportonline.com>, <islipairportonline.net>, <macarthurairportonline.com>, <macarthurairportonline.net>, <ispairportonline.com>, and <ispairportonline.net>, registered with Network Solutions, LLC.
PANEL
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.
Petter Rindforth as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 9, 2010.
On August 10, 2010, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <macarthurairport.com>, <islipairport.com>, <islipmacarthurairport.com>, <islipairportonline.com>, <islipairportonline.net>, <macarthurairportonline.com>, <macarthurairportonline.net>, <ispairportonline.com>, and <ispairportonline.net> domain names are registered with Network Solutions, LLC and that the Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 August 11, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 2010 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@macarthurairport.com, postmaster@islipairport.com, postmaster@islipmacarthurairport.com, postmaster@islipairportonline.com, postmaster@islipairportonline.net, postmaster@macarthurairportonline.com, postmaster@macarthurairportonline.net, postmaster@ispairportonline.com, and postmaster@ispairportonline.net. Also on August 11, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 on September 13, 2010. However, the exhibits arrived one day late, therefore the Forum does not consider this Response to be in compliance with ICANN Rule 5(a).
A timely Additional Submission was received and determined to be complete on September 20, 2010.
On September 23, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Petter Rindforth as Panelist.
On September 20, 2010, the Complainant filed an Additional Submission, followed by an Additional Submission from the Respondent on September 27, 2010.
The Respondent filed three CDs as Respondent’s Additional Submission, and asked the Panel to accept. The Panel referred to the fact that the UDRP does not provide for the submission of materials in this type of format. The Panel further referred to the National Arbitration Forum’s Supplemental Rules, Annex A, having guidelines regarding the acceptable file types. Accordingly, on September 28, 2010, the Panel denied acceptance of the Respondents CDs as Respondent’s Additional Submission.
On September 30, 2010, due to exceptional circumstances, the time period within which the Panel should be required to render its Decision was extended until October 12, 2010.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant argues that it has common law and/or statutory rights to the word marks MACARTHUR AIRPORT, LONG ISLAND MACARTHUR AIRPORT, ISLIP AIRPORT, ISLIP MACARTHUR AIRPORT, and ISP.
According to the Complainant, the airport has been in existence since the 1940s and accommodates over 1.8 million passengers each year, with the capacity and infrastructure to serve approximately four million passengers annually.
In the 1940s, the airport was named MACARTHUR AIRPORT in honor of the famous General Douglas MacArthur, and was also known as ISLIP AIRPORT; in the 1960s, the airport was renamed ISLIP MACARTHUR AIRPORT; and in 1978, the airport adopted its current name, LONG ISLAND MACARTHUR AIRPORT.
The Complainant states that the airport is known by all the abovementioned designations, with LONG ISLAND MACARTHUR AIRPORT being the most dominant mark. The marks have, according to the Complainant, all become well known through their continuous and exclusive use throughout the United States in connection with the airport since no later than 1978, their familiarity to the public, air travelers and the airline industry in general, and efforts of Complainant to promote the airport as a much more convenient option than other New York City area alternatives. By associating MACARTHUR with the airport in various forms for more than half a century, the Town of Islip has built goodwill in the mark MACARTHUR in association with national airport services. In general, the mark MACARTHUR identifies services offered by Complainant and distinguishes those services from aviation-related services offered by others.
The Complainant further states that the ISLIP AIRPORT word mark has become well known through its continuous and exclusive use in connection with Complainant’s airport since the 1940s throughout the United States. Data available from Google shows that the term “Islip Airport” is searched approximately 27,100 times each month. Passengers are reminded of the Islip Airport name by the “ISP” three-letter code designated by the International Air Transport Association to identify the airport (the “Airport Code”), which uses three letters of the word ISLIP. The term “ISP Airport” is searched approximately 4,400 times each month (based on Google).
The ISLIP MACARTHUR AIRPORT word mark has become well known through its continuous and exclusive use in connection with Complainant since the airport was officially named “Islip MacArthur Airport” in the 1960s. Data available from Google shows that the term “Islip MacArthur Airport” is searched approximately 8,100 times each month.
The MACARTHUR AIRPORT and LONG ISLAND MACARTHUR AIRPORT word marks have become well known through their continuous and exclusive use in connection with Complainant’s airport since at least 1978 throughout the United States. The airport currently provides service to cities across the United States. Data available from Google shows that the term “MacArthur Airport” is searched approximately 49,500 times each month, and the term “Long Island MacArthur Airport” is searched approximately 14,800 times each month.
The Complainant is the owner of the following U.S. trademark registrations:
No. 3,602,444 LONG ISLAND MACARTHUR AIRPORT & Device filed October 6, 2008 and registered April 7, 2009 in respect of “airport services” in Class 39. First use in commerce: 2000.
No. 3,597,990 LONG ISLAND MACARTHUR AIRPORT (word mark), filed August 18, 2008 and registered March 31, 2009 in respect of “airport services” in Class 39. First use in commerce: 1978.
(Annex 3 of the Complaint with copies of the Certificates of Registration)
The Complainant claims that the disputed domain names are identical or confusingly similar to Complainant’s trademarks.
The Complainant refers to previous UDRP cases as well as U.S. case law and states that the fact that Complainant has trademark registrations that post-date certain of the disputed domain name registrations does not matter as long as Complainant is able to show that it possesses common law rights in its marks. The Complainant claims that the MACARTHUR AIRPORT mark has gained secondary meaning, giving Complainant common law rights in the mark. The Complainant claims to have invested over $60 million into the expansion and renovation of the airport since the 1940s. The Complainant has spent over $500,000 in 2009, and is budgeted to spend $300,000 in 2010 in connection with the promotion of the airport. Currently, over 1.8 million passengers use the airport each year, with an average of over 3,000 commercial and general aviation flights each week serving cities throughout the United States.
Over the years, there have also been numerous examples of unsolicited media coverage of the airport and events occurring in and around the airport (copies of news articles using the trademark MACARTHUR AIRPORT to refer to the airport provided as Annex 9).
According to the Complainant, the Respondent registered <islipmacarthurairport.com>, <macarthurairportonline.com> and <macarthurairportonline.net> soon after having received a cease and desist letter from the Complainant (Annex 10 of the Complaint) regarding the use of <macarthurairport.com> and <islipairport.com>. On <macarthurairport.com>, the site to which each of the disputed domain names automatically forward, the Respondent repeatedly plagiarizes Complainant’s registered LONG ISLAND MACARTHUR AIRPORT and AIRPORT WINGS DESIGN MARK (Annex 11 of the Complaint).
Referring to prior cases like Brisbane City v. Warren Bolton Consulting Pty Limited, D2001-0047 (WIPO May 7, 2001), Port of Helsinki v. Paragon International Projects Ltd., D2001-0002 (WIPO Feb. 12, 2001) and City of Hamina v. Paragon International Projects Ltd., D2001-0001 (WIPO Mar. 12, 2001), the Complainant states that it has common law rights in the marks ISLIP AIRPORT, ISLIP MACARTHUR AIRPORT, and ISP. Despite the geographically descriptive nature of the marks, the marks are distinctive in that each mark clearly designates a facility – MacArthur Airport – as opposed to describing a general geographic location, and there is only one commercial airport in Long Island owned by the Town of Islip. The Complainant also refers to the fact that the airport is still referred to as ISLIP AIRPORT (the previous name of the airport) in numerous news articles (samples provided as Annex 12). Further, ISP has been the unique Airport Code for the airport for over six decades. Accordingly, the Complainant states that <islipairport.com>, <islipmacarthurairport.com>, <islipairportonline.com>, <islipairportonline.net>, <macarthurairportonline.com>, <macarthurairportonline.net>, <ispairportonline.com>, and <ispairportonline.net> are likely to cause consumer confusion.
The Complainant concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names as the Complainant has common law and/or statutory rights to the airport marks dating back to the 1940s and because the Respondent is not using the domain names in connection with a bona fide offering of goods or services. The Respondent is not actively using any of the domain names except <macarthurairport.com>; each of the other disputed domain names when entered into an Internet browser merely automatically forward to the <macarthurairport.com> site.
According to the Complainant, the Respondent has never been known by anything other than “Black Sheep Television Ltd.” In addition, the Respondent neither has priority rights in the name nor is it affiliated with the Complainant or otherwise authorized to use Complainant’s airport marks.
Finally, the Complainant states that the domain names were registered and are being used in bad faith, referring to the widespread recognition of and goodwill associated with the airport marks going back to the 1940s.
Due to the widespread recognition of the airport marks, the Complainant states that the fact that registration of the domain names predates registration of the marks in question does not enable Respondent to avoid a finding of bad faith. Rather, Respondent clearly registered the domain names hoping to earn a significant profit by selling them either to Complainant or another person intending use the names to commercial advantage.
Respondent has approached the Complainant over the years on more than one occasion regarding the sale of the site requesting as much as $250,000 (Annex 8, Declaration from the Complainant).
The fact that the Complainant sent out a cease and desist letter some years after learning of the Respondent’s ownership of <macarthurairport.com> is due to factors unique to a government entity, including a lack of resources to pursue available avenues of relief. However, the doctrine of laches does not apply in domain name dispute proceedings.
The misleading nature of the Respondents site has already led to many instances of actual confusion.
B. Respondent
The Respondent informs that, upon searching the Internet and discovering that there was no registered domain names for Macarthur Airport, Respondent registered <macarthurairport.com>, <nymacarthurairport.com>, <islipairport.com>, and <islipmacarthurairport.com>.
The Respondent has operated a Macarthur Airport website for over nine years, and claims to have operated <macarthurairport.com> and affiliated domain names in a bona fide and good faith manner, stating the website provides a legitimate and beneficial service to consumers and airline travelers from all over the country.
According to the Respondent, it does not generate revenue in the form of advertisements from the website, as the Respondent covers its operational costs and maintains the integrity of the website by only accepting advertisements from legitimate service providers who operate businesses that are relevant to travelers such as hotels and car services. The Respondent and its agents have even paid to have flight tracking information available on the website and Respondent claims to have operated <macarthurairport.com> and affiliated domain names in a bona fide and good faith manner.
The Respondent and its agents began to see a need for cooperation with the Town of Islip, the owners of Macarthur Airport, in the wake of the World Trade Center attacks and reached out to the facilitate a relationship which would be beneficial to all parties involved. The Respondent did not offer to sell the website to the Complainant.
In 2007, the Respondent and its agents were contacted by the Complainant and its agents about their website and a meeting was held between all parties on November 8, 2007 and December 19, 2007 (Annex 3 and 4 of the Response). At those meetings, representatives of the Complainant sought to develop a cooperative relationship
with the Respondent and discussions lead the Respondent to believe that a favorable agreement was going to be reached and it was in the best interests of both parties and the website to work in a cooperative fashion to provide the best product to the public.
During these discussions, a representative from the Complainant discussed a potential legal partnership in detail (Annexes 1, 3 and 4 of the Response). The Respondent worked to tailor its website to the request of its believed legal partners, the Town of Islip. Thereafter, the Respondent received a “cease and desist” letter from the Complainant, seemingly reneging on all that had been previously discussed and agreed. Subsequently, the herein action was brought by the Complainant to divest the Respondent of the domain name, <macarthurairport.com>.
The Respondent states that the domain names are not identical or confusingly similar to trademarks or service marks in which the Complainant has rights. The Complainant was aware that the Respondent had owned and operated the Macarthur Airport website for nearly ten years without protest. Not until the year 2007, when agents of the Complainant contacted the Respondent to allegedly consider a cooperative agreement, had the Complainant sought to even establish an Internet presence.
In the present dispute, the disputed domain names predate the trademark application by over 8 years, and the disputed domain name <macarthurairport.com> has served an invaluable function to travelers for a period of nearly ten years.
There is nothing on the website to indicate that it is the official page of Long Island Macarthur Airport nor does it explicitly claim to be maintained by the Town of Islip. The Complainant has drawn an inference based upon the assumption that travelers who visit the website are mislead or misinformed by the information provided by the Respondent, who takes no affirmative steps to represent itself as the owner of Macarthur Airport or to be the “official” website.
As a governmental entity, the Complainant has the right and ability to register and operate a “.gov” domain. The Complainant alleges that the <macarthurairport.com> domain name is the most obvious and “intuitive” Internet address for consumers to use when looking for the Complainant’s site. The Complainant would be more correct to assert that their trademark registration of LONG ISLAND MACARTHUR AIRPORT and status as a governmental entity would benefit from a <macarthurairport.gov> domain name.
A website that is meant to be an informational website about Macarthur Airport would reference the airport itself. The Complainant does not have the right to bar anyone from providing information about its airport. The Respondent is making fair use of the name of the airport because there is no other term which would correctly identify the airport, the website poses information regarding the airport because it is designed to function as such, and the website takes no affirmative steps to suggest any sponsorship or endorsement with the Town of Islip. On the contrary, the website contains a disclaimer in its advertising section that it is not affiliated with any government agency.
The Respondent claims to have offered a bona fide service since the year 2000 in operating an informational website about Macarthur Airport giving updated flight information, links to various travel services and Homeland Security and Transportation Authority information (Annexes 1 and 2 of the Response). The Respondent only allows those airport related services to advertise that are fully screened and properly insured. Contrary to the Complainant’s claims, the Respondent has links to specific airlines, namely Southwest and U.S. Air, both of which operate out of the airport. The Respondent has links to online travel agencies such as Travelocity and Priceline so that consumers may conveniently book their flights in and out of the airport. The Respondent has only listed and allowed those local businesses to advertise that have a direct correlation to not only airport services, but to Macarthur Airport itself. The Respondent summarize that the website <macarthurairport.com> is merely providing a list of services that the Complainant failed to perform for the last ten years.
The Respondent makes no claim that this is an official website of Macarthur Airport. The website contains a disclaimer that it is not affiliated with any governmental entity. Respondent’s use of the term “our” refers to its website and not the airport.
The Respondent is a media provider who is in the business of providing news and information. The website provides similar information and does not claim to be the official website of Macarthur Airport.
The Respondent states that the disputed domain names were not registered and are not being used in bad faith, herewith referring to the Anticybersquatting Consumer Protection Act (ACPA), stating that bad faith intent to profit “shall not be found in any case in which the court determines that the [registrant] believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.”
The Complainant alleges that the Respondent offered to sell the domain name, which is well-established evidence of bad faith, more specifically, bad faith registration. Such claim runs contrary to the facts of this matter, namely the discussions during the parties meetings on November 8, 2007 and December 19, 2007. The Respondent’s sole intention in purchasing the domain names was to provide a service to travellers and not a bad faith attempt to capitalize on the goodwill and recognition of the Complainant’s marks.
If it were the Respondent’s intention from the start to obtain the domain names simply to re-sell them at a profit, the Respondent would not have operated, updated and improved the website for the previous nine years in a good faith manner for the purposes of offering a bona fide and legitimate service.
The Respondent summarizes that it is clear that the Respondent undertook to operate the <macarthurairport.com> website in good faith and without an intention to mislead consumers or take advantage of the Complainant’s goodwill. The Respondent has fielded numerous questions, in the form of e-mails and phone calls, regarding flight cancellations and day-to-day airport operational issues and directed consumers to the appropriate resource without claiming any airport ownership or affiliation. The website provides a legitimate and beneficial service to consumers and airline travellers from all over the country. The website does not generate revenue in the form of advertisements for the Respondent, only to cover operation costs. The Complainant was aware that the Respondent had owned and operated the Macarthur Airport website for several years without protest, and was actually given the opportunity by the Respondent in 2001 to facilitate a beneficial relationship and/or offering and rebuffed the Respondent and its agents.
C. Additional Submissions
Complainant’s Additional Submission
The Complainant summarize its Complaint and demand of transfer of the disputed domain names because (a) each is identical or confusingly similar to trademarks or service marks in which the Complainant has rights; (b) Respondent has no rights or legitimate interests in respect of the disputed domain names; and (c) the disputed domain names were registered and are being used in bad faith.
The Complainant notes that the Respondent has not commented upon, let alone challenged, Complainant’s nearly 70 year history of operation under the airport marks. Those years of use give Complainant exclusive rights to the marks.
The Respondent never argues that the disputed domain names are not “confusingly similar” or, indeed, identical to the airport marks, nor does Respondent try to differentiate one of the disputed domains from any of the others, so that same outcome – transfer to Complainant – would apply equally to each. Evidence of public confusion is overwhelming. The disputed domains were not registered to allow Respondent to comment upon Complainant or to provide unofficial information about the airport region. Instead, Respondent registered the domains to pretend it was Complainant.
The Respondent approached Town officials seeking to profit from the registrations and was immediately told that this conduct was “illegal.”(Annex 4 of the Response). In 2010, Respondent offered the domain for $250,000.
The Complainant states that Respondent, being in the advertising business, knows how to generate revenue of the Web site through ad sales, and refers the Respondent’s concession that the reason the advertisements on the site are limited to travel-related businesses is to foster the illusion that the site is “official” and thereby drive up traffic to the site by relying upon the airport’s status and reputation.
The Complainant states that the Respondent’s reservation of <macarthurairport.com> was contested already when Complainant learned about it in 2000 (referring to Annex 4 of the Response).
Further, the Complainant argues that there is no bona fide use by the Respondent.
The Complainant argues that upon receiving the Complainant’s 2009 cease and desist letter, Respondent responded by registering certain of the disputed domain names, which constitutes bad faith registration of a domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. Respondent has even engaged in a pattern of conduct to that effect by not only registering numerous domain names in 2009, but also registering Twitter and Facebook accounts using Complainant’s trademarks.
Finally, the Complainant states that the Respondent’s accusation of Reverse Domain Name Hijacking is frivolous and should be rejected.
Respondent’s Additional Submission
The Respondent states that the Complainant’s concealment cannot escape the fact that it cannot meet the standards necessary to require the transfer of the disputed domain names. The Respondent and its agents sought to conduct a good faith meeting with the Complainant and its agents for the purposes of fostering a cooperative relationship after the Complainant and its agents themselves contacted and solicited the Respondent to engage in such a discussion. Complainant then makes the unsubstantiated, conclusory and false allegation that the agents of the Respondent offered the website for sale, when the transcripts prove that the Complainant’s representative solicited the Respondent to sell the website.
The facts remain that the Respondent has operated an informational website about MacArthur or Islip Airport since the year 2000 in good faith. The fact that Respondent possesses the most intuitive name of such airport does not yield a finding that the Respondent is impersonating the airport as the Complainant alleges. The Respondent is free to offer an informational website about any product, service, historical event, government function or entity or any additional item of interest.
The Respondent concedes that its website <macarthurairport.com> is probably the most identifiable name for an airport named Macarthur Airport. But this intuitive and most common name is the only way to refer to the airport because it is the name of the airport.
The Respondent again claims to provide a bona fide service and to have a legitimate interest and rights with respect to the disputed domain names.
The Respondent also points out that the domain names were not registered and are not being used in bad faith, stating that (regarding the <macarthurairport.com>):
our philosophy with this airport website is to operate it, without the town’s intervention, or without the town’s cooperation. We were operating it all along… was basically to operate this website as closely to a real official website, as possible, given the information that we had. I mean, that’s why we are paying for things like the flight tracking, that’s why we have all these things, and why we’ve turned down a lot of potential advertisers, because we don’t want everybody who’s got an umbrella, or a pack of juicy fruit gum, or anything else, to come on there and clutter the thing. We’re limiting the advertisers because the attraction of this website is basically passenger information and if it doesn’t relate to passenger information directly, it doesn’t get on. (Response, Annex 4).
The Respondent denies having intended or attempted to sell the website. In discussions with the Complainant regarding a cooperative relationship, the Respondent suggested a cooperative partnership for a period of ten years wherein the Complainant would pay to Respondent the operating costs in the amount of $25,000 per year.
The Respondent requests the Panel to make a finding of reverse domain name hijacking, pursuant to UDRP Rule 15(e), based on the bad faith conduct of the Complainant.
FINDINGS
As mentioned above under “Procedural History,” Respondent’s Response was timely received on September 13, 2010, but the exhibits arrived one day late. Thus the Forum does not consider this Response to be in compliance with ICANN Rule 5(a).
The Panel, at its discretion, may choose whether to accept and consider this Response.
The Panel notes that the Response as such was timely filed and that the exhibits arrived only one day late. In the interests of fairness and in accordance with ICANN Rule 10(b), the Panel has decided to consider the Response in spite of the lack of timely filed exhibits.
Doctrine of Laches
The Respondent argues that Complainant was aware that Respondent had owned and operated the website resolving from the disputed domain names for nearly ten years without protest, thereby obviously referring to the doctrine of laches (the legal doctrine that an unreasonable delay in seeking a remedy for a legal right or claim will prevent it from being enforced or allowed if the delay has prejudiced the opposing party).
However, the doctrine of laches does not normally apply as a defense in a domain name dispute case, and the Panel therefore decides to disregard Respondent’s assertions. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value).
Reverse Domain Name Hijacking
The Respondent suggests that Complainant is guilty of Reverse Domain Name Hijacking.
Rule ¶ 1 defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Rule ¶ 15(e) further defines the situation as filing the complaint “in bad faith, for example in an attempt to harass the domain-name holder.”
Such a claim is frequently made by respondents, but a finding of Reverse Domain Name Hijacking is rarely granted. To prevail, the Respondent must show that Complainant knew of Respondent’s unassailable right or legitimate interest or of the clear lack of Respondent’s bad faith registration and use but nevertheless brought the Complaint in bad faith. See Rohl, LLC v. ROHL SA, D2006-0645 (WIPO July 12, 2006) (“Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy”).
In this case, the Panel finds that the Complainant has satisfied all of the elements of Policy ¶ 4(a). The Panel therefore finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Complainant’s Trademark Rights and Respondent’s Domain Name Registration
The Panel finds that Complainant has established trademark rights in the following registered trademarks:
No. 3,602,444 LONG ISLAND MACARTHUR AIRPORT & Device filed October 6, 2008 and registered April 7, 2009 in respect of “airport services” in Class 39. First use in commerce: 2000.
No. 3,597,990 LONG ISLAND MACARTHUR AIRPORT (word mark), filed August 18, 2008 and registered March 31, 2009 in respect of “airport services” in Class 39. First use in commerce: 1978.
The Panel finds that Complainant has established common law trademark rights in the following trademarks: MACARTHUR AIRPORT, ISLIP AIRPORT, and ISLIP MACARTHUR AIRPORT.
Respondent registered the domain name <macarthurairport.com> on January 1, 2000; the <islipairport.com> and <islipmacarthurairport.com> domain names on January 7, 2000; the <islipairportonline.com>, <islipairportonline.net>, <macarthurairportonline.com>, <macarthurairportonline.net>, <ispairportonline.com>, and <ispairportonline.net> domain names on June 12, 2009.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 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;
(2) the 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.
The Complainant asserts rights in the LONG ISLAND MACARTHUR AIRPORT mark through its registration of the mark with United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,597,990 issued March 31, 2009). The Panel finds that this trademark registration with the USPTO sufficiently proves Complainant’s rights in the LONG ISLAND MACARTHUR AIRPORT mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
The Panel notes that the Complainant does not provide trademark registrations for the MACARTHUR AIRPORT, ISLIP AIRPORT, or ISLIP MACARTHUR AIRPORT marks with the USPTO. However, the Panel finds that federal trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i). Prior panels have found that a governmental registration is not required so long as the Complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
The Complainant asserts common law rights in the MACARTHUR AIRPORT, ISLIP AIRPORT, and ISLIP MACARTHUR AIRPORT marks. Complainant avers it owns and operates the Long Island MacArthur Airport, which opened in the 1940s and presently services over 1.8 million passengers each year. Complainant states its airport was originally named MACARTHUR AIRPORT and that it was also known as ISLIP AIRPORT in the 1940s. Next, Complainant states the airport’s name changed to ISLIP MACARTHUR AIRPORT in the 1960s. Lastly, Complainant states the airport adopted its current name, the LONG ISLAND MACARTHUR AIRPORT, in 1978.
The Complainant claims the public currently associates its airport with all of these marks. In addition, Complainant argues that it provides services to cities across the United States and its marks have become familiar to the public, air travelers, and the airline industry in general. Complainant cites searches of its mark at <google.com> in support of its claims that its marks are well-known among the public. Complainant alleges Internet users have used the Google search engine to search for “MacArthur Airport” on average approximately 49,500 times per month, for “Islip Airport” approximately 27,100 times per month, and for “Islip MacArthur Airport” approximately 8,100 times per month in the last twelve months. Moreover, Complainant states it has invested substantially in marketing and advertising its marks. Complainant claims it engaged in a television and radio campaign promoting its airport in the early 2000s. Additionally, Complainant provides documents demonstrating its economic impact. Complainant explains its operating revenue from 1996-2003 shows that Complainant had an operating revenue of approximately $6 million to $10 million per year. Finally, Complainant contends the ISLIP AIRPORT and ISLIP MACARTHUR AIRPORT marks contain the term “Islip,” which is Complainant’s name.
Considering all the above aspects, the Panel concludes that the evidence in the record indicates that Complainant has established continuous use and acquired secondary meaning in the MACARTHUR AIRPORT, ISLIP AIRPORT, and ISLIP MACARTHUR AIRPORT marks.
The Panel therefore finds that the Complainant has established common law rights in the marks under Policy ¶ 4(a)(i) that predate Respondent’s registration of the disputed domain names. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership); see also Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years).
The Complainant argues that Respondent’s <macarthurairport.com> domain name is identical to its MACARTHUR AIRPORT mark. The Complainant alleges Respondent deletes the space between the words in the mark and then adds the generic top-level domain (“gTLD”) “.com” to its mark in the disputed domain name. These alterations do not render Respondent’s domain name distinct from Complainant’s mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”). Accordingly, the Panel finds Respondent’s <macarthurairport.com> domain name is identical to Complainant’s MACARTHUR AIRPORT mark pursuant to Policy ¶ 4(a)(i).
The Complainant further argues that Respondent’s <islipairport.com> domain name is identical to its ISLIP AIRPORT mark. Again, Complainant claims Respondent merely deletes the space between the words in its mark and then affixes the gTLD “.com” to its mark. As stated above, these minor alterations do not distinguish Respondent’s domain name from Complainant’s mark. See Reese v. Morgan, supra; see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., supra; see also Diesel v. LMN, supra. The Panel therefore finds that the Respondent’s <islipairport.com> domain name is identical to Complainant’s ISLIP AIRPORT mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <islipmacarthurairport.com> domain name is identical to its ISLIP MACARTHUR AIRPORT mark. Again, the changes between the mark and the domain name are not enough to distinguish the domain name from the trademark. Accordingly, the Panel finds that Respondent’s <islipmacarthurairport.com> domain name is identical to Complainant’s ISLIP MACARTHUR AIRPORT mark pursuant to Policy ¶ 4(a)(i).
The Complainant argues that Respondent’s <islipairportonline.com> and <islipairportonline.net> domain names are confusingly similar to its ISLIP AIRPORT mark. Complainant asserts Respondent fully incorporates its mark in the disputed domain names and then merely deletes the space between the words in its mark. Moreover, Complainant argues that the addition of the generic term “online” and the gTLDs “.com” and “.net” do not sufficiently distinguish Respondent’s disputed domain names from its mark. The Panel fully agrees, considering especially that the sole addition of “online,” instead of distinguishing the domain name from Complainant’s trademark, rather clearly indicates that it is the owner of the trademark web site and online services. The Panel therefore finds that Respondent’s <islipairportonline.com> and <islipairportonline.net> domain names are confusingly similar to Complainant’s ISLIP AIRPORT mark pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark).
Complainant argues that Respondent’s <ispairportonline.com> and <ispairportonline.net> domain names are confusingly similar to its ISLIP AIRPORT mark. Complainant asserts “ISP” is the three-letter Airport Code for “Islip” and, accordingly, the two are equally protected. Thus, Complainant contends Respondent fully incorporates its mark in the disputed domain names and then simply deletes the space between the words in its mark. The Complainant has provided evidence of the argument that passengers are reminded of the Islip Airport name by the “ISP” three-letter code designated by the International Air Transport Association and that the term “ISP Airport” is searched approximately 4,400 times each month (based on Google).
The Panel therefore agrees that Respondent’s <ispairportonline.com> and <ispairportonline.net> domain names are confusingly similar to Complainant’s ISLIP AIRPORT mark pursuant to Policy ¶ 4(a)(i). See Coca-Cola Co. v. Busch, 44 F. Supp. 405, 410 (E.D.Pa. 1942) (“[T]he abbreviation of the trade-mark which the public has used and adopted as designating the product of the [trademark owner] is equally as much to be protected as the trademark itself . . .”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., supra; see also Trip Network Inc. v. Alviera, supra; see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, supra; see also Broadcom Corp. v. Domain Depot, supra.
Finally, the Complainant argues that Respondent’s <macarthurairportonline.com> and <macarthurairportonline.net> domain names are confusingly similar to its MACARTHUR AIRPORT mark. As concluded above regarding the <islipairportonline.com> and <islipairportonline.net> domain names, the differences between the domain names and the trademark is too small to sufficiently distinguish Respondent’s disputed domain names from the trademark and rather indicates that this is the online version of the Complainant’s service information.
While Respondent argues that its registration of the disputed domain names predate Complainant’s alleged rights in the marks, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the marks and whether the disputed domain names are identical or confusingly similar to Complainant’s marks. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)). Accordingly, this argument will be further dealt with under “Registration and Use in Bad Faith” below.
Complainant’s assertion that Respondent lacks rights or legitimate interests in the disputed domain names, together with the fact that the WHOIS information lists “Black sheep Television Ltd.” as the registrant of the disputed domain names, which the Panel finds is not similar to any of the disputed domain names, establishes a prima facie case under the Policy.
Once a prima facie case has been established, the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“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.”).
As shown by the evidence provided, and not denied by the Respondent, it is clear that Respondent’s <islipairport.com>, <islipmacarthurairport.com>, <islipairportonline.com>, <islipairportonline.net>, <macarthurairportonline.com>, <macarthurairportonline.net>, <ispairportonline.com>, and <ispairportonline.net> domain names all redirect Internet users to the website resolving from Respondent’s <macarthurairport.com> domain name. Complainant asserts Respondent’s resolving website prominently displays its LONG ISLAND MACARTHUR AIRPORT mark and a logo that closely resembles Complainant’s logo. In its Additional Submission, Complainant argues that Respondent does not use the disputed domain names to only offer information about the airport or to comment on Complainant. Instead, Complainant alleges Respondent registered and is using its resolving website to provide advertisements for airlines that do not fly into or out of Complainant’s airport. Complainant also alleges Respondent’s website provides advertisements for unauthorized taxi services. Thus, Complainant argues that Respondent uses the disputed domain names to profit from advertisement fees.
The evidence provided by the Complainant supports this argument, and the argument of the Respondent that Respondent covers its operational costs and maintains the integrity of the website by only accepting advertisements from legitimate service providers who operate businesses that are relevant to travelers such as hotels and car services does not deny – as concluded by the Panel – that Respondent in fact earns money from advertisement on the web site. Indeed, Annex 2 of the Response shows advertisements on the Web page for hotels, car rentals and others.
Accordingly, the Panel finds that the Respondent does not use the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
The Complainant claims that the Respondent does not include a disclaimer that would reduce confusion between Respondent’s resolving website and Complainant’s mark. The Panel agrees with the Complainant that the statement on Respondent’s Web page that “macarthurairport.com is not governmentally owned…” does not serve as an adequate disclaimer. See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant).
The Complainant also contends that Respondent offered to sell the <macarthurairport.com>, <islipairport.com>, and <islipmacarthurairport.com> domain names to Complainant. In particular, Complainant’s representative attests that Respondent offered to sell the <macarthurairport.com> domain name to Complainant for $250,000. The Respondent denies having intended or attempted to sell the website. Respondent claims that in discussions with the Complainant regarding a cooperative relationship, the Respondent has suggested a cooperative partnership for a period of ten years wherein the Complainant would pay to Respondent the operating costs in the amount of $25,000 per year.
Although the Panel cannot see any specific and clear evidence in support of the Complainant’s accusations that <macarthurairport.com> was offered for sale for this amount (the discussions referred to by both Respondent and Complainant mention values and prices, but not in definite proof of the said accusation), the Panel finds that at least the Respondent has declared a price in order for the Complainant to get access to the domain name. The Panel find that Respondent’s offers exceed its out-of-pocket costs and provides additional evidence that Respondent lacks rights and legitimate interests in the <macarthurairport.com>, <islipairport.com>, and <islipmacarthurairport.com> domain names under Policy ¶ 4(a)(ii).
Finally, the Panel finds that Respondent uses the disputed domain names in an attempt to pass itself off as Complainant for profit. Screen shots of Respondent’s resolving website show Complainant’s mark and logo prominently displayed throughout its site. In addition, the resolving website shows a picture of Complainant’s airport. Therefore, the Panel finds that Respondent’s efforts to pass itself off as Complainant are further evidence that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
Complainant alleges Respondent offered to sell the <macarthurairport.com>, <islipairport.com>, and <islipmacarthurairport.com> domain names to Complainant. Specifically, Complainant claims Respondent offered to sell the <macarthurairport.com> domain name to Complainant for $250,000 in February 2009. As stated above, the Panel is not convinced that the sum was $250,000 directly, or – as stated by the Respondent – $25,000 per year. In anyway, Respondent has offered the Complainant to buy or to “use” the disputed domain names for more than its out-of-pocket costs, which qualifies as registration and use in bad faith under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that bad faith existed where the respondent offered the domain name for sale to the complainant for $125,000).
The Panel notes that the Respondent seems to have registered the disputed domain names in order to prevent Complainant from reflecting the mark/s in a corresponding domain name and that Respondent has engaged in a pattern of such conduct by registrations first in 2000 and then in 2009. In total, Respondent has registered nine domain names that are identical or confusingly similar to the Complainant’s marks. Accordingly, the Panel finds Respondent’s multiple registrations qualify as a pattern of conduct and Respondent has engaged in bad faith under Policy ¶ 4(b)(ii). See EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)); see also Yahoo! Inc. v. Deiana, FA 339579 (Nat. Arb. Forum Nov. 22, 2004) (“It is found and determined that Respondent is in violation of Policy ¶ 4(b)(ii) because Respondent registered the disputed domain names to prevent Complainant from reflecting its YAHOO! mark in the corresponding domain names. The registration of the [<ayhooo.com>, <ayhooo.net >, <ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>, <ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>, <ayhooo-uk.com>, and <searchayhooo.com>] domain names herein constitutes a pattern of registering trademark-related domain names in bad faith.”).
The Respondent argues that its registration of the disputed domain names predate Complainant’s alleged rights in the marks. The Panel notes, however, that the Complainant has used its marks extensively prior to the registration of the domain names, and the Respondent does not deny having registered all of the disputed domain names with the knowledge of the marks / words being used for years by someone else (namely the Complainant). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Complainant contends that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. The Panel notes that Respondent has not only used all of Complainant’s trademarks, but Respondent’s resolving website prominently displays Complainant’s marks and logo in an almost identical way. Based on the evidence in the record, the Panel concludes that Respondent’s disputed domain names create confusion with Complainant’s mark and that Respondent intended to create this confusion in order to receive commercial gain via advertising fees. The Respondent has therefore engaged in registration and use in bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
After considering all material and evidence provided by both the Complainant and the Respondent, the Panel also concludes that the Respondent is using the disputed domain names to pass itself off as being associated with Complainant. Accordingly, the Panel finds that this use indicates bad faith under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <macarthurairport.com>, <islipairport.com>, <islipmacarthurairport.com>, <islipairportonline.com>, <islipairportonline.net>, <macarthurairportonline.com>, <macarthurairportonline.net>, <ispairportonline.com>, and <ispairportonline.net> domain names be TRANSFERRED from Respondent to Complainant.
Mr. Petter Rindforth, Panelist
Dated: October 11, 2010
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