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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

AirTran Holdings Inc. v. Eric Wyatt, MD

Case No. D2008-1163

 

1. The Parties

Complainant is AirTran Holdings Inc.,Orlando, Florida, United States of America, represented by Smith, Gambrell & Russell, LLP, United States of America.

Respondent is Eric Wyatt, Oklahoma City, Oklahoma, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <flyairtran.mobi> (“the Domain Name”) is registered with GoDaddy.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2008. On July 31, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On July 31, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 4, 2008. The response was received at the Center on August 15, 2008 and on August 18, 2008.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on August 26, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

Complainant has demonstrated that it owns the following federally (U.S.) registered service/trade marks: AIRTRAN (U.S. Registration No. 2,362,176), AIRTRAN AIRWAYS (U.S. Registration No. 2,364,510), and AIRTRAN.COM (U.S. Registration No. 3,202,198) (the “AirTran Marks”), which it has used since 1988 to identify its air transportation services. Complainant promotes the AirTran Marks through various communications media including by using them on its “www.airtran.com” website.

Through counsel of record in this proceeding, Complainant sent Respondent a cease and desist letter which included setting forth Complainant’s rights in the AirTran Marks, alleging various claims arising from Respondent’s registration of the Domain Name (e.g., trademark infringement), and requesting Respondent to cease using the Domain Name and to transfer it to Complainant. Complainant also requested written assurances that Respondent would comply with its requests. Respondent wrote back the next day stating that he did not intend to create confusion between his use of the Domain Name and Complainant’s use of the AirTran Marks, claiming a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain, and inviting Complainant to file a formal complaint under the Policy if they want to pursue the matter further.

The Domain Name was registered on September 29, 2007.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that:

The Domain Name is confusingly similar to the AirTran Marks. The Domain Name uses the AIRTRAN mark in full, only adding the word “fly,” which is descriptive of Complainant’s services. Respondent does not have any rights or legitimate interests in the Domain Name. Complainant has not licensed or provided any other permission to use the AirTran Marks. Respondent adopted and is using the Domain Name in bad faith. Respondent was aware of Complainant’s AirTran Marks. There is no possible explanation why Respondent would have selected a domain name that includes in full Complainant’s AIRTRAN mark other than to trade on the goodwill of Complainant.

B. Respondent

Respondent contends that:

The mere usage of a trademarked name within a url address does not constitute trademark infringement. Using “fly” with “airtran” expresses consumer commentary. Respondent’s legitimate interests are based upon his intent to establish a website that is a sounding board for consumers to comment on the positive and negative aspects of their travel experiences and to give advice. Respondent denies his use of the Domain Name is in bad faith because he has registered it to convey an opinion. Also, use of the Domain Name is not diluting Complainant’s rights in the AirTran Marks nor causing confusion.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that a complainant 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 the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the 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.

A. Identical or Confusingly Similar

This element consists of two parts: first, does Complainant have rights in a relevant mark and, second, is the Domain Name identical or confusingly similar to that mark.

The Panel finds Complainant has established rights in the AirTran Marks based on use (at least twenty years for the AIRTRAN and AIRTRAN AIRWAYS marks) as well as its U.S. trademark registrations. Those registrations are entitled to a presumption of validity, which Respondent has not rebutted. Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261. Likewise, Respondent had not refuted Complainant’s long-standing use of the AirTran Marks.

The Domain Name <flyairtran.mobi> is confusingly similar to the AirTran Marks. The Domain Name uses the Complainant’s AIRTRAN mark in full, only adding the word “fly”, which relates directly to the air transportation services that Complainant provides. It is well established that the simple addition of a word to a complainant’s mark may not suffice to preclude a finding of confusing similarity, especially where the word that is added relates to complainant’s business. See, e.g., Thrifty, Inc. & Thrifty Rent-a-Car System, Inc. v. Airportparkinglots.com, NAF Case No.FA129123 (Jan. 2, 2003) (finding confusing similarity between <thriftyairportparking.com> and the THRIFTY marks in part because the additions to the domain name had connotations that related to the complainant’s business services); Foot Locker, Inc. v. Blezin Widmaer, NAF Case No.FA113283 (June 17, 2002) (“The addition of generic words is especially confusing where the generic words bear an obvious relationship to Complainant’s business”); L.F.P., Inc v. Hotpics Int’l, NAF Case No. FA109576 (May 24, 2002) (finding that the addition of the generic term “video” did not defeat a confusing similarity claim because the generic term directly related to the Complainant’s business). Furthermore, the “mobi” top level domain, is not significant in determining whether a domain name is identical or confusingly similar to a trademark. Bradford & Bingley Plc v. Registrant info@fashionID.com 987654321, WIPO Case No. D2002-0499 (“When comparing a challenged domain name and a trademark, the addition of the .com suffix is irrelevant for the purpose of determining whether the domain name is identical or confusingly similar to a trademark. Rather, one looks to the second-level domain for such a determination”); CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834.

For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

Complainant must prove Respondent has no rights to or legitimate interests in the Domain Name. Once a complainant makes a prima facie showing that a respondent has no legitimate interests or rights in the domain names at issue, the burden of production on this factor shifts to respondent to rebut the showing. The burden of proof, however, remains with Complainant. See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. Pursuant to paragraph 4(c) of the Policy, “[a]ny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the Domain Name for purposes of paragraph 4(a)(ii):

(i) before any notice to [Respondent]of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if [Respondent] have acquired no trademark or service mark rights; or

(iii) [Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.

It is uncontested Complainant has not licensed or otherwise authorized Respondent to use the AirTran Marks, for example, in a domain name. See, e.g., Telstra Corp., Ltd.v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding respondent had no rights or legitimate interests in the domain name in question in part because “the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks . . . .”); Massachusetts. Medical. Society v. Michael Karle, WIPO Case No. D2000-0282 (“Respondent is not a licensee of the Complainant and is not otherwise authorized to use the Complainant’s mark.”). Insofar as Complainant has made a prima facie showing, Respondent lacks rights or legitimate interests to the Domain Name (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261), this shifts the burden to Respondent to proffer evidence that it has rights or legitimate interests in the Domain Name. See, e.g., Document Technologies, (supra). Such facts, without contrary evidence from Respondent, are sufficient to permit a finding in Complainant’s favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007.

The sum total of Respondent’s showing is the precatory remark that his “intent is to establish a site that is a sounding board for consumers to comment on the positive and negative aspects of their travel experiences as well as give advice.” He went on to say that his interest in the site “is derived from own extensive travel and unique experiences as the spouse of a flight attendant with 17 years experience for a major airline. I think such a site would be interesting and informational for travelers.” In short, Respondent has produced no evidence to support his assertion and such unsupported claim is not sufficient to conclude that he has any rights to or legitimate interest in the Domain Name.

For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets forth four criteria that are to be considered as evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that [Respondent] have registered or [Respondent] have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [Respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) [Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.”

These criteria are not exclusive and the panel may conclude Respondent acted in bad faith where other circumstances reveal the bad faith nature of the registration and use of the Domain Name.

With regard to Respondent’s bad faith registration of the Domain Name, the Panel finds Respondent was aware and/or had constructive notice of the AirTran Marks, insofar as a trademark search on the date of the registration of the Domain Name would have revealed Complainant’s registrations in the United States. Actual or constructive knowledge of the Complainant’s rights in the AirTran Marks is a factor supporting bad faith. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Document Technologies (supra). (Respondent’s knowledge of complainant’s mark at the time of registration of the domain name suggests bad faith). Moreover, Respondent has not refuted Complainant’s allegation that he had knowledge of the AirTran Marks when registering the Domain Name. Indeed, Respondent claims that “flyairtran” is the expression of his opinion or point of view regarding AirTran. Accordingly, Respondent would have to know about AirTran to express a point of view about it.

Another factor relating to Respondent’s bad faith adoption and use of the Domain Name is Respondent’s adoption of Complainant’s entire AirTran mark in the Domain Name, thus making it difficult to infer a legitimate use of the Domain Name by Respondent. In Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028, the WIPO panel inferred bad faith registration of the domain name <cellularonechina.com>, because the domain name included complainant’s entire trademark. In doing so the panel reasoned “it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name.” See RRI Fin., Inc. v. Ray Chen, WIPO Case No. D2001-1242 (finding that bad faith could be inferred from the Respondent’s use of the Complainant’s entire mark, stating: “No possible explanation exists as to why Respondent selected the name RED ROOF as part of the Domain Names other than to trade on the goodwill of Complainant.”); America. Online, Inc. v. Chinese ICQ Network, WIPO Case No. D2000-0808 (finding that “the very use [of a domain name] by someone with no connection with the product suggests opportunistic bad faith.”).

Respondent’s actions here, taken together with the above, is further evidence of Respondent’s bad faith use of the Domain Name. Respondent refused to voluntarily transfer the contested Domain Name in response to Complainant’s cease and desist letter, he provided Complainant with the flimsiest of reasons for continuing to use the Domain name, and he invited Complainant to file this action.

For the foregoing reasons, the Panel finds paragraph 4(a)(iii) of the Policy has been satisfied.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <flyairtran.mobi> be transferred to the Complainant.

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Harrie R. Samaras
Sole Panelist

Date: September 9, 2008