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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Southwest Airlines Co. v. Damir Kruzicevic
Case No. D2003-0249
1. The Parties
The Complainant is Southwest Airlines Co. of Dallas, Texas, United States of America, represented by Piper Rudnick of United States of America.
The Respondent is Damir Kruzicevic of Croatia, represented by Howard M. Neu of the United States of America.
2. The Domain Name and Registrar
The disputed domain name <southwestvacations.com> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 2, 2003. On April 10, 2003, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On April 11, 2003, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 17, 2003. The Center verified that the Complaint, together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced April 28, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2003. The Response was filed with the Center May 17, 2003.
The Center appointed Andrew Brown, Mark Partridge and Dana Haviland as panelists in this matter on June 19, 2003. The Panel finds that it was properly constituted. Each member of 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
The Complainant is a corporation having its principal place of business in Dallas, Texas, United States of America. It carries on business as a provider principally of airline services, but also providing some associated travel services.
The Complainant has provided domestic airline services for over 30 years in the United States under its name, Southwest Airlines Co. The Complainant is the fourth largest airline in the United States of America in terms of passengers carried on domestic flights, providing 90% of all discount air travel in the United States of America.
The Complainant has a number of registered trademarks in the United States of America including:
hSOUTHWEST plus logo
hSOUTHWEST AIRLINES A SYMBOL OF FREEDOM
hSOUTHWEST.COM A SYMBOL OF E-FREEDOM; and
Each of these registrations is in class 39. Most relate to transportation and air transportation and provide dates of first use in commerce in the United States of the mark SOUTHWEST as of 1971. The mark SOUTHWEST.COM covers "travel agency services, namely making reservations and bookings for transportation; providing information in the field of travel by means of a global computer network". This shows the first use in commerce as being in 1997.
The Complainant has a significant presence on the Internet and generates a substantial proportion of its bookings through its websites at <southwest.com> and <southwestairlines.com>.
The Respondent is apparently in the business of registering and utilising domain names. He registered <southwestvacations.com> on March 25, 2002. That domain name is currently linked to a website at <cheaprooms.com>, a domain name that is also owned by the Respondent, but leased to an entity called Hotels.com. A number of other sites owned by the Respondent are also linked to <cheaprooms.com>. The website at <cheaprooms.com> offers various travel-related booking services and the Respondent is paid a sum of money by Hotels.com for each Internet user directed to that site through his other domain names. The Respondent, in his Response, provides a partial list of his domain names that are linked in a similar manner to the domain name in dispute.
Upon becoming aware of the Respondent’s registration and use of the domain name, the Complainant wrote, through its attorney, to the Respondent on December 18, 2002, requesting immediate discontinuance and assignment of the domain name. The Respondent replied on January 3, 2003, also through his attorney, stating that he was "a businessman who acquires domains to develop them into active websites." The letter went on to say that the Respondent was "not going to hand this domain over to [the Complainant] on a silver platter." The letter further said to the Complainant, "if you wish to make a serious offer for the domain, [the Respondent] will give it due consideration."
On January 23, 2003, the Complainant’s attorney sent another letter to the Respondent’s attorney. This letter alleged that the domain name was registered and used in bad faith and sought a voluntary transfer of the domain including an offer to reimburse the Respondent for any administrative fees paid in registering or transferring the domain name.
In response to the letter of January 23, 2003, the Respondent’s attorney sent an email, dated February 6, 2003, to the Complainant’s attorney stating that the domain name was not for sale. Further correspondence was entered into between the parties which included an offer by the Complainant to pay $150 for the transfer of the domain name. The Complainant also mentioned in correspondence a "string of losing actions concerning registration of cyber domain names" involving the Respondent and alleged that this indicated the true nature of his business and a lack of good faith on his part.
5. Parties’ Contentions
The Complainant alleges that as well as owning the undisputed registered trademarks and domain names noted above, it also is the rightful owner of various common law trademarks including SOUTHWEST AIRLINES VACATIONS, SOUTHWEST VACATIONS and SWA VACATIONS. It claims to have used these marks in connection with its booking services for hotel, rental car and vacation packages "for a number of years."
There is no direct evidence of expenditure on promotion of these latter marks. Rather, the Complainant provides a global figure of $100 million expenditure per annum on the production of and publicizing of all its SOUTHWEST trademarks.
The Complainant further states its reliance on the Internet to conduct a significant portion of its business. It claims to be the first major United States airline to establish a homepage (its trademark SOUTHWEST.COM claims first use in 1997) and that it operates through websites at <southwest.com>, <swavacations.com> and <southwestairlines.com>. Approximately 46% of US$500 million of its revenue for the first quarter of 2002, was generated via its website <southwest.com>.
The Complainant provided a LYCOS report produced by the well-known LYCOS search engine in August 2001. This surveyed the top airlines searched online amongst LYCOS users worldwide. (This is apparent from reading the report.) The Complainant was listed as clearly no. 1.
The Complainant also says it is the owner of the domain name <swavacations.com> although no evidence of this fact is provided.
The Complainant describes its collection of registered and common law trademarks and domain names as a "family" of SOUTHWEST marks. It claims that the Respondent was aware of this family of marks and has deliberately tried to appropriate goodwill in them by registering the domain name and diverting Internet traffic to his own websites.
The Complainant alleges that the true nature of the Respondent’s business is, in fact, registering domain names, including domain names that incorporate well-known trademarks, and using them to misdirect Internet users to websites unrelated to the trademark owners for commercial gain.
The Complainant says that the domain name in dispute is confusingly similar to one or other of its family of marks.
It says that the Respondent has no legitimate interest in the domain name as:
(a) He is not known by the domain name or any similar name;
(b) He makes neither a bona fide offering under the domain name nor any non-commercial or fair use of it; and
(c) The domain name is linked to a site offering services that compete with the Complainant’s services.
The Complainant states that the website to which the domain name is linked, does not focus on the southwest region of any country or place (although it is noted that east and west distinctions are drawn for destinations within the United States of America). The Complainant alleges that this shows that the intention of the Respondent was to mislead and divert Internet traffic.
The Complainant alleges that the correspondence between the parties prior to the Complaint being made discloses an intention on behalf of, and an offer by, the Respondent, to sell the domain name. The Complainant specifically notes that the Respondent only categorically stated that the domain name was not for sale after the Complainant’s attorney pointed out that an offer to sell would constitute evidence of bad faith under the Policy.
Finally, the Complainant notes the Respondent’s pattern of conduct and his involvement in a number of decisions under the Policy in which domain names containing famous trademarks registered by him were cancelled or transferred.
The disputed domain name was registered in March 2002.
In his Response, the Respondent claims to be in the business of registering and utilizing domain names primarily of a generic travel nature to link to his <cheaprooms.com> website.
The Respondent alleges that the Complainant has no exclusive right to the word SOUTHWEST. He gives a number of examples of its use in other contexts, for example, trademark registrations in the United States of America by third parties for pumps, seats and gaskets; taco shells; polishing machines and vacuum cleaners; and sprinklers and lawn irrigation and uses of that phrase within a number of other websites.
The Respondent claims that the domain name <swavacations.com> is not in fact owned by the Complainant as claimed, but is owned by a third party, The Mark Travel Corporation of Milwaukee, Wisconsin trading as Southwest Airlines Vacations.
The Respondent notes that the Complainant does not have trademark registrations (or applications) for SOUTHWEST VACATIONS or SOUTHWEST VACATIONS.COM. The Respondent states that he "properly reviewed the USPTO" trademark database prior to registering his domain name and found no registered trademark in the United States for those words.
The Respondent claims that his domain name is not confusingly similar with any of the Complainant’s trademarks or domain names, as the Complainant’s name incorporates the word "airlines" whereas his domain name uses the word "vacations". The Respondent alleges that "there is nothing distinctive about the term SOUTHWEST which has been registered by multiple parties. The term SOUTHWEST VACATIONS is a generic term which has not been trademarked by any party, though there are hundreds of other words associated with SOUTHWEST which have been trademarked."
The Respondent says that as he is not resident in the United States of America, he was not aware of the Complainant or its trademarks. The Respondent says he is not using the domain name in bad faith, as he is operating an active website from it offering bona fide services.
6. Discussion and Findings
A. Identical or Confusingly Similar
In order for this Complaint to be upheld, the domain name at issue must be identical to, or confusingly similar to, a trademark or service mark in which the Complainant has rights. This is a two step test:
(a) What marks does the Complainant have rights in?
(b) Is the domain name identical or confusingly similar to any of those marks?
The Panel finds there is no doubt that the Complainant is very well-known in the United States and beyond and that it has rights in registered trademarks SOUTHWEST and SOUTHWEST AIRLINES, particularly in relation to airline travel services within the United States. The connection between airline travel services and vacations is undoubtedly a very close one given that a significant proportion of vacationers would use air travel to get to their vacation destination. Airlines also are involved in booking vacation travel for customers.
There is no doubt that rights in an unregistered trademark are also sufficient to fulfill the requirement to show "rights" under paragraph 4(a)(i) of the Policy. (See Goldline Telemanagement Inc. v. SquareBox Entertainment – WIPO Case No. D2002-1102). In the case of an unregistered mark however, there is no presumption of entitlement to rights under law, and the onus is on the Complainant to provide convincing evidence that it is entitled to claim such right. Again, the Panel notes that the question of whether third parties may have concurrent rights in similar or identical trademarks, is not at all relevant to the investigation under the Policy.
The Panel finds that the Complainant has not established rights in the unregistered trademark SOUTHWEST VACATIONS. No individualized evidence was provided as to the extent of use and promotion of that common law mark on its own. As to the Complainant’s use of the website <swavacations.com>, this was registered on September 9, 2002, which was after the disputed domain name was registered. The Respondent has disputed the Complainant’s ownership of the website. The point is somewhat moot in view of the later registration <swavacations.com>.
The Respondent claims that the term SOUTHWEST VACATIONS is a generic term to which no one party ought to have sole rights, citing America Online, Inc. v. Media Dial Communications – WIPO Case No. D2001-0799. The Panel considers that in fact the Complainant has clearly demonstrated actual trademark rights in the marks SOUTHWEST and SOUTHWEST AIRLINES.
Given the finding that the Complainant certainly has rights in the trademarks SOUTHWEST and SOUTHWEST AIRLINES, the Panel must determine whether the disputed domain name is confusingly similar to those trademarks. The only difference between the Complainant’s trademark SOUTHWEST and the domain name is the generic word "vacations". The Panel finds that, given the undoubted reputation of the Complainant and the very close association between airline services and vacation services, the disputed domain name is confusingly similar to the Complainant’s trademarks.
B. Rights or Legitimate Interests
The Respondent has claimed to be using the domain name in connection with a bona fide offering of goods or services. If true, this would constitute a legitimate interest under paragraph 4(c)(i) of the Policy. The bona fide offering is claimed to be made by way of the link to <cheaprooms.com> which the Panel finds does in fact offer genuine travel services. The Panel, however, has some reservations as to the veracity of the Respondent’s claim to be solely in the business of linking generic travel related domain names to <cheaprooms.com>.
First, the description of the Respondent’s business in the Response is quite different from that given by his attorney in correspondence with the Complainant. That correspondence stated that the Respondent was "a businessman who acquires domains to develop them into active websites."
Secondly, the Panel notes that the Respondent does indeed own a number of generic travel domain names but in his Response, provides only a non-exhaustive list of these. No explanation is provided as to why a complete list of the Respondent’s domain names linked to <cheaprooms.com> was not provided. The Panel expressly notes the previous decision Six Continents Hotels Inc. v. Damir Kruzicevic – WIPO Case No. D2002-0674 which concerned the domain name <holidayinns.com>. This domain name was almost identical to a trademark owned by Six Continents Hotels and had been linked by the same Respondent as in this case to his <cheaprooms.com> website.
Despite these reservations the Panel is prepared, for the purposes of argument, to accept that the Respondent’s business is now as he describes it. The question under paragraph 4(a)(ii) of the Policy is whether this business model gives the Respondent any rights or legitimate interests in respect of the domain name. Such rights or interests can be demonstrated in the ways set out in paragraph 4(c) of the Policy.
The Panel finds that despite genuine services being offered at the linked site <cheaprooms.com>, the services being provided through the disputed domain name are not being offered in good faith. The services provided through <cheaprooms.com> including, in particular, the air travel services, are in competition with the Complainant and it is well established that using a domain name to link to a competing website does not satisfy the requirements of paragraph 4(c)(i) of the Policy (see AltaVista Company v. Saeid Yomtobian – WIPO Case No. D2000-0937 and Universal City Studios, Inc. v. G.A.B. Enterprises – WIPO Case No. D2000-0416).
Paragraph 4(c)(ii) of the Policy cannot be relied upon as establishing rights or legitimate interests in the domain name. There is no suggestion that the Respondent is, or ever has been, known by the domain name or any similar name.
The Respondent has admitted making commercial gain through use of the domain name, and he therefore cannot rely on paragraph 4(c)(iii) of the Policy to establish rights or a legitimate interest in the domain name.
The Panel notes that paragraph 4(c) of the Policy does not limit the manner in which legitimate rights or interests in a domain name can be shown. In correspondence with the Complainant (in his attorney’s letter of January 3, 2003), the Respondent states that he "assumed that persons are naturally going to want to see if there are vacation spots in the southwest of Europe, Asia, Africa, South America or North America". The Panel views this as a claim to having legitimate interest in the domain name given his assertion of being involved in the travel industry. Despite this explanation for the selection of this domain name, there is no reference in the website hosted at <cheaprooms.com> to the southwest region of any particular part of the globe. The Panel considers that if the Respondent truly believed that such geographical indicators were generic within the travel industry, he would have been likely to also register domain names containing other geographical indicators. No such domain names are mentioned in the Response.
For these reasons and also for reasons listed in the next section (relating to the Respondent’s likely knowledge of the Complainant’s trademarks at the date of registration of the disputed domain name) the Panel finds that the Respondent has no legitimate interest or rights in the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out various circumstances that constitute evidence of bad faith.
The Complainant has alleged that in correspondence between the parties, the Respondent offered to sell the domain name to the Complainant in the manner described in paragraph 4(b)(i). The Panel notes that the words used in correspondence by the Respondent clearly indicated a willingness to sell the domain name should an appropriate offer be made, however it finds the evidence inconclusive as to whether these words constitute an actual offer to sell. As the Panel is of the opinion that bad faith is demonstrated in other ways, it does not find it necessary to draw any conclusions on this point. But see Six Continents Hotels, Inc. fka Bass Hotels & Resorts, Inc. v. Cortlandt Colonial Restaurants and Receptions – WIPO Case No. D2003-0292 (holding that very similar words "if you’re interested in purchasing the domain site from [the Respondent], we will entertain an offer," constituted an offer to sell under the facts of that case.)
There are other indications of bad faith registration and use. In his Response, the Respondent states (through his attorney) that various WIPO decisions have shown that just because a mark is well-known in its home country, it does not mean the mark is also well-known in another country where the domain name registrant resides. "The Respondent is a citizen resident of Croatia in this case who properly reviewed the USPTO prior to registering the subject domain and found no registered trademark in the United States for those words."
The Panel finds that the Respondent would have been aware of the Complainant’s well known trademark SOUTHWEST prior to registering the domain name in dispute. The reasons for this finding are cumulatively:
(a) The extent of the demonstrated reputation of the Complainant’s marks SOUTHWEST and SOUTHWEST AIRLINES for over 30 years;
(b) The Respondent’s express statement in his Response that "he is very much in the travel business" and owns a number of travel-related domain names that are directed to <cheaprooms.com>. A person involved in the travel business would almost certainly be aware of the Complainant’s trademark and name;
(c) The domain name <cheaprooms.com> contains information on checking airline schedules and booking airline tickets and expressly lists Southwest under the list of airlines that are on offer (see Preferred Airline);
(d) If, as is claimed, the Respondent did a USPTO search, the Complainant’s registrations would have been revealed. It is noteworthy that the Response carefully states only that the Respondent "found no registered trademark in the United States for those words" i.e. Southwest Vacations." It does not say that the Respondent found no registration for SOUTHWEST.
The Respondent is using the disputed domain name to link to and attract customers to a site offering travel related services directly competing with the Complainant.
The Respondent’s use of the domain name clearly demonstrates an intentional attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Registrant’s website. Pursuant to paragraph 4(b)(iv) of the Policy, that in itself also constitutes evidence of bad faith registration and bad faith use.
The Complainant has also argued that the Respondent has engaged in an unfair pattern of conduct involving the registration of domain names corresponding to other well-known trademarks in the travel industry (e.g. HOLIDAY INNS). Given the findings discussed above, the Panel does not need to resolve this issue to reach its decision.
Accordingly, the Panel finds that the domain name was registered and is being used in bad faith.
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, <southwestvacations.com> be transferred to the Complainant.
Dated: July 3, 2003