Southwest Airlines Co. v. Patrick Ory

Case No. D2003-0761

The Complainant is Southwest Airlines Co., of Dallas, Texas, United States of America, represented by Piper Rudnick, United States of America.

The Respondent is Patrick Ory, of Mexico, also with an address in The Netherlands.

The disputed Domain Names <southwestairfares.com>, <southwest-airlines.biz>, <southwest-airlines-fares.com>, <southwestairlinesreservation.com>, <southwest-airlines-reservations.com>, <southwest-airlines-tickets.com>, <southwestairlinetickets.com>, and <southwest-air-tickets.com> are registered with CSL Computer Service Langenbach GmbH dba Joker.com.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 27, 2003. On September 29, 2003, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the Domain Names at issue. On September 30, 2003, CSL Computer Service Langenbach GmbH dba Joker.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 October 10, 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 on October 13, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2003.

The Center appointed Leon Trakman as the sole panelist in this matter on November 26, 2003. 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.

Complainant alleges that the dispute is properly within the scope of the Policy, that the Administrative Panel has jurisdiction to decide the dispute, and that the registration agreement, pursuant to which the Domain names in dispute were registered, incorporates the Policy.

Complainant maintains that, for over thirty years, it has used the name and marks SOUTHWEST AIRLINES and SOUTHWEST in connection with its air transportation services in the United States. To help protect its trademark rights and to place others on notice of these rights, it has also obtained a variety of US trademark registrations on the Principal Registrar for the marks, SOUTHWEST, SOUTHWEST AIRLINES and variations thereof. Complainant alleges further, that it has become the fourth largest airline in the U.S., that it is the only major short-haul, low-fare, high-frequency, point-to-point carriers in the U.S., that it provides approximately 90% of all discount air travel in the U.S., and that it has spent significant sums of money to ensure that its trademarks and names are recognized and widely known throughout the U.S.

Complainant asserts, in particular, that it relies extensively on the Internet to conduct a significant portion of its business, that it was the first major U.S. airline to establish a home page on the Internet, that it owns numerous domain names and operates a website that the public can access. It introduces into evidence third party publications to the effect that; Internet users search for Southwest Airlines more than for any other airline on the Web, that Southwest Airlines was named as the Airline that best utilized the Internet, and that in June 2001, it’s website was named one of the top 100 e-businesses in the U.S.

Complainant alleges further that Respondent registered all the Domain Names in dispute after Complainant had adopted, registered and began using its SOUTHWEST AIRLINES marks and names; that Respondent is not authorized to do so, and that Respondent began directing the Domain Names to resolve to his website. At that site, Respondent offers airfare and other travel booking services that compete with Southwest Airlines’ own airfare and travel booking services. There, too, Respondent administers the site himself and identifies himself as President. The Panel has established that Respondent’s website is currently in operation.

Complainant alleges that it first learned of Respondent’s activities "a couple of months" before filing its Complaint when Internet searches using the keyword terms "Southwest Airlines Tickets" and using search engines like Yahoo! These searches began retuning results containing a hyperlink for "www.soutwestairlinetickets.com" as a top hit. Internet users who clicked on the search result containing this hyperlink were taken directly to Respondent’s website, rather than to Southwest Airlines’ website. Once at Respondent’s website, Internet users were unable to purchase tickets for travel on Southwest Airlines, but only from Southwest Airlines competitors.

Complainant’s attorneys sent a letter and email to Respondent in June 2003, advising Respondent of Southwest Airlines’ rights in the SOUTHWEST AIRLINES name and mark, asserting that Respondent’s registration and use of the southwestairlinetickets.com domain name violated Complainant’s rights and requested that Respondent immediately discontinue that use and assign the Domain Name to Southwest Airlines.

Complainant alleges that Respondent failed to reply to this letter and email, that Respondent continued to use the Domain Name in dispute in connection with his website and that the hard copy of the letter sent to Respondent’s mailing address could not be delivered due to erroneous contact information provided to the Registrar by Respondent.

Complainant maintains further that shortly after it had sent its June 2003 letter, it learned that Respondent had registered numerous other domain names which also incorporate the SOUTHWEST AIRLINES name and mark and which direct Internet users to Respondent’s website.

In September 2003, Complainant contacted and requested Qixo, an organization that licenses Internet search engine technology to the Respondent, requesting that it secure Respondent’s cooperation in ceasing the registration and use of the disputed Domain Names, in order to avoid Complainant initiating formal action against Respondent. Complainant alleges that it believed that Respondent was made aware of this request, that Respondent did not cease the registration and use of the disputed Domain Names, and that Respondent took immediate steps to obscure his bad faith use by redirecting the Domain Names to resolve Southwest Airlines’ "www.Southwest.com" website. In particular, Respondent posted a "pop up’ screen advertising "FreeFareQuotes’ and also containing live links to direct Internet Users back to Respondent’s website. In support of this assertion, Complainant submits copies of the screen shots Internet viewers see when they are directed to Respondent’s website via one of his Domain Names.

Complainant contends the following under Paragraph 4(a) of the Policy: (1) that the Domain Names in dispute are identical to or confusingly similar to the trademarks or service marks in which Southwest Airlines has rights, and (2) that the Respondent has no right to or legitimate interest in the Domain Names, and (3) the Domain Names were registered and are being used in bad faith. Specifically, Complainant contends that Respondent’s purpose in registering the Domain Names is to wrongfully misappropriate the goodwill symbolized by the SOUTHWEST AIRLINES mark and to capitalize from that goodwill by attracting internet users to Respondent’s website. Complainant requests that the Domain Names be transferred immediately to it.

The Respondent did not reply to the Complainant’s contentions.

Respondent’s Domain Names are confusingly similar to Complainant’s trade marks and names. Six of the eight Domain Names in dispute incorporate SOUTHWEST AIRLINES trade name and registered mark in its entirely. The remaining two Domain Names, <southwestairfares.com> and <southwest-air-tickets.com> fully incorporate Southwest Airlines registered SOUTHWEST mark. The Panel notes that Respondent has included hyphens into some of the Domain Names or added a generic term to Southwest Airlines mark. However, despite these variations, the names remain confusingly similar to Complainant’s mark and name. It is clear that, under the Policy, the addition of a hyphen does not render a name that is confusingly similar "unconfusing" as a consequence of the hyphen. (For comparable reasoning, see Easyjet Airline Co. v. Harding, WIPOCase No. D2000-0398). Nor does the addition of a generic term, such as the words "fares’ or "reservations" to the Complainant’s well known mark overcome the label "confusingly similar." (See too D'Ita Corporate Identity, Inc, v. Patrick Ory, NAF Case No. FA0111000109375).

The Panel holds that it is reasonable to assume that Respondent’s registration and use of the disputed Domain Names is confusing Internet users who mistakenly assume that the disputed Domain Names are somehow associated with Complainant. That confusion is likely to arise when, in searching for Complainant’s website, Internet users are directed to Respondent’s website, rather than to Complainant’s.

Respondent has no right to or legitimate interest in the Domain Names in dispute. It is apparent, from a series of prior domain names disputes, including but not limited to those administered by the WIPO, that Respondent is a serial cybersquatter who targets famous travel industry companies and incorporates their trademarks and names into domain names that divert Internet users to Respondent’s website. Domain name cases finding against Respondent include Complainants that are famous travel companies, such as Delta, American West Airlines, Alamo and Dollar Rent-A-Car, Best Western International, Wizard Co, and European International. See eg. Delta Corporate Identity, Inc. v. Patrick Ory (NAF Case No. FA0111000109375); America West Airlines v. Patrick Ory (NAF Case No. FA0111000146942); Alamo Rent -A-Car Management, LP v. Patrick Ory (WIPO Case No. D2001-1286); NCRAS Management, LP v. Patrick Ory (WIPO CaseNo. D2001-1287); Dollar Rent A Car Systems, Inc. v. Patrick Ory, (NAF Case No. FA0111000112560); Dollar Rent A Car Systems, Inc. v. Patrick Ory (NAF Case No. FA0111000125229); Best Western International, Inc. v. Patrock Ory (NAF Case No. FA0111000128709); Wizard Co., Inc. v. Patrick Ory (NAF Case No. FA0111000137220); Europcar International v. Patrick Ory (NAF Case No. FA0111000142133).

It is evident in the instant case that Respondent’s sole purpose in registering and using the disputed Domain Names is to divert Internet users to Respondent’s website and to offer travel-related services that compete directly with those services provided by Complainant. Respondent’s registration and use is clearly contrary to paragraph 4(c)(i) and (iii) of the Policy, in Respondent’s failure to establish any legal right to or interest in the Domain Names in dispute. That failure is apparent in the registration of confusingly similar domain names to the famous marks and name of the Complainant, in the unauthorized use of Complainant’s marks and name, and in the use of those names for profit in direct competition to the Complainant. Respondent has also sought to advantage itself by resort to Domain Names that are confusingly similar to a famous trade name that is in no way attributable to the Respondent. See Dollar Rent A Car Systems, Inc. v. Patrick Ory, (NAF Case No. FA0111000112560); Wizard Co., Inc. v. Patrick Ory (NAF Case No. FA0111000137220); Delta Corporate Identity, Inc. v. Patrick Ory (NAF Case No. FA0I11000109375).

Respondent’s bad faith use of the Domain Names in dispute therefore constitute ex post evidence of the absence of a legally cognizable interest from the outset.

Respondent clearly has an economic interest in the Domain Names it has registered and used. But that interest is grounded on the absence of a reasonable legal link or nexus between Respondent’s business and the Domain Names in dispute. Respondent is in the travel business. However, Respondent is not in the travel business as Southwest Airlines, any more than it is in that business as American West or Delta Airlines, or National Car or Alamo Rental, as past panels have held (see supra). Respondent has no right to or legitimate interest in being either confused or identified with any of these famous trade names.

Respondent has registered the disputed Domain Names in bad faith, inter alia, in accordance with Paragraph 4(a)(iii) of the Policy. Respondent is using the Domain Names in issue to intentionally attract Internet users to his website for the purpose of commercial gain. Respondent is intentionally attempting to create confusion in the minds of Internet users between the source of Respondent’s mark and name by deliberately creating the impression that Complainant has sponsored the use of those names, and that those names are affiliated with or otherwise endorsed by the Complainant. Respondent is also in bad faith in using those Domain Names to compete directly with Complainant, and to trade off Complainant’s goodwill by persistently diverting Internet traffic to Respondent’s website at the direct expense of Complainant. See further WizardCo., Inc. v. Patrick Ory (NAF Case No. FA0111000187220).

It is true that Respondent has not actually used all the disputed Domain Names as links to his website. For example, the <southwest-airlines.biz> and <southwestairfares.com> Domain Names are not currently linked to an accessible website. Nevertheless, there is a reasonable apprehension that, unless this Panel grants the relief sought by Complainant, it is reasonable to assume that Respondent will subsequently use these as yet unused Domain Names in precisely the same manner as he has used the other Domain Names, namely, to divert Internet traffic away from Southwest Airlines' websites and to Respondent's "www.CheapTravelNetwork.com" website. As a legal matter, the act of "passive holding" domain names in this way constitutes their bad faith use under the Policy. See, e.g., Pelle Pelle, Inc. v. Nikolenko, WIPO CaseNo. D2002-1002; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Compaq Computer Corporation v. Boris Beric, WIPOCase No. D2000-0042; InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075; Association of British Travel Agents Ltd. v. Sterling Hotel Group Ltd., WIPO Case No.D2000-0086; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Sanrio Company, Ltd. and Sanrio, In . v. Neric Lau, WIPO Case No. D2000-0172; J. Garcia Carrion, S.A. v. M°Jose Catalan Frias, WIPO Case No. D2000-0239; WIPO Case No. D2000-0515; Teledesic LLC v. McDougal Design, WIPO Case No. D2000-0620; Clinica Corachan; S.A. v. Fc Team Car, SL., WIPO Case No. D2000-0723; Red Bull GmbH v. Harold Gulch, WIPO Case No. D2000-0766).

Insofar as a parallel can be drawn between persistent bad faith in private and criminal law, Respondent is an "habitual offender." Respondent is self-evidently engaged in a pattern of bad faith conduct by repeatedly targeting a series of trade mark and domain name holders in the travel industry, well beyond Complainant. Respondent has repeatedly been found to have acted in bad faith in such conduct. Respondent continues to replicate the self-same bad faith conduct in materially similar circumstances to the instant case. See NAF Case No.FA0111000146942.

Notwithstanding that Respondent’s bad faith practice was condemned by prior panels and the disputed Domain Names in issue were transferred to Complainants, there is every indication that these remedies, at best, temporarily impeded Respondent’s bad faith conduct, without curtailing it. It may well be that expedited procedures and rules will be developed over time directed at limiting the bad faith actions of serial cybersquatters. However, such procedures and rules have not developed to date within an otherwise cogent regime of domain name Policy, Rules and Supplemental Rules. (On such policies and rules, see"www.icann.org/udrp/adrp-policy-24oct99.htm". On the ICANN Rules, see "www.icann.org/udrp/udrp-rules-24oct99.him". On the WIPO Center's Supplemental Rules and other information relating to the resolution of domain names, see "arbiter.wipo.intldomains".)

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the following Domain Names be transferred to the Complainant:

<southwestairfares.com>
<southwest-airlines.biz>
<southwest-airlines-fares.com>
<southwestairlinesreservation.com>
<southwest-airlines-reservations.com>
<southwest-airlines-tickets.com>
<southwestairlinetickets.com>, and
<southwest-air-tickets.com>