WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bombardier Aerospace Corporation d/b/a/ Flexjet v. BluebellyFX, inc.
Case No. D2001-0802
1. The Parties
The Complainant is Bombardier Aerospace Corporation d/b/a Flexjet, a corporation organized and existing under the laws of the State of Delaware, with its principal place of business located at 14651 Dallas Parkway, Suite 600, Dallas, Texas 75240, USA.
The Respondent is BluebellyFX, inc (sic), with a business address at 123 Main Street, Chicago, Illinois 76001, USA.
2. The Domain Name and Registrar
This dispute concerns the following domain name:
The Registrar with which this domain name is registered is eNom, Inc., located at 16771 Northeast 80th Street, Suite 100, Redmond, Washington 98052, USA.
3. Procedural History
On June 18, 2001, the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") received a Complaint by hard copy (and by e-mail on June 24, 2001) for a decision in accordance with 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").
On June 21, 2001, the WIPO Center acknowledged receipt of the said Complaint and notified the Complainant of a Complaint deficiency. On June 24 and June 25, 2001, the Complainant corrected the deficiency, and the WIPO Center acknowledged the corrections on June 25, 2001.
On June 26, 2001, the WIPO Center sent a Request for Registrar Verification to the Registrar. On June 26, 2001, the Registrar, eNom, Inc., confirmed to the WIPO Center that it was the Registrar of the said Disputed Domain Name and also that the current registrant of the said Domain Name was the Respondent.
On June 27, 2001, having found that the Complaint had satisfied the formal requirements of the Policy, the Rules, and the Supplemental Rules, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding (the "Notification") by post/courier, and e-mail to the Respondent and transmitted electronically copies of said documents to the Complainant, ICANN, and the Registrar. The said Notification particularized the formal date of the commencement of this administrative proceeding as June 27, 2001, and required the Respondent to submit a Response to the Complaint within 20 calendar days from the date of receipt of the Notification, failing which the Respondent would be considered to be in default.
The Respondent failed to file the Response with the WIPO Center by the last date, i.e. July 16, 2001. On July 17, 2001, the WIPO Center sent the Notification of Respondent Default to the Respondent by e-mail and copied the Complainant. The Complainant elected to have the dispute decided by a single-member panel (the "Panel"). On July 30, 2001, the WIPO Center appointed Mr. Terrell C. Birch to be the panelist after receiving a Statement of Acceptance and Declaration of Impartiality and Independence from him and sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainant and the Respondent and copied it to the Panel by e-mail. On the same day, the WIPO Center sent a Transmission of Case File to the Panel.
Subsequently, the WIPO Center had discovered that no communication with the Respondent is possible because there is no legitimate postal or e-mail address or telephone number for the Respondent.
The Panel finds that the WIPO Center has discharged its obligations and responsibility under the Rules. The Panel will hereby issue its Decision based on the Complaint, the Policy, the Rules, and the Supplemental Rules, without the benefit of any Response from the Respondent.
4. Factual Background
A. Bombardier Aerospace and its Trademark
This Complaint is based on the following grounds:
Complainant is a provider of aircraft repair and maintenance and fueling services for passenger aircraft in the United States at least since July 19, 1995. Its services are advertised and sold under the trademark FLEXJET® that has been registered in the U.S. Patent and Trademark Office as of July 18, 2000.
The Complainant is the owner of the mark FLEXJET®.
The Complainant has acquired rights to the trademark through its use of the mark in the aircraft services industry. Since at least as early a July 19, 1995, the Complainant has been using the name in commerce. The registration is in full force and effect, and the mark is still owned and used by the Complainant. By virtue of the Complainantís use of the mark of the FLEXJET® mark in commerce, the Complainant has also acquired Common Law rights in the mark in addition to those afforded by the registration.
Complainantís FLEXJET® goods and services are well known for their high quality. The Complainant has advertised its mark FLEXJET® extensively and at great expense. It has become widely and favorably accepted by the community at large and it has enjoyed much commercial success. As a result of the unique and distinctive nature of the Complainantís mark, the goods and services offered therein, the advertising associated therewith, and widespread and favorable public acceptance and recognition, the Complainantís FLEXJET® trademark has become a strong mark and an asset of substantial and incalculable value and a symbol of the Complainant, well known and widely perceived by consumers to identify the quality products and services of the Complainant, and its favorable goodwill.
Complainant has provided goods and services under its FLEXJET® trademark in multiple states in the United States of America, as well as throughout the world.
Respondent registered and began using the domain name <flexjetpilots.com> on about January 31, 2001. The domain name at issue, <flexjetpilots.com>, is obviously confusingly similar to FLEXJET® in that the "flexjet" portion is identical to the Complainantís trade/service mark, and the "pilots" portion is a reference to the pilot of an aircraft, such as would fly on behalf of, or in the service of, the Complainant. Confusion is further caused or likely due to the fact that the website associated with <flexjetpilots.com> contained many deep links to the Complainantís website, e.g., the companyís 401K, insurance plan, in-stock purchase plan. Thus, it is likely that consumers and users will be misled into believing that <flexjetpilots.com> is run by, associated with, or sponsored by the Complainant.
The domain name at issue here is substantially identical to the Complainantís registered trademark FLEXJET®. As such, the domain name is likely to be confused with the Complainant and is confusingly similar to the Complainantís registered trademark FLEXJET®.
The Respondent has no legitimate interest in <flexjetpilots.com> for many reasons, the most illuminating being that the Respondent, BluebellyFX, inc. (sic), upon the Complainantís information and belief, does not exist! Prior to filing this complaint, the Complainant tried to contact BluebellyFX, inc. (sic), without success. The information given by the Respondent at the time of its registering of the domain name <flexjetpilots.com>, is false. There is no such address as 123 Main Street, Chicago, Illinois 76001 and the given telephone number of 717-555-1212 is nothing more that operator assistance. Furthermore, there is no record of BluebellyFX, inc. (sic) being incorporated in either the state of Illinois or the state of Texas.
Respondent did not obtain the Complainantís consent to use the trademark FLEXJET®.
5. Partiesí Contentions
Essentially, the contentions of the Complainant are as follows:
The Disputed Domain Name wholly incorporates the Complainantís FLEXJET® mark and domain name is confusingly similar to that mark,
The Respondent has no rights or legitimate interests in the Disputed Domain Name; and
The Respondent has registered and is using the Disputed Domain Name in bad faith.
In view of the fact that the Respondent has not filed a Response, the Panel is in no position to make out its contentions.
6. Discussion and Findings
6.1 Effect of Respondent's Default
By paragraph 5(b)(i) of the Rules, it is expected of a Respondent to: "[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain nameÖ"
In the event of a default, under paragraph (14)(b) of the Rules: "Öthe Panel shall draw such inferences therefrom as it considers appropriate."
As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddyís Antiques, WIPO Case No. D2000-0004 (February 16, 2000):
"Respondentís failure to present any such evidence or to deny complainantís allegations allows an inference that the evidence would not have been favorable to respondent."
In the instant administrative proceeding, the Respondentís default entitles the Panel to conclude that Respondent has no evidence to rebut the assertions of the Complainant. It enables the Panel to proceed to make a finding in favor of the Complainant.
6.2 Elements to be proven
However, paragraph 4(a) of the Policy envisages that for the Complaint to succeed, the Complainant must establish that:
i) the Respondents' Domain Name(s) is(are) identical or confusingly similar to a trademark in which the Complainant has rights; and
ii) the Respondents have no rights or legitimate interests in respect of the Domain Name(s); and
ii) the Respondents' Domain Name(s) has(have) been registered and is(are) being used in bad faith.
The Panel in Cortefiel, S.A. v. Miguel Garcia Quintas, WIPO Case No. D2000-0140 (April 24, 2000) notes that under the Policy, even if the respondent is in default,
"Öthe complainant must prove that each of these three elements are present."
6.3 Identical or Confusingly Similar
The Complainant claims and has established first use and ownership of the FLEXJET® mark. Ownership of this mark is clearly in the Complainant. Under the Policy, all that is required of the Complainant is to establish its rights in the mark, and the extent of the geographical area in which the rights accrue does not matter. The Panel has compared the Disputed Domain Name with the Complainantís FLEXJET® mark and finds that the second level domain thereof is dominated by the Complainantís mark. The Panel finds that there is such similarity in sound, appearance, and connotation between the FLEXJET® mark and the said Disputed Domain Name as to render said Disputed Domain Name confusingly similar to the Complainantís FLEXJET® mark.
6.4 Respondents' Rights or Legitimate Interests in the Disputed Domain Name
Under paragraph 4(c) of the Policy, the Respondent may demonstrate its rights and interests in the said Disputed Domain Name by showing:
i) its use of, or demonstrable preparations to use, the said Disputed Domain Name or a name corresponding to the said Disputed Domain Name in connection with a bona fide offering of goods or services before any notice to him of the dispute; or
ii) it (as individuals, a business, or other organization) has been commonly known by the said Disputed Domain Name, even if it has acquired no trademark or service mark rights; or
iii) it is making a legitimate noncommercial or fair use of the said Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence presented by the Respondent in demonstrating any of the foregoing factors because the Respondent is in default and has failed to respond in this action. Accordingly, the evidence available contains nothing that may justify a legitimate noncommercial or fair use of the said Disputed Domain Name by the Respondent. Neither is there any evidence for any of the other two foregoing requirements.
Furthermore, in the absence of any license or permission from the Complainant to use its FLEXJET® name and mark or to apply for or use any domain name incorporating that mark, it is clear that no actual or contemplated bona fide or legitimate use of the contested domain name could be claimed by the Respondent. Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 (March 21, 2000).
6.5 Registration and Use in Bad Faith
As stated by the panel in World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001 (January 14, 2000) in order for the Complainant to succeed:
"... the name must not only be registered in bad faith, but it must also be used in bad faith."
The Complainant must prove that the Respondent registered and also used the said Domain Name in bad faith in order to establish Ďbad faithí on the part of the Respondent.
The Respondentís bad faith in registering and using the domain name <flexjetpilots.com> is evident in a number of ways. First, as discussed above, the Respondent owns no trademark registrations that include the mark FLEXJET®, nor has it done business under a name that incorporates the FLEXJET® mark prior to the Complainant's establishment of rights in the mark.
The registration of the domain name identical to the Complainantís registered trademark can only have been intended either to confuse the Complainantís customers or as an act of cyberpiracy. Likelihood of confusion has been the basis for ICANN panels and the U.S. Courts to transfer ownership of domain names, or enjoin the use of domain names that are so identical or confusingly similar. See, e.g., Sportyís Farm L.L.C. v. Sportsmanís Market, Inc., 202 F.3d 489 (2nd Cir. 2000) (Federal Trademark Dilution Act and Anti-Cybersquatting Consumer Protection Act support injunction of domain name adopted in bad faith); E. & J. Gallo Winery v. Spider Webs Ltd., 129 F.Supp.2d 1033 (S.D. Tex. 2001) (Anti-Cybersquatting Consumer Protection Act supports permanent injunction and surrender of <ernestandjuliogallo.com> domain name to the trademark owner); Northern Light Technology, Inc. v. Northern Lights Club, 236 F.3d 57 (lst Cir. 2001) (affirming preliminary injunction of <northernlights.com> domain name based on bad faith of registrant); Joseph C. Shields v. John Zuccarini, 89 F.Supp.2d 634 (E.D. Pa 2000) (Anti-Cybersquatting Consumer Protection Act supports preliminary injunction of five domain names similar to "Joe Cartoon" trademark); Paccar, Inc. v. Telescan Technologies, L.L.C., 115 F.Supp.2d 772 (E.D. Mich. 2000) (Preliminarily enjoining use of any domain names containing the trademarks "Peterbilt" and "Kenworth" owned by the plaintiff because they are likely to cause confusion in the same marketing channels); Broadbridge Media v. Hypercd.com, 106 F.Supp.2d 505 (S.D.N.Y. 2000) (<hypercd.com> infringes "HyperCD" trademark under Anti-Cybersquatting Consumer Protection Act); OBH, Inc. v. Spotlight Magazine, Inc., 86 F.Supp.2d 176 (W.D.N.Y. 2000) (finding <thebuffalonews.com> infringes upon plaintiffís registered mark "the Buffalo News" because of dilution and consumer confusion); Ford Motor Company v. Ford Financial Solutions, Inc., 103 F.Supp.2d 1126 (N.D. Iowa 2000) (<fordfinancialsolutions.com> infringes on plaintiffís "Ford Financial" trademark and causes consumer confusion and dilution).
The Respondentís clear intent was to compromise the Complainantís use of its domain name <flexjet.com> using its registered trademark FLEXJET®. The Complainant registered the mark FLEXJET® on July 18, 2000, and the Respondent registered its domain name <flexjetpilots.com> on January 31, 2001 and established a website with many deep links to the Complainantís own website. The most reasonable inference is that the Respondent registered the domain name to confuse the Complainantís customers or to disrupt the Complainantís business. The Respondentís registration of the domain name alone constitutes bad faith use. In fact, even a completely dormant domain name can satisfy the paragraph 4(b) "use" requirement. See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, at ß7.9 (February 18, 2000). This behavior of the Respondent is in violation of paragraph 4(b)(ii) of the Policy.
For the above reasons, there is no doubt that the domain name <flexjetpilots.com> was registered and is being used in bad faith by the Respondent in violation of paragraph 4(a) of the Policy.
For all the foregoing reasons and pursuant to the ICANN Rules, paragraph 15, the Panel finds that the Complainant has proved each of the three elements of paragraph 4(a) of the Policy. The Panel requires that the said Disputed Domain Name, namely <flexjetpilots.com>, be transferred to the Complainant pursuant to paragraph 4(i) of the Policy.
Terrell C. Birch
Dated: August 14, 2001