WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Efzed Pty Ltd., Simulate Pty Ltd., Mr. Frank Zimmermann v. AviaDesign Ky, Sami Puro
Case No. D2015-0147
1. The Parties
Complainants are Efzed Pty Ltd. of North Melbourne, Victoria, Australia (“Efzed”), Simulate Pty Ltd. of North Melbourne, Victoria, Australia (“Simulate”), and Mr. Frank Zimmermann of Ultimo, New South Wales, Australia (“Zimmerman”), represented by Actuate IP, Australia.
Respondent is AviaDesign Ky, Sami Puro of Vantaa, Finland, represented by UDRP POLICE DBS, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <airlineonline.com> (the “Domain Name”) is registered with CSL Computer Service Langenbach GmbH dba Joker.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2015. On January 29, 2015, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On February 5, 2015, the Registrar transmitted by e-mail 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” or “UDRP”), 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 February 10, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2015. The Response was filed with the Center on February 19, 2015.
The Center appointed Robert A. Badgley as the sole panelist in this matter on March 3, 2015. 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
The record in this case is replete with information, allegations, and exhibits, much of which will not be recounted here because it is unnecessary to the Panel’s disposition of this case.
Complainants hold registered trademark rights in Australia for the word mark AIRLINE ONLINE, lodged on July 7, 2008 and registered on February 16, 2009 for “application software: computer software”. The AIRLINE ONLINE registration is jointly owned by Efzed and Zimmermann, who is the sole director, company secretary and shareholder of Efzed. Zimmermann is also a co-director and co-shareholder of Simulate. Efzed has authorized Simulate to use the AIRLINE ONLINE mark.
Complainants allege that, “in addition to the registered rights in the AIRLINE ONLINE name”, they “have built up a significant global reputation in the AIRLINE ONLINE name since the Complainants first commenced offering their products branded under or by reference to the AIRLINE ONLINE name in 2002”.
Complainants state that they “first used the AIRLINE ONLINE name in relation to their aviation simulation game in 2002”. In 2007, Complainants allege, they “re-launched AIRLINE ONLINE as a corporate and tertiary training tool, predominately targeted towards the U.S. aviation university market and major international airlines”. Complainants claim a “market share of approximately 80% of the U.S. Aviation Association’s aviation management courses”, and they list various universities in the United States of America, United Kingdom, Australia, and Germany among their clients. Complainants also contend that they are “prominent participants in the aviation simulation industry by offering aviation management and business simulations as a corporate training tool for major international airlines including Air New Zealand and Lufthansa”.
Geographically, Complainants assert that they provide their AIRLINE ONLINE products worldwide including in the United States, Australia, Canada, France, Germany, Switzerland, the Netherlands, the Common Wealth of Puerto Rico, Singapore, Hong Kong, China, the United Kingdom, and New Zealand. Complainants attach a series of invoices to various clients, the earliest of which is dated November 8, 2005.
Complainants operate websites at various online addresses, including “www.airlinesimulation.com”, “www.simulate.aero” and “www.efzed.com.au”. Complainants also annexed to the Complaint various screenshots of its website and its booth at various conferences. For the most part, it appears that Complainants’ array of products was advertised under the name “Airline”. For the offline products, the name “Airline5” or “Airline6” was typically used, while “Airline Online” was used to describe the online version of its product.
Respondent was formed as a Finland company in 1989 to provide IT consulting, primarily for the aviation sector. Sami Puro is one of the co-owners, who swore an affidavit in this proceeding. According to this affidavit, Puro is an experienced pilot (7,000 flying hours) and aviation enthusiast who began a website “Flight Simulator Finland” in 1998 to provide information about flight simulator software. In 2006, Respondent began to develop its own online airline simulation software under the name “AirwaySim”. In May 2011, the AIRWAYSIM mark was registered by Respondent with the United States Patent and Trademark Office.
Respondent registered the Domain Name on or about March 23, 2012. The Domain Name resolves to Respondent’s website “www.airlinemanager.net”. At that website, by clicking on the page, Internet users are redirected to Respondent’s another website “www.airwaysim.com” where the history of Respondent’s AirwaySim game is described. As respects to the decision to name the product AirwaySim in December 2006, the site states:
“The preferred name would have included the ‘Airline’ word somewhere in the name, and simply calling it Airline Game was considered. However an Australian company had at the time an old offline software called Airline and confusion between these would have been imminent so a different type of name was then considered.”
By way of further background, in May 2005, Puro contacted Complainants. According to Complainants, Respondent contacted them “to express his interest in writing a review for [Complainants’] Airline game” for Puro’s blog. According to the Complaint, “Puro was granted access to the Complainants’ Airline Online software to write his review”. In point of fact, Puro’s blog review refers to Complainants’ airline game as “Airline” or “Airline6”. At one point in the blog, Puro wrote:
“The game comes in two versions, one that is a normal PC based game, and another one that it played online through Efzed’s website. In this review I will take a look on the normal ‘offline’ version of the game, Airline6.”
In the event, Puro gave Complainants’ game a fairly favorable review. In the Complaint, it is alleged that Puro’s motive in doing the blog review was to “gain access to [Complainants’] software for the purposes of developing the Respondent’s competing AirwaySim product”.
Respondent asserts that Complainants had discontinued its AIRLINE Online simulation game sometime during the period from 2005 to 2007 and again in 2008. According to a 2008 news release, Complainants said:
“The final public scenario of AIRLINE Online will commence on Friday January 11th. Sadly the day has finally arrived when AO will no longer be available as a public simulation…”
Immediately beneath that notice was another:
“2008 holds very exciting things for AIRLINE. […] AIRLINE 6 has been re-branded to AIRLINE.”
According to Respondent, the term “Airline Online” ceased to appear on Complainants’ website until April 2010, when another news release stated:
“Last year we were approached by Interactive Simulations to provide an online version of AIRLINE. We have done this and are pleased to announce that ‘The Airline Game’ is now in final stages of testing…”
In November 2014, Complainants’ website continued to make reference to AIRLINE as a mark but not AIRLINE ONLINE. At that time, Complainants’ website described “The Airline Game” as Complainants’ “online” offering.
Complainants also allege that Respondent “has a history of acquiring domain names in which it has no legitimate interest for the sole purpose of using those domain names to redirect web traffic to its AirwaySim websites”. Among the examples of domain names in which Respondent “has no legitimate interest” are: <aviadesign.fi> [Respondent is a Finland company called AviaDesign Ky], <airwaysim.org> [Respondent holds a registered trademark AIRWAY SIM], <flightsim.fi>, <flightsimnordic.com>, and <airlinebusinesssim.com>.
Respondent asserts that Complainants have their own history of abusive domain name registrations, including: <samipuro.net>, <samipuro.org>, <airwaysim.aero>, <airwaysim.info>, and <airway-sim.biz>.
5. Parties’ Contentions
The essential factual allegations of Complainants are reflected above in the Factual Background section. Complainants assert that they have satisfied all three elements required under the Policy for a transfer of the Domain Name.
Respondent’s chief contentions are set forth in the Factual Background section. Respondent contends that it has never used the term “airline online” as a trademark, but has always used that term, or its constituent parts, in an ordinary descriptive sense. Respondent argues that Complainants’ AIRLINE ONLINE mark is weak and, in point of fact, was not actually used as a mark for many of the years during which Complainants allege that it was so used. Respondent essentially argues that the AIRLINE ONLINE mark had been abandoned by the time Respondent registered the Domain Name in March 2012.
Finally, Respondent asserts that Complainants have engaged in Reverse Domain Name Hijacking. First, Respondent argues, Complainants omitted to mention in their Complaint that they had ceased offering their online game in 2008 and rebranded their online game as “The Airline Game” in 2014. Second, Respondent argues that Complainants’ own registration of several domain names identical to Respondent’s AIRWAY SIM product or the name of its owner, Sami Puro, constitutes bad faith on Complainants’ part.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainants must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(ii) 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
The Panel need not decide this issue, in view of the Panel’s ruling on the “rights or legitimate interests” issue below.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in a Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
Complainants bear the burden of establishing that Respondent lacks rights or legitimate interests in the Domain Name. Complainants have failed to do so. It bears emphasis that Respondent’s principal Sami Puro is a longstanding aviation enthusiast, and he and his company have established a legitimate business offering airline simulation products.
It also bears noting that the mark AIRLINE ONLINE is a relatively weak trademark when used in association with an online product which simulates the operation of an airline. As Respondent points out, there are various third-party uses of the term “airline online”, including various airlines who use the term to describe their online check-in features.
The record here indicates that Respondent’s principal was clearly aware of Complainants and their flight simulation game as early as 2005. It is by no means clear, however, that Respondent was aware that Complainants’ game was marketed under the trademark AIRLINE ONLINE. The blog review written by Sami Puro in 2005 does not refer to the game as AIRLINE ONLINE. Further, even when deciding to brand its own game AIRWAY SIM in December 2006, Respondent’s allusion to “an Australian company” mentioned the term “Airline” rather than “Airline Online”. On this record, there is ample basis to conclude that Respondent was unaware that Complainants were actually using AIRLINE ONLINE as a mark in association with any airline simulation game at the time Respondent registered the Domain Name in March 2012. As Respondent argues, there is some room to conclude that Complainants had ceased using AIRLINE ONLINE by 2012. The preponderance of the selective evidence put forth by Complainants tends to indicate that they were using AIRLINE as their mark, and the term “online” appeared, sporadically, in a largely descriptive sense to distinguish Complainants’ online AIRLINE products from its offline AIRLINE products.
Respondent’s registration of the Domain Name appears to be consistent with its registration of many other domain names (wrongfully described by Complainants as illegitimate), such as <flightsim.fi> and <airlinebusinesssim.com>. The Panel concludes, based on this record, that Respondent more likely than not registered the Domain Name for the innocuous purpose of attracting Internet visitors through the descriptive use of words likely to garner interest in an airline simulation game which one plays online. Whether Complainants can make out a viable trademark or unfair competition claim in some court of law somewhere is not for this Panel to determine. On this record, and under the principles set forth under the Policy, the Panel concludes that Respondent registered the Domain Name in connection with a bona fide offering of goods or services within the meaning of Policy paragraph 4(c)(i).
Accordingly, the Panel concludes that Complainants have failed to satisfy Policy paragraph 4(a)(ii) and this Complaint must be denied.
C. Registered and Used in Bad Faith
The Panel need not decide this issue in view of its finding under the “rights or legitimate interests” head.
7. Reverse Domain Name Hijacking
Paragraph 15 of the Policy states:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
The Panel does not believe that Complainants were sufficiently candid in their Complaint. They omitted facts and presented selective evidence tending to show that AIRLINE ONLINE was being used continuously to identify and distinguish Complainants’ products throughout the history of the parties’ dealings as described in the Complaint. Although a party is expected to put forward its best case on its own behalf and is not charged with the duty of making out its adversary’s case, some modicum of candor is called for in proceedings under the Policy. The Panel must decide the case based on the materials presented by the parties, and there is no opportunity to test the allegations and selective evidence through discovery, cross-examination, and the like.
The Panel is also taking into account Complainants’ overreaching claim that Respondent has “no legitimate interest” in other domain names such as <aviadesign.fi> (Respondent’s company name) and <airwaysim.info> (Respondent’s own trademark).
If Complainants’ conduct here had been limited to some legerdemain through omission of facts, and the frivolous argument noted above, the Panel might well have stopped short of declaring Complainants culpable of Reverse Domain Name Hijacking. However, in this case it is also quite clear that Complainants find themselves guilty of the very same conduct that they would have this Panel condemn vis-à-vis Respondent. By registering a series of domain names containing the words “Airway Sim” or “Sami Puro”, Complainants come to this proceeding with unclean hands. In a court exercising equitable jurisdiction, Complainants would have been tossed out on their ear because of their unclean hands. In this proceeding, which does not expressly authorize the exercise of equitable jurisdiction, Complainants’ conduct can, and will, be condemned through the Panel’s declaration that they are guilty of Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied. The Panel further concludes that Complainants engaged in Reverse Domain Name Hijacking.
Robert A. Badgley
Date: March 15, 2015