WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Secret Flying Ltd v. Linghost, Ryan Ben
Case No. D2015-1164
1. The Parties
The Complainant is Secret Flying Ltd of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Adlex Solicitors, United Kingdom.
The Respondent is Linghost, Ryan Ben of San Diego, California, United States of America (“United States”), self-represented.
2. The Domain Names and Registrar
The disputed domain names <secretflier.com> and <secretflyer.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2015. On July 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 8, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Respondent sent an email to the Center on July 8, 2015 making arguments in reply to the Complaint. The Center indicated to the Respondent that it was verifying the formal requirements of the Complaint and that the Respondent will be notified of the commencement of the proceeding.
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 the Respondent of the Complaint, and the proceeding commenced on July 14, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2015. The Response was filed with the Center on July 31, 2015.
The Center appointed Luca Barbero as the sole panelist in this matter on August 10, 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.
On August 13, 2015, the Complainant submitted a Supplemental Filing. On August 14, 2015, the Respondent sent an email communication to the Center in reply to the Complainant’s Supplemental Filing.
4. Factual Background
The Complainant is a company incorporated in the United Kingdom on February 4, 2015, which provides information on worldwide flight deals online under the name “Secret Flying” via its web site “www.secretflying.com”.
The Complainant’s domain name <secretflying.com> was registered on August 23, 2014.
The Complainant’s business, which was originally started by the Complainant’s founder as a sole trader, was founded in September 2014.
On May 31, 2015, the Complainant applied for the United Kingdom series of trademarks SECRET FLYING, SECRET FLYER and SECRET FLYERS, which was assigned the Application Number UK00003111114, in class 39. On June 2, 2015; the Complainant also applied for a United States trademark (Application Number 86648196) for SECRET FLYING, bearing the first use date of September 14, 2014.
The disputed domain name <secretflyer.com> was registered on May 13, 2015, and has been pointed to a web site, available at “www.secretflyer.com”, providing information on travels and flight services under the name “Secret Flyer”.
The Complainant’s solicitor sent a cease and desist letter to the Respondent on June 4, 2015.
The Respondent replied to said communication on June 5, 2015. On the same day, the Respondent registered the disputed domain name <secretflier.com>, which is redirected to the web site at “www.secretflyer.com”.
5. Parties’ Contentions
The Complainant submits that, since it started trading in September 2014, there have been nearly 700,000 visitors to the Complainant’s web site, with some 1.8 million user sessions and over 4 million page views. The Complainant further states that over 800,000 sessions and 300,000 users were from the United States, over 400,000 sessions and 185,000 users from Canada; and over 150,000 sessions and 48,000 users from the United Kingdom. In order to support its allegations, the Complainant attaches to the Complaint information taken from Google Analytics for the period between September 14, 2014, and July 2, 2015.
The Complainant asserts that it consistently uses Facebook to promote its services and that the Complainant’s Facebook page, named “Secret Flying”, has also reached a significant following, with over 75,000 “likes” recorded by its fans as of June 29, 2015. According to the Facebook statistics submitted by the Complainant, the “likes” received by the Complainant’s Facebook page come from users in many countries, with nearly 30,000 from the United States; over 20,000 from Canada; and over 5,000 from the United Kingdom. In addition, the Complainant’s posts have consistently been served to over 20,000 users.
The Complainant has also marketed its services by physically distributing thousands of flyers in central London, over the period January to June 2015. Enclosed to the Complaint are a sample of said flyers and an invoice issued in January 2015 to the Complainant for the printing of 10,000 flyers.
The Complainant states that, as of June 3, 2015, the disputed domain name <secretflyer.com> has been pointed to the Respondent’s web site at “www.secretflyer.com”, offering flight deals in competition with the Complainant under the name “Secret Flyer”. The Complainant highlights that this name appears in the middle of a large blue sky dominated photograph which the Complainant alleges to be similar to the appearance of the Complainant’s home page. The Complainant further asserts that the layout of the flight deals on the Respondent’s web site is similar to those of the Complaint; in particular, like the Complainant, the Respondent displays the deals in rows of rectangular boxes, the top section of which features an eye catching photograph, with the details of the deal set out immediately underneath including the destination in bold, additional descriptive text below and social media links at the bottom of each box. The Complainant further submits that the mobile version of the Respondent’s web site is also strikingly similar to that of the Complainant.
The Complainant states that, at some point following the Complainant’s communication of June 4, 2015, the Respondent removed the web site at “www.secretflyer.com” and that, as of June 11, 2015, a new version of the Respondent’s web site at “www.secretflyer.com” had been uploaded. The Complainant notes that the layout of the home page was altered so that it no longer displayed flight deals in rows of rectangular boxes and that above the deals, the Respondent added stories relating to the aviation industry which appear to have been copy and pasted from sources online. The Complainant also states that the disputed domain name <secretflier.com> has been redirected to the web site at “www.secretflyer.com” as of July 1, 2015.
The Complainant relies on common law rights, stating that, by virtue of its extensive trading and marketing activities outlined above, it has acquired substantial reputation and goodwill in the unusual and distinctive name “Secret Flying” such that it is recognized by the public as distinctive of the Complainant’s business offering cheap flight deals online. Furthermore, the Complainant alleges that the Respondent set out to attract business intended for the Complainant, and that such activity by the Respondent presupposes that the Complainant’s business was known and identified by its name.
The Complainant contends that the disputed domain names are confusingly similar to the Complainant’s trademark SECRET FLYING since, disregarding the domain name suffixes, the terms “Secret Flyer” and “Secret Flier” comprised in the disputed domain names are visually, aurally and, indeed conceptually, similar to the trademark SECRET FLYING. The Complainant also points out that the terms “flier” and “flyer” are interchangeable alternative spellings for the same term.
With reference to the Respondent’s rights or legitimate interests, the Complainant informs the Panel that it has no association with the Respondent and has never authorized or licensed the Respondent to use its trademark.
The Complainant contends that the disputed domain names are not used for bona fide offering of goods or services since the Respondent has clearly used the disputed domain names and the Complainant’s trademark to disrupt the business of a competitor and/or to attract, confuse and profit from Internet users seeking the Complainant. The Complainant cites a paragraph of the decision rendered in the prior UDRP case Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“use which intentionally trades on the fame of another can not constitute a ‘bona fide’ offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy”), and America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (finding that “[I]t would be unconscionable to find that a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”). The Complainant submits that that the same applies in the present case as the Respondent’s web site has been used to offer similar services to those offered by the Complainant.
The Complainant further states that the Respondent cannot claim to be commonly known by the disputed domain names as they were not registered and used in connection with an apparent bona fide offering of goods or services. The Complainant also claims that it is clear that the Respondent was out for commercial gain.
As to the bad faith requirement, the Complainant asserts that the Respondent registered the disputed domain names for the purpose of unfairly disrupting the business of the Complainant by diverting business intended for the Complainant. The Complainant submits that the Respondent is its competitor as it offers services similar to those of the Complainant. The Complainant asserts that the Respondent was clearly aware of the Complainant and its business when it registered the disputed domain names, and has not denied this in its correspondence.
The Complainant also submits that the Respondent’s web site is essentially a scheme adopted by the Respondent to confuse, attract and profit from Internet users searching for the Complainant’s business in search engines, web browsers and otherwise on the Internet, and alleges that the Respondent had the Complainant and its business in mind when registering and using the disputed domain names since: i) the Complainant’s letter of June 4, 2015 specifically asserted that the Respondent was aware of the Complainant and the Respondent’s reply of June 5, 2015 did not deny this circumstance; the term “Secret Flying” is an unusual combination of words to use in this context and the Respondent simply asserted, without any explanation, that “use of words and meaning” of “Secret Flyer” is different to “Secret Flying”; iii) the Respondent is a direct competitor of the Complainant and for that reason alone was bound to be aware of the Complainant’s substantial pre-existing business; iv) contrary to the Respondent’s claim, the Complainant did indeed possess an unregistered trademark for SECRET FLYING in the United States, as well as the United Kingdom, as at the date of the Respondent’s registration of the disputed domain name <secretflyer.com>.
The Complainant highlights that the Complainant’s United States trademark application shows that it has been using its mark in the United States since September 14, 2014 and that most of the Complainant’s business is centered in said country, as highlighted by the Google Analytics and Facebook screenshots submitted by the Complainant, showing that as of May13, 2015, there had been some 600,000 user sessions by approximately 230,000 unique visitors from the United States and approximately 54,000
Facebook likes worldwide, the majority of which was likely based in the United States.
With respect to its United Kingdom trademark application, which was filed after the registration date of the disputed domain name <secretflyer.com>, the Complainant states that it was a defensive move to protect its position in the United Kingdom once it became aware of the existence of the disputed domain name <secretflyer.com>, as the Complainant was concerned that the Respondent might take some other aggressive or infringing step to target the Complainant’s business in the United Kingdom. For the same reason, the Complainant registered <secretflyer.co.uk> and other similar domain names on June 11, 2015.
The Complainant asserts that the Respondent’s claim that it registered the disputed domain name <secretflyer.com> in good faith and not to cause confusion with the Complainant is implausible because the Respondent was clearly aware of the Complainant when it registered <secretflyer.com> and the use of this domain name which is confusingly similar to the Complainant’s trademark (and likewise <secretflier.com>), together with the similarities in the layout and appearance of its web site, was clearly an attempt to target Internet users searching for the Complainant’s business and to create a likelihood of confusion in the minds of the public as to an association between the Respondent and the Complainant. The Complainant informs the Panel that it is aware of a number of occasions where third parties have mistakenly referred to the Complainant as “Secret Flyer”, showing that there is a very high likelihood that the disputed domain names have been, and will be, confused with the Complainant. Examples from the Complainant’s Facebook page and third party travel forums “www.redflagdeals.com” and “www.flyertalk.com”, as well as from Twitter, have been submitted as an attachment to the Complaint.
The Complainant further states that it is obvious that the Respondent was intent upon commercial gain as it provides commercial services at the web site published at the disputed domain name <secretflyer.com>.
As indicated above, after receiving the Complainant’s cease and desist letter, the Respondent chose to take down the web site at the disputed domain name <secretflyer.com> and to change its content, although it did not comment on this in its letter. The Complainant submits that this is an admission by the Respondent that its previous use was illicit.
The Complainant further alleges that the Respondent’s underhand action in registering the disputed domain name <secretflier.com> on the very day that it responded to the Complainant shows that the Respondent has the propensity to behave in a deceptive manner and is yet further evidence of the Respondent’s bad faith. The Complainant concludes that, if the Respondent were acting honestly, it would at least have mentioned the new registration in its letter, and that the Respondent’s silence shows that its purpose in registering the new domain name, which is simply an alternative spelling of <secretflyer.com>, was as a fall-back because it expected to lose the disputed domain name <secretflyer.com> in a UDRP proceeding.
The Respondent rebuts the Complainant’s contentions and preliminarily states that it replied to the Complainant’s letter dated June 4, 2015 with a proof showing that SECRET FLYER was not registered as the Complainant’s trademark and the Complainant did not make any use of it prior to the registration of the disputed domain name <secretflyer.com> by the Respondent.
The Respondent submits that the Complainant owns a relatively new web site, operated as a limited liability company in the United Kingdom only since February 2015, that the Complainant’s domain name <secretflying.com> was registered on August 23, 2014, and that the Complainant never used the trademark SECRET FLYER.
The Respondent states that it had never intended the web site to be based on the Complainant’s reputation and that, even if the Respondent was aware of the existence of the Complainant’s web site, which is not the case, it would not be able to have information about the reputation of the Complainant, since the reports submitted by the Complainant with data of the Complainant’s web traffic is not visible to the public and the Respondent does not have access to the Complainant analytics reports in order to view and analyze its performance. The Respondent also states that the data included in the report alone do not point to significant well-known international reputation as the Complainant tried to claim.
With reference to the Complainant’s quotation of Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, supra involving the well-known trademark MADONNA, the Respondent claims that the Complainant’s example is invalid since that case involved a famous identical trademark that is commonly associated with the world famous singer. The Respondent contends that a valid example in this case is Smart Destinations, Inc. v. Jeffrey Paolini, WIPO Case No. D2005-0995, where the panel acknowledged: “The key issue presented by this case is the question of bad faith registration and use. At the time the Domain Names were registered, Complainant’s use of its alleged marks was limited”.
The Respondent asserts that it is not offering similar services to compete with the Complainant as the Respondent is in the progress of becoming an online travel magazine while the Complainant only lists deals with links to products and services of other companies. The Respondent further states that the Complainant does not provide or produce the services and products that it advertises and that, unlike a well-known company, which sells its branded products and services and can be affected by another entity that offers the same or similar products and services based on the success of the first’s trademark, the Respondent has no effect on the performance and success of the Complainant or vice versa.
The Respondent contends that the Complainant’s name and the disputed domain name <secretflyer.com> are not identical or confusingly similar, since the meaning and the use of the terms are different: “secret flying” is the act of flying secretly, which is often referred to the person or organization operating an aircraft such as a pilot, airline and military force; “secret flyer” is descriptive of a person, which is more often referred to a passenger.
The Respondent submits that the alphanumeric string of the domain name is not enough to cause confusion and that there are many web sites that share even closer alphanumeric structure, do business in the same category and are not confusingly similar, such as <abcnews.com>,<bbcnews.com> and <nbcnews.com>.
As to the Complainant’s assumption that Internet users often confuse “Secret Flyer” with its name, the Respondent highlights that the Complainant only presented single cases where users referred “Secret Flyer” to its web site and not the other way around. The Respondent further states that the incidents presented by the Complainant, where Internet users confused the name “Secret Flyer” with its name are from the time before the disputed domain name <secretflyer.com> was registered and, in these incidents, a link to the Complainant’s web site was included by users, thus, excluding actual confusion. The Respondent points out that, if the Complainant genuinely believed that Internet users were often confused, it could register <secretflyer.com> as its domain when it was available, long before it was registered by the Respondent.
The Respondent asserts that it is wrong to conclude that the disputed domain name <secretflyer.com> can be confused or associated with the Complainant’s web site based on the single cases presented by the Complainant. The Respondent submits evidence of the low traffic to its web site at “www.secretflyer.com” since its early beginning of operation and underlines that majority of it is known to be, partners, potential partners and contributors associated with the operation of the web site. The Respondent concludes that, if the web-traffic data presented by the Complainant is correct and the claim that users are often confused between the two web sites were true, there would be much higher number of users visiting “www.secretflyer.com”.
Moreover, the Respondent indicates that results from search engines do not cause confusion between the two web sites, since, when searching for the term “Secret Flying” on Google, the Respondent’s web site does not appear in the search results and, when searching for the term “Secret Flyer” on Google, the Complainant’s web site does not appear in the search results.
The Respondent states that it has a legitimate interest in the disputed domain name <secretflyer.com> as it will use it in connection with an online travel magazine. The Respondent claims that it had planned to create a travel web site for long time and have been developing a business plan since 2012.
The Respondent denies the Complainant’s assertion that the disputed domain name <secretflyer.com> is published on search engines to attract its users, stating that, as of today and since the beginning of its operation, its web site is not visible to search engines and will not be visible until a mature phase. The Respondent also states that, as a courtesy and to avoid any conflict with the Complainant, the Respondent offered to include a visible notice on the web site “www.secretflyer.com” for limited time, in order to “make it clear that <secretflyer.com> is not <secretflying.com>”. The Respondent states that it could go even further to make sure the Complainant is satisfied with the changes so visitors are not confused with its web site but never heard back from the Complainant or its attorney after replying to the Complainant’s letter dated June 4, 2015.
The Respondent confirms that, after the Respondent was contacted by the Complainant, the Respondent did change the look of the index page of its web site to make sure that it was completely distinguished from the Complainant’s web site, since the initial draft of the web site was incidentally similar to the one of the internal pages of the Complainant’s web site and was inspired by the look of major airlines and travel websites. The Respondent highlights that the format of the deals, containing a title and a photo of the destination, is commonly used by many web sites.
The Respondent states that its idea to list flight deals on the index page had nothing to do with the Complainant’s web site and was anyway planned to exist in that format only until collecting enough content for the web site as online travel magazine.
The Respondent asserts that, nevertheless, by changing the look of the index page, it does not admit any “illicit use”, as the Complainant claimed. It also points out that its web site includes original content, travel tools and news from other sources used by permission, and that the web site will include in the future even more sections, content and features, leaving no doubt that the Respondent’s web site is not the Complainant’s web site.
The Respondent states that it registered the disputed domain name <secretflyer.com> in good faith. It informs the Panel that, at the beginning of May 2015, it initiated the execution of its business plan, searching for available domain names with different combinations of words related to travel. The Respondent states that it was not aware of any reputable business using the name “Secret Flyer” as its name or trademark, and that the choice of the name came from the idea of “Secret Flyer” referred to airline “insider”, which is an experienced traveler who knows all about traveling and can share his tips and stories of traveling with others.
The Respondent underlines that the disputed domain names <secretflyer.com> and <secretflier.com> contain the same words with different spelling and states that any reference to <secretflyer.com> in its Response also applies to <secretflier.com>. The Respondent also claims that the reason for registering <secretflier.com> was to protect its right and avoid the Complainant from challenging it by registering said domain name as the Complainant registered the domain name <secretflyer.co.uk> and the trademark SECRET FLYER although it was aware of the Respondent’s use of the name. The Respondent further submits that, by registering the above domain name and trademark, the Complainant acted in bad faith.
C. Complainant’s Supplemental Filing
The Complainant requests that the Panel exercise its discretion to admit its Supplemental Filing and submits that there are exceptional circumstances here in that the Respondent has provided new evidence and given a version of events which is inconsistent with what it said in its June 5, 2015 letter and the Complainant could not reasonably have known of the existence of the new material when it filed the Complaint.
The Complainant highlights that the Respondent claims that it was unaware of the Complainant when it registered the disputed domain name <secretflyer.com>, but made no mention of this in its June 5, 2015 letter, responding to the Complainant’s letter which specifically asserted its awareness. The Complainant further states that the Respondent claims that it selected the disputed domain name <secretflyer.com> based on an “airline insider”, an allegedly experienced traveler sharing tips, but has produced no evidence in support of such usage and, in any case, “the route from ‘airline insider’ to ‘secret flyer’ is far from obvious”.
The Complainant underlines that the Respondent did not deny the Complainant’s specific assertion that the Respondent was a competitor of the Complainant in its letter of June 5, 2015 and that, when the Complainant sent its cease and desist letter, the Respondent was using its site only for flight deals, and only shortly after the Complainant’s letter the Respondent first added some travel articles, then claiming that it was “in the progress of becoming an online travel magazine”.
The Complainant states that the advertisement for a “travel startup” submitted by the Respondent to substantiate its claimed use of the disputed domain name <secretflyer.com> in connection with a travel magazine could apply equally to the Respondent’s deal web site directly competing with the Complainant. The Complainant also points out that the Respondent has not produced its alleged 2012 business plan, nor has it explained exactly why it needed to place the flight deals on the site until it collected “enough content” for the travel magazine.
The Complainant reiterates that it had prior extensive unregistered rights in the name “Secret Flying”, when the Respondent registered the disputed domain name <secretflyer.com>.
The Complainant also highlights that in the case cited by the Respondent, Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182, there was no evidence that the complainant had used the relevant trademark prior to the registration of the domain name; whereas in this case there is extensive evidence of prior use in the Respondent’s country and in the same industry.
The Complainant also states that the Complainant did not take up the Respondent’s suggestion of a disclaimer because the disputed domain names have already been used in bad faith without a disclaimer; and in any event a disclaimer would not prevent initial interest confusion.
D. Respondent’s Reply to the Complainant’s Supplemental Filing
The Respondent replies to the Complainant’s Supplemental Filing stating that the Complainant is trying to twist the facts and present its assumptions as the facts, that the Respondent was not obligated to share any information on its plan for the disputed domain name <secretflyer.com> prior to the official response and that it would provide any proof of evidence requested by the Panel to support the information provided in its Response.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or a service in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
A. Preliminary Issue: the Parties’ Supplemental Filings
According to the consensus view of the UDRP panels as summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2, it is in the panel’s discretion whether to accept Supplemental Filings, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting the supplemental filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. In addition, most UDRP panels that have allowed unsolicited filings have also tended to require some showing of “exceptional” circumstances.
The Panel has reviewed and accepted the Complainant’s Supplemental Filing but has determined that it is mostly irrelevant to decide the present case.
In its reply to the Complainant’s Supplemental Filing, the Respondent states that it will be able to provide additional evidence concerning its projects on the use of the disputed domain name <secretflyer.com> upon request of the Panel. The Panel notes that a request for supplemental evidence to the Respondent would be aimed at obtaining additional elements to assess the Respondent’s asserted legitimate interests in the disputed domain names. However, based on the finding below, it is not necessary for the Panel to request additional documentation from the Respondent.
B. Identical or Confusingly Similar
The Complainant does not rely on any registered trademark rights. As highlighted in the paragraphs above, the Complainant has filed a trademark application in the United Kingdom for the series of marks SECRET FLYING, SECRET FLYER and SECRET FLYERS and a trademark application in the United States for SECRET FLYING, both of which are currently under examination.
Therefore, the Complainant relies on common law rights that it claims to have established in SECRET FLYING.
As stated in paragraph 1.7 of the WIPO Overview 2.0, in order to successfully assert common law or unregistered trademark rights, the Complainant must show that the name on which it relies has become a distinctive identifier associated with the Complainant or its goods or services. Relevant evidence of such “secondary meaning” includes “length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant’s claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted”.
The Panel notes that the expression “secret flying” is composed of dictionary terms that may be descriptive or suggestive of flight-related services which are provided on the Complainant’s web site. Therefore, the Panel finds that the name “Secret Flying” is not inherently distinctive, and that, as such, there is a greater onus on the Complainant to present compelling evidence of secondary meaning or distinctiveness.
In order to demonstrate that it has common law rights in SECRET FLYING, the Complainant has submitted that it started trading in September 2014 and that, since then, there have been nearly 700,000 visitors to its web site “www.secretflying.com”, with some 1.8 million user sessions and over 4 million page views. The Complainant also stated that over 800,000 sessions and 300,000 users were from the United States, where the Respondent is based. To support its allegations, the Complainant has submitted Google Analytics reports for the period between September 14, 2014, and July 2, 2015. The Complainant has also highlighted that its Facebook page named “Secret Flying” has reached over 75,000 “likes”.
The Complainant has also submitted copy of an invoice issued in January 2015 − for the amount of GBP 162, for the printing of 10,000 flyers advertising the web site “www.secretflying.com” and using the name “Secret Flying”, that were apparently distributed in London over the period January to June 2015.
The Panel notes that the figures cited in the Complaint are not provided in any particular comparative context (such as the occurrence of the same or similar numbers for other brands in the Complainant’s area of trade or otherwise); i.e., these figures alone do not demonstrate the extent of any reputation in the name “Secret Flying”.
Nevertheless, the Panel finds it unnecessary to make a determination on whether the Complainant has provided sufficient evidence of its use of the expression “Secret Flying” to establish rights in a mark for purposes of the first element based on the finding below.
C. Rights or Legitimate Interests and Registered and Used in Bad Faith
The Panel notes that the Complainant and the Respondent appear to provide similar services under similar names, both comprised of terms which are descriptive or suggestive of their services. The Complainant operates under the name Secret Flying at “www.secretflying.com”, while the Respondent operates under the name Secret Flyer at “www.secretflyer.com” (and thereafter registered the second disputed domain name comprised of the alternate spelling, “flier”, which redirects to “www.secretflyer.com”). Both Parties offer services related to flight deals using a layout akin to other providers in the similar field and have been operating their respective services for a relatively short period. The Complainant was not incorporated until February 2015 (although its business may have been founded in September 2014), and the Respondent registered the <secretflyer.com> domain name on May 13, 2015.
Given the circumstances of this case and the limited nature of Policy proceedings designed for clear cases of cybersquatting, the Panel finds that whether the Respondent has rights or legitimate interests or acted in bad faith cannot be plainly determined based solely on the record in this case, and the Parties are not prevented from seeking redress in a court of competent jurisdiction.
For the foregoing reasons, the Complaint is denied.
Date: August 24, 2015