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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gogo LLC v. BMR Securities Pty Limited

Case No. DAU2017-0030

1. The Parties

The Complainant is Gogo LLC of Chicago, Illinois, United States of America ("United States"), represented by Shelston IP, Australia.

The Respondent is BMR Securities Pty Limited of Darlinghurst, New South Wales, Australia.

2. The Domain Name and Registrar

The disputed domain name <gogoair.com.au> ("Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 23, 2017. On October 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 24, 2017, 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. On November 6, 2017, the Center received an informal email communication from the Respondent.

The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the "Policy" or ".auDRP"), the Rules for .au Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .au 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 November 7, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2017. The Respondent did not submit any formal response. Accordingly, on November 28, 2017, the Center informed the Parties that panel appointment would commence.

The Center appointed Nicholas Smith as the sole panelist in this matter on December 5, 2017. 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 Complainant is a company, based in the United States, that provides inflight Internet and entertainment services. It was established in 1991 and began offering its services under the word mark GOGO (the "GOGO Mark") in 2008 in the United States. It presently offers inflight Internet services on over 2,500 commercial airplanes pursuant to partnerships with 17 major airlines, being Aeroméxico, Aer Lingus, American Airlines, Air Canada, Alaska Airlines, Beijing Capital, British Airways, Delta Air Lines, GOL, Hainan Airlines, Iberia, Japan Airlines, JTA, United Airlines, Vietnam Airlines, Virgin America and Virgin Atlantic. The Complainant is one of the largest providers of inflight Internet services in the United States. It has taken steps to launch its inflight Internet and entertainment services in Australia in partnership with Virgin Australia.

The Complainant is the owner of trademark registrations, in various countries for the GOGO Mark, including United States trademark no. 3,680,364, which was applied for on June 26, 2007 (and registered on September 8, 2009) for various goods connected to the supply of inflight Internet. It has applied to register the GOGO Mark in Australia. The Complainant also operates a website from the domain name <gogoair.com>, which it has done since 2010.

The Domain Name, <gogoair.com.au>, was registered on July 29, 2015, and is inactive. There is no evidence that it has ever resolved to an active site.

5. Parties' Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainant's GOGO Mark;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is subsequently being used in bad faith.

The Complainant is the owner of the GOGO Mark, having registered this mark in United States and having acquired a significant reputation in the GOGO Mark prior to the registration of the Domain Name. The Domain Name is confusingly similar to the GOGO Mark.

There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent has made no use of the Domain Name nor does the Respondent have any connection or affiliation with the Complainant, nor does the Respondent appear to be commonly known by the Domain Name.

The Domain Name was registered and is being used in bad faith. The Domain Name was registered and is being used with the intention of capitalising on the reputation the Complainant has in its GOGO Mark. Its selection cannot be a coincidence and rather demonstrates a calculated intention to appropriate the Complainant's goodwill and prevent the Complainant from registering the Domain Name.

B. Respondent

While the Respondent made an informal communication with the Center on November 6, 2017 (in which it asked only, "What is this about?"), the Respondent did not provide any substantive reply to the Complainant's contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have a name, trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's name, trade or service mark.

The Complainant is the owner of the GOGO Mark, having registrations for the GOGO Mark as a trademark in the United States. The auDA Overview of Panel Views on Selected auDRP Questions First Edition states, in response to the question "Does ownership of a registered trademark outside of Australia to which the domain name is identical or confusingly similar automatically satisfy the requirements of paragraph 4(a)(i) of the auDRP?", that:

"The issue does not arise under the UDRP.

The auDRP does not restrict a complainant's trademark rights to a trademark registered with the Australian trademark authority. Thus, a trademark registered outside of Australia satisfies the requirements of the Policy."

The Domain Name, <gogoair.com.au>, consists of the GOGO Mark in its entirety with the addition of the descriptive word "air" and ".com.au". As the Domain Name reproduces the GOGO Mark in its entirety the Panel finds that the Domain Name is confusingly similar to the GOGO Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, is to be taken to demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or

(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue."

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the GOGO Mark or a mark similar to the GOGO Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence of any demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or legitimate non-commercial or fair use. Indeed there is no evidence of use of the Domain Name at all.

The Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered or Subsequently Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to another person, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) the Respondent has registered the Domain Name in order to prevent the owner of the name, trademark or service mark from reflecting the name or mark in a corresponding domain name; or

(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business or activities of another person; or

(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on Respondent's website or location; or

(v) if any of the Respondent's representations or warranties as to eligibility or third party rights given on application or renewal are, or subsequently become, false or misleading in any manner.

The Panel notes that the Policy only requires that a complainant show that a respondent registered or subsequently used the disputed domain name in bad faith.

The Panel finds that the Respondent was aware of the Complainant and its reputation in the GOGO Mark at the time the Domain Name was registered. The Domain Name is almost identical to the Complainant's <gogoair.com> domain name, in use since 2010. Given that "gogo" is not a descriptive or generic word, there is no obvious reason, nor has the Respondent chosen to provide one, for the registration of the Domain Name other than to take advantage of any reputation the Complainant may have in its GOGO Mark. In the circumstances, the Respondent's conduct in registering the Domain Name when it was aware of the Complainant's rights and lacked rights and legitimate interests of its own amounts to registration in bad faith.

The fact that the Domain Name has not yet been linked to an active website does not prevent a finding that it has been used in bad faith. In circumstances where the Respondent registered a domain name that was essentially identical to the Complainant's domain name at <gogoair.com> and in the absence of any alternative explanation for its conduct, the Panel finds that the Respondent registered the Domain Name and has continued to passively hold the Domain Name in order to prevent the Complainant, being the owner of the GOGO Mark, from reflecting its mark in a corresponding domain name. This amounts to evidence of registration and use of the Domain Name in bad faith.

Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.

7. Decision

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 <gogoair.com.au> be transferred to the Complainant.1

Nicholas Smith
Sole Panelist
Date: December 8, 2017

1 The Complainant has requested transfer of the Domain Name. Given that the Complainant has applied to register an Australian registered trademark that appears to be closely and substantially connected to the Domain Name, in that the Domain Name reproduces the GOGO Mark in its entirety with the term "air" that describes an aspect of the Complainant's services, the Complainant appears to satisfy the eligibility requirements for registration of the Domain Name.

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