CHC Helicopters (Barbados) Limited v. Viktor Mitrofanov
Claim Number: FA2012001924779
Complainant is CHC Helicopters (Barbados) Limited (“Complainant”), represented by Ryan C. Compton of DLA Piper LLP (US), District of Columbia, USA. Respondent is Viktor Mitrofanov (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <helione.org> (the “disputed domain name”), registered with GoDaddy.com, LLC (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 11, 2020; the Forum received payment on December 11, 2020.
On December 14, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the disputed domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. The Registrar has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 21, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@helione.org. Also on December 21, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on December 24, 2020.
On December 29, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant provides helicopter and maintenance services worldwide. Complainant has rights in the HELI-ONE trademarks through its registrations with the United States Patent and Trademark Office (“USPTO”). (e.g., Reg. No. 4,009,721, registered Aug. 9, 2011; Reg. No, 4,853,566, registered Nov. 17, 2015) (hereinafter collectively referred to as the “HELI-ONE Mark”).
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademarks as it incorporates the mark in its entirety. merely adding the “.org” generic top-level domain (“gTLD”). Further, the Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name, and that Respondent registered and uses the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a formal Response in this proceeding, but sent an email to the Forum, stating that the Complaint should be dismissed as it used the Respondent’s personal information illegally, that the resolving website had very little traffic and was not advertised anywhere. Moreover, the Respondent informed the Forum that it took down the resolving website so that it is no longer accessible by Internet users.
The Panel finds that Complainant has registered trademark rights in the HELI-ONE Mark as described above. The Panel also finds that the disputed domain name is confusingly similar to the Complainant’s HELI-ONE Mark, Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "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 requires that Complainant must prove each of the following three elements to obtain an order that a disputed domain name should be cancelled or transferred:
(1) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
The Panel finds that Complainant has rights in the HELI-ONE Mark through its registrations with the USPTO. (e.g., Reg. No. 4,009,721, registered Aug. 9, 2011 and Reg. No. 4,853,566, registered Nov. 17, 2015). Registration of a mark with the USPTO confers upon a complainant trademark rights for purposes of the Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”)
The Panel also finds that Respondent’s disputed domain name <heli-one.com> is confusingly similar to the HELI-ONE Mark under Policy ¶ 4(a)(i), as the disputed domain name incorporates the trademark in its entirety, removes the hyphen, and is followed by the gTLD “.org”. Per Policy ¶ 4(a)(i), removal of a hyphen and addition of the “.org” gTLD are insufficient to differentiate a disputed domain name from the mark it incorporates under Policy ¶ 4(a)(i). See Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark); see also Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show that it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). Here, the Panel holds that Complainant has made out a prima facie case.
Respondent has no rights or legitimate interests in the disputed domain name as Respondent has not provided evidence nor proven that it is commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the HELI-ONE Mark. Moreover, Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b) of the Policy.
Respondent attracts Internet users for commercial gain by using the disputed domain name to pass itself off as Complainant and to disrupt Complainant’s business, indications of bad faith. Passing off as Complainant for commercial gain demonstrates bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”). Here, Respondent is engaging in the impersonation of Complainant by copying Complainant’s website with the only conceivable explanation being to engage in nefarious conduct and deceive users.
Moreover, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the HELI-ONE Mark at the time of registration. Under Policy ¶ 4(a)(iii), actual knowledge of rights in a mark is considered sufficient to establish bad faith registration, and may be demonstrated by Respondent where, as here, it incorporates a registered mark into a disputed domain name. Bad faith is also exhibited when a Respondent’s use of a disputed domain name to resolve to a website impersonates Complainant’s website and uses Complainant’s trademarks on that website. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). Respondent cannot credibly claim to have been unaware of the HELI-ONE Mark before registering and using the disputed domain name. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <helione.org> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: January 11, 2021
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