TWA Airlines
LLC v Heathrow Express Operating Company Ltd.
Claim Number: FA0112000102956
PARTIES
The Complainant is TWA Airlines LLC, DFW Airport, TX, USA (“Complainant”) represented by Kay Lyn Schwartz, of Gardere Wynne Sewell LLP. The Respondent is Heathrow Express Operating Company Ltd., West Sussix, United Kingdom (Great Britain) (“Respondent”).
The domain name at issue is <airportexpress.biz>, registered with NetBenefit d/b/a NetNames.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
M. Scott Donahey, as Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on December 14, 2001; the Forum received a hard copy of the Complaint on December 21, 2001.
On December 21, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 10, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A timely Response was received and determined to be complete on January 7, 2002.
Complainant’s Additional Submission was received on January 14, 2002.
On January 28, 2002, pursuant to STOP Rule 6(b), the Forum appointed M. Scott Donahey as the single Panelist.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
A. Complainant
Complainant contends that Respondent's domain name <airportexpress.biz> is identical to Complainant's mark, AIRPORT EXPRESS, registered with the United States Patent and Trademark Office ("USPTO"), that Respondent was aware of Complainant's long use of the AIRPORT EXPRESS mark, and that Respondent has no rights or legitimate interests in respect of the domain name at issue, since Respondent has used the mark for less than two years and only recently registered it.
B. Respondent
Respondent contends that the Complainant did not file an IP Claim, as required by the STOP policy, that Respondent has registered the mark AIRPORT EXPRESS and design with the trademark authorities in the United Kingdom and has used the mark in advertising in conjunction with its rail service between London area airports and the Cities of London and Westminster, and that Respondent's uses are in good faith.
C. Additional Submissions
Complainant submitted a Reply to Respondent's Response claiming that the Complainant's law firm submitted the IP Claim form acting as agent for the Complainant and that Complainant's more than twenty years of use of the mark AIRPORT EXPRESS gave it substantial rights in the mark.
Complainant's assignor registered the mark AIRPORT EXPRESS with the USPTO, effective May 27, 1980, showing a first use of the mark on January 9, 1978. Complaint, Annex 1. The mark was assigned to Complainant effective April 9, 2001.[1] Complaint, Annex 3. Complainant or its assignor has used the mark continuously since 1978 in connection with advance passenger check-in services.
Respondent registered the mark AIRPORT EXPRESS and design in the United Kingdom effective November 9, 2001, by virtue of an application filed on May 5, 2000. Response, Annex 2. The mark has been used in conjunction with express rail transportation between Heathrow, Gatwick, and Stansted airports and the Cities of London and Westminster. Response, Annex 3.
On October 3, 2001, apparently upon learning that Claimant's counsel had registered an IP Claim, Respondent's counsel contacted Claimant's counsel by email. In the email, Respondent's counsel identified itself as representing Respondent and requested that Claimant's counsel disclose the identity of its client. Claimant's counsel responded that it was representing American Airlines in the matter. Response, Annex 1, and Reply, Annex 3.
Paragraph
15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(2) the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3) the domain name has been registered or is being used in bad faith.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
Complainant has demonstrated that it is the assignee of the registered mark AIRPORT EXPRESS. Since Complainant's counsel acted as agent for Complainant in registering the IP Claim, the Panel finds that Complainant has standing to bring this STOP Complaint and has rights in the mark. The Panel further finds that Complainant's mark is identical to the domain name at issue.
Paragraph 4(c) of the STOP policy, gives examples of ways in which a Respondent can demonstrate that it has rights or legitimate interests in respect of the domain name at issue. Two of the examples are identical to examples given in UDRP ¶¶ 4(c)(i) and (ii). See, STOP, ¶¶ 4(c)(ii) and (iii). However, paragraph 4(c)(i) is unique to the STOP policy and is directly on point: A party demonstrates rights and legitimate interests in repect of the domain name, where "[Respondent is] the owner or beneficiary of a trade or service mark that is identical to the domain name." Respondent has demonstrated and Complainant has admitted that Respondent is the owner of a registered mark. Thus, under the clear provisions of the STOP policy, Respondent has demonstrated that it has rights and legitimate interests in respect of the domain name at issue.
Since Respondent has demonstrated rights and legitimate interests in
respect of the domain name at issue, it is unnecessary to determine the issue
of bad faith registration or use.
STOP Rules, Rule 15(d) provides in pertinent part: "If after considering the submissions the Panel finds that the complaint was brought in an attempt at Reverse Domain Name Hijacking the Panel shall state its findings to this effect in its decision." In the present case, Complainant was aware of the identity of the Respondent before filing its Complaint. Complainant received a communication from Respondent's counsel prior to the filing of the Complaint. Complainant was in the air transportation business and Complainant should have been aware of Respondent's use of the AIRPORT EXPRESS mark and could easily have investigated or inquired into its registration status. Even after Respondent furnished proof in this proceeding of its registration of the AIRPORT EXPRESS mark, Complainant filed a supplemental pleading seeking to obtain transfer of the domain name at issue. This was done in the face of the very clear language in the STOP policy, which showed that Respondent had demonstrated rights and legitimate interests in respect of the domain name at issue. Accordingly, the Panel finds that Complainant has engaged in Reverse Domain Name Hijacking.
DECISION
The Panel hereby dismisses Complainant's Stop Complaint, and finds that Complainant has engaged in Reverse Domain Name Hijacking.
M. Scott Donahey, Panelist
Dated: February 6, 2002
[1] Whether the transfer of the mark in question was a transfer in gross was not raised and therefore is not dealt with in this Decision. The Panel notes that United States law continues to prohibit the transfer in gross of a trademark, despite the fact that the laws of other nations generally permit such transfers. See, Lanham Act, § 10, 15 U.S.C.A. 1060.
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