OAG Worldwide, Inc. v. Mark Nelson
Claim Number: FA0202000105183
Complainant is OAG Worldwide, Inc., Oakbrook, IL (“Complainant”) represented by Julie Finch, of Hinshaw & Culbertson. Respondent is Mark Nelson, North Aurora, IL (“Respondent”) represented by Catherine Simmons-Gill, of Offices of Catherine Simmons-Gill.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <officialairlineguides.com>, registered with Register.com.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge, have no known conflict in serving as Panelist in this proceeding.
Carolyn M. Johnson, James Crary, and Irving H. Perluss are the Panelists.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on February 25, 2002; the Forum received a hard copy of the Complaint on February 25, 2002.
On February 25, 2002, Register.com confirmed by e-mail to the Forum that the domain name <officialairlineguides.com> is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 28, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 20, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on March 20, 2002.
Complainant made an additional timely submission on March 25, 2002. Respondent made an untimely additional submission, but, nevertheless, it will be considered by the Panel.
On April 8, 2002, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Carolyn M. Johnson, James Crary, and Irving H. Perluss as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Complainant owns trademark registrations, worldwide, on variations of the trademark/service mark OFFICIAL AIRLINE GUIDE. These marks are used in connection with books, databases and Internet websites that provide airline scheduling information. These trademark registrations are:
OFFICIAL AIRLINE GUIDE & LOGO
County Reg. Number
United States 546542
OFFICIAL AIRLINE GUIDE & OAG LOGO
Country Reg. Number
OFFICIAL AIRLINE GUIDE
Country Reg. Number
Saudi Arabia 470/45
South Africa 865322
United States 1314556
2. Complainant also is the owner of common law rights in the mark OFFICIAL AIRLINE GUIDE, OFFICIAL ARLINE GUIDES and OAG. These marks are used in connection with books, databases and Internet websites, which provide airline scheduling information.
3. Respondent has attempted to obtain a United States trademark registration for the domain name at issue <officialairlineguides.com>. Respondent’s application has been preliminarily rejected as being confusingly similar to Complainant’s registered mark OFFICIAL AIRLINE GUIDE.
4. The domain name is identical to Complainant’s common law mark OFFICIAL AIRLINE GUIDES and is nearly identical to Complainant’s federally registered mark OFFICIAL AIRLINE GUIDE. Complainant has been using its mark OFFICIAL AIRLINE GUIDE for approximately 53 years and its product has long been known as the “bible” of the travel industry. Respondent is a former employee of Complainant who has obtained the subject registration for the joint purpose of reselling the domain name at issue to Complainant and tarnishing Complainant’s trademarks, service marks, good will and reputation.
5. Complainant is a worldwide business employing approximately 500 people primarily in the United States and the United Kingdom. Complainant’s marks OFFICIAL AIRLINE GUIDE and OFFICIAL AIRLINE GUIDES are famous.
6. Complainant is the owner of the most comprehensive independent airline schedule database in the world. Complainant published its first guidebook to airline flights in February 1929, as the “Official Aviation Guide of the Airways.” By 1949, Complainant had shortened the name of its publication to OFFICIAL AIRLINE GUIDE. In 1993, Complainant’s predecessor organization (Official Airline Guide, Inc.) was valued at more than $400 million when it was purchased by Reed Elsevier.
7. In 1998, Reed Elsevier restructured the division containing Official Airline Guide sales, ABC and other organizations under the organizational name Reed Travel Group. This combined structure had several non-airline guide products, so the umbrella brand, OAG, was created to reflect the wider products and services available. During this period, usage of the OFFICIAL AIRLINE GUIDE and OFFICIAL AIRLINE GUIDES marks continued, both by members of the public, and by Complainant.
8. In summer of 2001, Complainant became the owner of all OAG assets, including but not limited to the trademark OFFICIAL AIRLINE GUIDE.
9. Complainant’s trademarks OFFICIAL AIRLINE GUIDE and OFFICIAL AIRLINE GUIDES are widely known throughout the travel industry. This recognition has been continuous and widespread.
10. Respondent was an employee of Complainant from 1984 to August of 2001, and, as such, is and was, at all times, fully aware of Complainant’s prior and superior use of the marks: OFFICIAL AIRLINE GUIDE and OFFICIAL AIRLINE GUIDES. Respondent’s most recent job title was Data Support Analyst in Direct Marketing.
11. Respondent acquired the domain in question for the primary purpose of selling the domain name registration to Complainant for valuable consideration far in excess of Respondent’s out-of-pocket costs. Respondent initially offered to sell the domain name to Complainant for the sum of $1.5 million. He subsequently reduced his offer to sell to $750,000, a sum that remains far in excess of Respondent’s out-of-pocket costs.
12. Respondent has made no use of the domain name in connection with a bona fide offering of goods or services. Respondent’s website currently states that someday, maybe, he’d like to do something with the site. Respondent’s prior website contained commentary regarding Complainant which was false and misleading. Since Respondent has been notified by Complainant that Complainant believes Respondent is infringing Complainant’s trademarks, Respondent’s current website is nothing more than an ill-disguised attempt to justify Respondent’s non-use of the domain name.
13. Respondent has not become commonly known by the domain name. Complainant is commonly known by the mark OFFICIAL AIRLINE GUIDES.
14. Respondent is intentionally trading off of Complainant’s trademark and is attempting to tarnish the reputation of Complainant. A visitor, searching for Complainant, and typing in Complainant’s service mark <officialairlineguides.com> upon reaching the site, would reasonably conclude that it has reached Complainant’s website, and that Complainant has no web services available, which is a false assumption.
15. Respondent has stated that Respondent simply wants to create a place for former employees of Complainant to stay in touch. Respondent’s actions, however, demonstrate the falsity of this position. Complainant has offered to consent to Respondent’s use of domain names that accurately reflect Respondent’s target audience, without confusing Complainant’s customers or harming Complainant’s reputation. Most recently, Complainant offered to consent to the use of the domain name <officialairlineguidesalumni.com>. Respondent, although stating this is the group he is trying to reach, has rejected Complainant’s offer.
16. Respondent has knowingly and in bad faith, undertaken to damage Complainant, and the good will associated with Complainant’s trademarks. Respondent has no legitimate claim to the use of Complainant’s trademarks, and is making no legitimate use of Complainant’s trademarks.
1. Complainant cannot establish any of the three elements required by Policy 4(a). First, Complainant affirmatively abandoned the trademarks OFFICIAL AIRLINE GUIDE and OFFICIAL AIRLINE GUIDE (AND DESIGN) over five years ago and, therefore, has no rights in any trademark similar or identical to the domain name in question. Second, Respondent has a legal right in the domain name <officialairlineguides.com>, and has made a legitimate noncommercial use of the domain name by offering current and former employees of Complainant and Complainant’s corporate predecessor, as well as others, a central location on the Internet to exchange messages, keep in touch and network. Finally, Respondent did not register the domain name in bad faith, nor has Respondent used that domain name in bad faith.
2. Complainant has no right in any trademark similar to or identical to the domain name in question. In 1996, Complainant’s predecessor organization affirmatively abandoned the trademark OFFICIAL AIRLINE GUIDE in favor of its preferred mark, OAG. It did so as part of a deliberate and organized campaign to create a “new corporate identity . . . using only name only.” Employees were informed that “Official Airline Guides will no longer be referenced as part of our name . . .” and were instructed to refer to the company simply as “OAG.” Employees were specifically directed not to refer to OAG as Official Airline Guides and to inform customers that “we simply have a three letter company name” or that “[t]he OAG brand has evolved from the part of our business previously named Official Airline Guides.”
3. OAG Worldwide discontinued use of the OFFICIAL AIRLINE GUIDE mark in August of 1996, and initiated a saturation campaign to promote OAG as the only mark by which the company and its services would be identified. This campaign began with a press release on August 5, 1996, in which OAG Worldwide publicly announced “its new corporate identity” and noted that OAG was “[f]ormerly Official Airline Guides.” It continued with print ads in several national publications, including Time, Newsweek, Business Week, U.S. News & World Report, Financial World, Wall Street Journal, Money, Nation’s Business and Sports Illustrated, promoting OAG as the company’s new brand. The travel industry press also reported upon the rebranding. The project of abandonment culminated in a recent ad campaign that stresses that OAG does not, in and of itself, stand for anything.
4. As part of the branding changeover, the OAG mark replaced OFFICIAL AIRLINE GUIDE on all OAG Worldwide stationery, marketing and promotional materials, forms and brochures. Most important, OAG replaced OFFICIAL AIRLINE GUIDES as the identifying trademark on all of OAG Worldwide publications.
5. Complainant has not used the mark OFFICIAL AIRLINE GUIDE in commerce since 1996, and only the mark OAG remains in use today, not only on Complainant’s products and services, but also on its corporate offices, its internal newsletter, and its press releases. Complainant continues actively marketing its products and services under the mark OAG. OAG Worldwide advertising continues to emphasize that OAG does not, in and of itself, stand for anything in particular. Complainant’s site on the World Wide Web, at <oag.com>, makes no mention of the OFFICIAL AIRLINE GUIDE mark. The product roster at that website lists 27 different products, none bearing the OFFICIAL AIRLINE GUIDE mark. A searched performed at <Yahoo.com> for the term “OAG” immediately brings up Complainant’s website. A search for “official airline guide,” however, brings up nothing relevant to this dispute, not even Respondent’s website.
6. Complainant has affirmatively abandoned its rights in the mark OFFICIAL AIRLINE GUIDE and its variants. A trademark is deemed abandoned if “its use has been discontinued with intent not to resume such use. The statutory prima facie standard is 3 years. Five and a half years have elapsed since Complainant’s last use of the mark OFFICIAL AIRLINE GUIDE. During those five and half years, Complainant has not used the mark, has deliberately and publicly announced its abandonment of the mark, has staged and active public campaign to “rebrand” itself as OAG, and, as part of that campaign, has disavowed any connection between its new mark “OAG” and the words “official airline guide(s).:
7. Third-party usage of the mark is irrelevant because “trademark rights are created by actual ‘use’ [by the registrant] of the mark in commerce.” Kusek v. Family Circle, Inc. (D. Mass. 1995) 894 F.Supp. 522, 531.
8. Once a mark is abandoned, “the law ceases to protect the owner . . . [and] trademark law allows it to be used by another.” Abdul-Jabbar v. General Motors Corp. (9th Cir. 1996) 85 F.3d 407, 411. Complainant has affirmatively and deliberately abandoned the mark OFFICIAL AIRLINE GUIDE and its derivatives and has made no use of the mark in over five years. Complainant has lost all rights to the mark.
9. Respondent has a legal right to the use of the domain name <officialairlineguides.com> and is making a legitimate noncommercial use of the domain name.
10. Respondent has made a legitimate noncommercial use of the domain name, a name deliberately abandoned by Complainant. Respondent has a long and intimate history with the name “Official Airline Guides.” Respondent’s father began working for Official Airline Guides, Inc., in 1970, ultimately becoming Publisher of all of the print consumer schedule books. When Respondent was a boy, he would often accompany his father to the office where he met many of his father’s colleagues, as well as, in come cases, their children, who became friends of the Respondent. In many cases, these children grew up to work at Official Airline Guides, Inc., alongside Respondent, who joined the company in 1984.
11. In 1993, Official Airline Guides, Inc. was acquired by Reed Elsevier, a British publishing house. Soon thereafter, the company began laying off employees in groups of approximately 30 to 60. These mass layoffs would occur every 6 to 9 months. By the late 1990’s, many of Respondent’s friends were no longer employed by the company, which had also changed its name, rebranded its products and abandoned the OFFICIAL AIRLINE GUIDE mark.
12. Over four years after Complainant abandoned the trademark OFFICIAL AIRLINE GUIDE, Respondent registered the domain name <officialairlineguides.com>. He did so with the intent of creating a place on the Internet for present and former employees of Official Airline Guides, i.e., Respondent’s family and lifelong friends, to exchange messages with one another, network and otherwise remain in contact. Although possessed of few financial resources to devote to this project and little technical expertise, Respondent had, by August of 2001, created a rudimentary message board system at the domain name. Although technical difficulties forced him to close the website later that year, he reopened the site shortly thereafter and documented on the site his intent to create an Internet community for, among others, former employees of Official Airline Guides.
13. Although Respondent’s lack of financial resources and technical expertise has thus far prevented him from creating a sophisticated website, this fact in no way lessens either Respondent’s legitimate right to use the domain name <officialairlineguides.com> or his interest in doing so. Given Respondent’s longstanding family and personal connection with the words “official airline guides,” Respondent has a legitimate interest in using the domain name for his stated noncommercial purposes.
14. Respondent has never shown bad faith in either his registration or his use of the domain name <officialairlineguides.com>. Respondent has not engaged in any of the four types of behavior evidencing bad faith enumerated in Paragraph 4(b) of UDRP nor in any other type of bad faith action. Respondent has no intent to misleadingly divert customers from Complainant, and can have no intent to “trade off” Complainant’s former trademark as Respondent offers no goods or services for sale. Respondent has no intent to tarnish the reputation of Complainant and has never made any statements on his website in any way disparaging or critical of Complainant. Finally, Respondent did not register the domain name with the intent of selling it to Complainant. Complainant actively sought and solicited Respondent to sell his domain name. There are simply no facts supporting Complainant’s allegations of bad faith or justifying the cancellation of Respondent’s legitimate rights in his domain name.
15. Complainant’s allegation that Respondent is “intentionally trading off of Complainant’s trademark” is grossly unsupported and cannot support a finding of bad faith. Leaving aside the issue of whether Complainant possesses any trademark rights at all, Complainant has overlooked that Respondent offers no goods or services for sale at his website and, thus, stands no chance of profiting commercially through his use of the domain name. Moreover, although Complainant spends a good deal of time detailing its assumptions as to what the average consumer would think upon reaching Respondent’s website, they remain mere assumptions. Respondent has never tried to mislead the general public as to the nature of his website. Respondent’s website is not listed with any of the major search engines and former employees of OAG Worldwide learned of the site strictly through word of mouth. Respondent has merely tried to give new life to a name that means a great deal to him, his friends and family, and that Complainant had discarded.
16. Respondent has never attempted to tarnish any trademark of Complainant (assuming Complainant has a trademark to tarnish) or the reputation of Complainant generally. Nothing written by Respondent on either incarnation of his website is even remotely critical of Complainant or otherwise indicates that the purpose of either site is to criticize, disparage or tarnish Complainant. All of the commentary on Respondent’s first website was provided by third parties; Respondent himself did nothing but supply a forum for discussion.
17. Respondent did not register the domain name in question for the purpose of selling it to Complainant for consideration in excess of Respondent’s out-of-pocket costs. Respondent had owned the domain name in question for over a year before he was approached by Complainant, who requested that Respondent transfer the domain name to Complainant. Respondent, in light of his longstanding and intimate relation to the name, refused. Rather than take “no” for an answer, Complainant repeatedly pressed Respondent to transfer the domain name, and then made an unsolicited offer to purchase the domain name for a token sum. Although Respondent refused this offer, Complainant, who was also Respondent’s employer at that time, continued to press Respondent to sell the name. Respondent, not wishing to sell the domain name and hoping to discourage further offers to purchase it, responded with the admittedly high offer of $1.5 million. At this point, Complainant, hoping to take that which it could not buy, threatened Respondent with legal action and simultaneously offered to purchase the domain name for $20,000, demanding a response by February 14, 2002. Respondent answered that he had no wish to sell the domain name.
18. Respondent never had any intention of selling the domain name and never made a bona fide offer to sell the domain name. Indeed, Respondent repeatedly refused unsolicited offers to purchase the name, and only responded with the offering price of $1.5 million to discourage Complainant. Complainant cannot establish that Respondent registered or used the domain name in bad faith, and the Complaint must, therefore, fail.
C. Additional Submissions – Complainant
1. Complainant is the owner of two, incontestable, United States Federal trademark registrations for its mark OFFICIAL AIRLINE GUIDE, which are prima facie evidence of Complainant’s ownership of, and the right to use, Complainant’s mark.
2. Complainant did select, use and promote a corporate identity. Complainant had a corporate identity program and ad campaign around its corporate identity OAG. However, establishing that Complainant had a corporate brand, and promoted that brand, does not prove Complainant abandoned use of all of its registered trademarks.
3. There is no validity to Respondent’s contention that because Complainant changed its corporate identity, it gave up its right to use its registered trademark. It is well established that a company may have more than one trademark.
4. Respondent’s allegations of abandonment are improper in this forum, given that Complainant holds incontestable federal trademark registrations for the mark claimed by Complainant, and that Respondent has had ample opportunity to pursue legitimate claims of abandonment in the United States Patent & Trademark Office.
5. There is substantial recognition that Complainant’s mark enjoys in the marketplace, and there is great likelihood that third parties will be confused by Respondent’s mere addition of an “s” to Complainant’s trademark. The substantial recognition enjoyed by Complainant in its mark illustrates the weakness of Respondent’s abandonment claim. Complainant’s use of its corporate identity has not diminished third-party recognition of Complainant’s trademark OFFICIAL AIRLINE GUIDE. Third parties clearly associate Complainant as the source of goods and services under Complainant’s OFFICIAL AIRLINE GUIDE mark.
6. Respondent’s claim of legitimate use of Complainant’s registered trademark hinges on Respondent’s status as a former employee of Complainant. However, there is no support for Respondent’s proposition that an ex-employee obtains a property right in the former employer’s trademarks.
7. The registration of domain names, by former employees, which contain the trademarks of their former employers, is evidence of bad faith.
8. Whether or not Respondent desires to create a “neutral” forum for discussion and meeting by former employees of Complainant does not change the fact that Respondent has not done so. Respondent has held the domain name since May 2000, a period of over 2 years. During that period, Respondent has either not used the domain name or created a website saying he hopes to create a website. Neither of these activities are sufficient to demonstrate that Respondent has become associated with the domain name, or has done anything more than merely hold the domain name. Respondent can have no rights or legitimate interest in the domain name under these circumstances.
9. Assuming that Respondent’s stated desire for creating a website for communication between the former employees of Complainant to be truthful, this desire does not grant Respondent the right to confuse and mislead Complainant’s customers.
10. Respondent’s first communications regarding his willingness to sell the domain name to Complainant was by handwritten note dated August 22, 2001. As stated by Respondent, “This is a business deal – nothing more nothing less.” Respondent then actively engaged in price negotiations related to the domain name over a series of months. When Respondent’s demand for $1.5 million was rejected by Complainant, Respondent threatened to attempt a cancellation of Complainant’s federal trademark registrations, and dropped his demand to $750,000. Respondent’s demonstrated willingness to negotiate, threaten, and reduce his selling price is inconsistent with Respondent’s belated clam that he never made a serious offer to sell the domain name to Complainant.
11. Complainant has at all times acted fairly and openly with Respondent. Complainant first offered Respondent $5,000 for the domain name, a sum far in excess of Respondent’s $200 - $300 out-of-pocket costs. Respondent has been offered by Complainant as much as $20,000 for the domain name.
D. Additional Submissions – Respondent
In fairness, the Panel has agreed to review Respondent’s Additional Submission even though it was untimely. His contentions are as follows:
1. Complainant has no rights in the mark OFFICIAL AIRLINE GUIDE and, therefore, has no rights in any trademark confusingly similar or identical to the domain name in question. In his Response, Respondent has demonstrated Complainant’s deliberate and purposeful abandonment of the mark, including specific directives from top officers of Complainant requiring employees of Complainant to no longer reference OFFICIAL AIRLINE GUIDE as part of Complainant’s name and a press release informing the world that Complainant was to be known only as OAG, and that Complainant was “[f]ormerly Official Airline Guides.” This evidence of abandonment is more than sufficient to rebut the presumption of validity provided by Complainant’s trademark registrations, which, in any case, are currently subject to cancellation proceedings before the United States Patent and Trademark Office.
2. Complainant has not used for almost 6 years and still does not use the mark OFFICIAL AIRLINE GUIDE in commerce on any of its products; instead, it uses the mark OAG. Thus, Complainant has trademark rights in OAG, but not in OFFICIAL AIRLINE GUIDE. Complainant’s distinction between its “corporate identity” and its “brand” is meaningless.
3. Complainant’s repeated reliance on third-party recognition of its marks is also inappropriate. Complainant offers no legal precedent whatsoever in support of its third-party recognition theory. This is because trademark rights are dependent on use, not third-party recognition. Although third-party recognition may be evidence of an intent to resume use of a mark when that recognition is coupled with an ongoing trademark maintenance program (continued sales of products bearing the mark, sales of spare or replacement parts for products bearing the mark, etc.), it is simply insufficient to maintain rights in a mark when that mark has been affirmatively and publicly abandoned together with the solidifying fact of non-use over a period of almost 6 years. Third-party recognition cannot cure Complainant’s abandonment of the OFFICIAL AIRLILNE GUIDE mark.
4. Complainant attempts to convince the Panel that it is without authority to decide whether Complainant has abandoned its mark. Complainant offers no support at all for this argument. Indeed, Complainant overlooks that administrative panels regularly determine questions of trademark validity in the course of rendering decisions under the UDRP, as Complainant’s own cited authority makes plain.
5. Respondent’s right to use the disputed domain name <officialairlineguides.com> arises through Complainant’s abandonment of the OFFICIAL AIRLINE GUIDE marks and Respondent’s subsequent use, not through Respondent’s status as an ex-employee of Complainant. Respondent’s rights arise through his use of the domain name in question subsequent to Complainant’s abandonment of the relevant marks.
6. Respondent has made a legitimate, noncommercial use of the domain name in question by providing a neutral discussion forum for former employees of Complainant’s corporate predecessor. Complainant mistakenly states that Respondent “has either not used the domain name or created a website saying he hopes to create a website.” In making this assertion, Complainant misrepresents the facts by ignoring the evidence supplied by Respondent showing the initial “message board” format of the <officialairlineguides.com> site. Respondent has used the domain name in question, albeit in an unsophisticated fashion, for a legitimate noncommercial purpose.
7. Complainant has misrepresented the fact regarding settlement negotiations. On or around July 28, 2001, Complainant made the first offer to take over the domain name from Respondent. By August 10, 2001, Complainant had made an unsolicited offer to purchase the domain name from Respondent. The “handwritten note” to which Complainant has referred is in fact the notes made by Respondent during a face-to-face meeting with Complainant’s agent Bob Bruce and subsequently given to Mr. Bruce, a fact made clear by the notations at the top of the page on Respondent’s copy of these notes. It is not a demand letter or offer to sell, but merely an acknowledgment that Respondent bore no grudge against Complainant and would consider entering into settlement negotiations. Using Respondent’s willingness to negotiate as evidence of Respondent’s bad faith is fundamentally illegitimate and unfair, as well as a violation of the Federal Rules of Evidence. (F.R.E. 408.) Respondent only negotiated with Complainant after receiving an unsolicited offer to purchase the domain name, and such an unsolicited offer cannot be evidence of bad faith. Complainant cannot prove bad faith in this case, and the Complaint should be denied.
DISCUSSION, FINDINGS AND CONCLUSIONS
The foundation upon which Respondent seeks to establish his claim to the disputed domain name is that Complainant has abandoned its common law mark OFFICIAL AIRLINE GUIDES and its federally registered mark OFFICIAL AIRLINE GUIDE.
It appears that Respondent has filed two Petitions for Cancellation with the United States Patent and Trademark Office with respect to Complainant’s registrations 1314556 and 0546542.
Thus, at the outset the Panel is confronted with the question as to whether it should defer to the pending proceeding in the United States Patent and Trademark Office.
This is not a primary jurisdiction doctrine problem. Nevertheless, the advantages of administrative expertise and the uniform application of the law could justify deference.
Moreover, there are additional concerns. To determine whether there is “abandonment,” first, it must be ascertained what burden of proof is required. Next, there must be considered the Lanham Act’s rebuttable presumption of abandonment. Finally, what must the trademark owner prove to rebut the charge of abandonment?
The courts have differed on whether the burden of proof for abandonment is “preponderance of the evidence” or “clear and convincing evidence,” a much stricter standard. The former standard is utilized by the Federal Circuit with respect to cancellation proceedings before the Trademark Board, but the majority of courts have required the latter standard.
The courts also disagree on the effect of the lack of use for three years presumption. Some courts take the position that, when triggered, the burden of proof shifts to the trademark owner to prove lack of abandonment. Other courts have held that the presumption only shifts the burden of going forward with the evidence, the ultimate burden of proof remaining with the party charging abandonment.
With respect to the proof required of the trademark owner to rebut the charges of abandonment, the courts again differ. A trademark owner, however, clearly may defend by demonstrating an intent to resume the commercial use of the mark.
The Panel has concluded that it will decide this matter and not defer to the United States Patent and Trademark Office. The Panel also will apply the lesser standard of proof, i.e., “the preponderance of the evidence” in the interest of consistency with the United States Patent and Trademark Office. Finally, it will require Complainant to demonstrate that it has not abandoned its marks, i.e., it has never abandoned its marks and/or it has the intent to resume commercial use of its marks.
The Panel does not believe that Respondent has met his lesser burden of proving abandonment, even with the help of the three-year presumption contained in 15 U.S.C. §1127.
Nevertheless, assuming, arguendo, that the burden has been carried by Respondent, there was no abandonment because of Complainant’s overwhelming evidence that the goodwill symbolized by the mark did not dissipate during the period of alleged non-use.
Professor McCarthy states (and the Panel concurs):
In the author’s opinion, it is error to give greater weight to the non-user’s subjective intent than to the marketplace perception of customers. While both aspects are relevant to the ultimate determination of whether an abandonment has taken place, where the firm claims that it had an intent to resume use and has some evidence in support, the primary emphasis should be on the degree to which customers still recognize the mark, for it is this which will result in a likelihood of confusion. Consumers know nothing of the state of mind of the former trademark user. But they may well mistakenly think that a new use of that mark by another is a renewed use by the former user. While the state of mind of both the former user and the purchasing public are both important, in a close case, the state of mind of the public should prevail.”
The Panel, accordingly, has determined that Complainant’s marks were not abandoned.
Having so decided, we next turn to the three requirements of Paragraph 4(a) of the Policy.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The Panel finds that the disputed domain name is identical to Complainant’s common law mark OFFICIAL AIRLINE GUIDES and is nearly identical to Complainant’s federally registered mark OFFICIAL AIRLINE GUIDE. Complainant has been using its mark OFFICIAL AIRLINE GUIDE for approximately 53 years and its product has long been known as the “bible” of the travel industry.
Rights or Legitimate Interest
By virtue of the Panel’s determination that Complainant’s marks were not abandoned, Respondent has no rights or a legitimate interest in the disputed domain name.
In any event, the Panel has further determined that Respondent has made no use of the domain in connection with a bona fide offering of goods or services. Respondent’s website currently states that someday, maybe, he’d like to do something with the site. Respondent’s prior website contained commentary regarding Complainant which was false and misleading. Since Respondent has been notified by Complainant that Complainant believes Respondent is infringing Complainant’s trademarks, Respondent’s current website is nothing more than an ill-disguised attempt to justify Respondent’s non-use of the domain name. Therefore, Respondent is not making a bona fide offering of goods and services under Policy Paragraph 4(c)(i), or a noncommercial or fair use of the domain under Policy paragraph 4(c)(iii).
The Panel further has determined that Respondent’s offer to sell the domain name for exorbitant amounts is evidence that Respondent does not intend to make a noncommercial or fair use of the domain name.
Registration and Use in Bad Faith
The Panel has determined that Respondent acquired the domain name in question for the primary purpose of selling the domain name registration to Complainant for valuable consideration far in excess of Respondent’s out-of-pocket costs. Respondent initially offered to sell the domain name to Complainant for $1.5 million. He subsequently reduced his offer to sell to $750,000, a sum that remains far in excess of Respondent’s out-of-pocket costs.
Credibility is difficult to ascertain where there is no confrontation or cross-examination. We must rely on reasonable inferences drawn from the evidence.
Thus, Respondent has stated that Respondent simply wants to create a place for former employees of Complainant to stay in touch. Respondent’s actions, however, demonstrate the falsity of this contention. Complainant has offered to consent to Respondent’s use of other domain names, which accurately reflect Respondent’s target audience, without confusing Complainant’s customers or harming Complainant’s reputation. Most recently, Complainant offered to consent to use of the domain name <officialairlineguidesalumni.com>. Respondent, although stating this is the group he is trying to reach, has rejected Complainant’s offer.
Based on the above findings and conclusions, and pursuant to Rule 4(i), it is decided that the domain name <officialairlineguides.com> registered by Respondent Mark Nelson, be and the same is ordered, transferred to Complainant OAG Worldwide, Inc.
IRVING H. PERLUSS, Panelist Presiding
Dated: April 22, 2002
CAROLYN M. JOHNSON, Panelist
JAMES CRARY, Panelist
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 On November 11, 2001, the United States Patent and Trademark Office issued an Office Action refusing Respondent’s Application for Registration of the mark OFFICIALARILINEGUIDES.COM (Serial No. 78/082545).
 See, United States v. Western Pac. R. Co. (1956) 352 U.S. 59; Nader v. Allegheny Airlines (1976) 426 U.S. 290.
 See, Bowker, The Song is Over But the Melody Lingers On: Persistence of Goodwill and the Intent Factor in Trademark Abandonment, 56 Fordham L. Rev. (1988) 1003, 1004-1005.
 See, McCarthy, Trademarks and Unfair Competition (4th ed. 2001) §17.12.
 15 U.S.C. §1127.
 See, Bowker, supra, 1004-1005.
 See, Exxon Corp. v. Humble Exploration Co. (5th Cir. 1983) 695 F.2d 96, 102; McCarthy, supra, §17.11.
 McCarthy, supra, §17.15.
 Professor McCarthy was contrasting the Second Circuit in finding no abandonment of a mark in Defiance Button Machine Co. v. C & C Metal Products Corp. (2nd Circ. 1985) 759 F.2d 1053, emphasizing the question of whether or not the goodwill symbolized by the mark had dissipated during the period of non-use, with the Fifth Circuit’s emphasis in Exxon Corp., supra, upon the firm’s intent to resume use, regardless of the persisting goodwill of the mark.
 See, Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the Complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also, Nat’l Geographic Soc. V. Stoneybrook Inv., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to Complainant’s NATIONAL GREOGRAPHIC mark); see also, Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of the Complainant’s mark CREAM PIE does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”.)
 See, Coors Brewing Co. v. Zike, FA 104202 (Nat. Arb. Forum Mar. 15, 2002) (“A domain name for the purpose of criticism or commentary must on its face indicate that any site to which it leads is not that of the trademark holder but is instead a site for the criticism of or commentary on the trademark holder”).
 This determination is buttressed by Complainant’s Exhibit 66, Respondent’s notes, where has written “This is a business deal – nothing more nothing less.” See, J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit; ) see also, Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name).
 See, Pocatello Idaho Auditorium Dist. V. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) (“[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner”).