National Arbitration Forum

 

DECISION

 

Xojet Inc. v. Texas International Property Associates

Claim Number: FA0711001105705

 

PARTIES

Complainant is Xojet, Inc. (“Complainant”), represented by Linda Joy Kattwinkel, of Owen Wickersham & Erickson, PC, 455 Market St. Ste. 1910, San Francisco, CA 94105.  Respondent is Texas International Property Associates (“Respondent”), represented by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker PO Box 703431, Dallas, TX 75370.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <xojets.com>, registered with Conmpana, LLC.

 

PANEL

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.

 

Hugues G. Richard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 31, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 1, 2007.

 

On November 8, 2007, Conmpana, LLC confirmed by e-mail to the National Arbitration Forum that the <xojets.com> domain name is registered with Conmpana, LLC and that the Respondent is the current registrant of the name.  Conmpana, LLC has verified that Respondent is bound by the Conmpana, LLC 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 November 12, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 3, 2007 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 postmaster@xojets.com by e-mail.

 

A timely Response was received and determined to be complete on December 3, 2007.

On December 10, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hugues G. Richard as Panelist.

 

On December 10, 2007 a timely additional submission by Complainant was received.

 

On December 17, 2007 a timely objection and reply by Respondent to Complainant’s additional submission was received.

 

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The Complainant alleges the following:

 1- The Respondent’s <xojets.com> domain name is confusingly similar to the complainant’s XOJET common law trademark.

2-The Respondent has no rights or legitimate interest in the <xojets.com> domain name.

3- The Respondent registered the domain name in bad faith, in order to redirect Internet users to websites and advertising unrelated to Complainant.

 

B. Respondent

1-The Respondent denies each of the Complainant’s allegations.

2- The Respondent claims:

·        That at the time the disputed domain name was registered the Complainant had not yet begun to use the term “xojet” in commerce.

·        That the domain name registration was not in bad faith because the Complainant failed to provide evidence that it had established common-law trademark rights in the mark in the period preceding the registration.

·        That the Respondent was not aware of the Complainant on January 12, 2006 when the disputed domain name was registered.

·        That decisions finding bad faith registration where the domain name was registered prior to the acquisition of trademark rights do not apply to the present situation.

·        That XO is a common acronym for “executive” or “executive office” or “executive officer” and that the mark XOJET is neither inherently distinctive nor creative.

·        That XOJET is merely descriptive of “executive jets” and must be considered a weak mark.

·        That the Complainant is not the only party using “xo jet” in commerce.

·        That the purchase of advertisements through Google does not constitute a use in bad faith.

·        That Google controls the content of the advertisements, therefore Respondent is not responsible of the potentially offending content of the advertisements.

·        That common acronyms and generic terms are legitimately subject to registration as domain names on a first-come, first-served basis.

·        That the fact that advertising revenues may be generated by Respondent’s activity demonstrates a legitimate interest.

·        That Complainant misstates Respondent’s prior NAF Decisions.

·        That Respondent is the registrant of thousands of domain names which consist of electronically registered generic words and that registering such terms is a legitimate business done in good faith.

 

 

C. Additional Submissions of the Complainant

The Complainant timely filed an additional submission and submits the following:

·        That contrary to Respondents assertion, every one of the decisions against Respondent cited in the Complaint was decided on the merits and each of these decisions ordered transfer of the subject domain names on grounds of illegitimate cybersquatting or typosquatting.

·        Complainant admits that it has mistakenly identified Respondent as the respondent in two decisions that involved a different party. Complainant apologizes for those errors.

·        That Respondent’s arguments rest on two theories which are faulty and baseless.

·        That the argument that Complainant had no rights in the mark before the Respondent registered the domain name because of the date of first use in commerce listed on Complainant’s federal registration is meritless.

·        That Complainant made an extensive promotional use of its mark, including registration of its own domain name, in November 2005.

·        That Complainant launched its website in early December 2005 and proceeded to extensive advertising and press coverage of the mark before the Respondent registered the disputed domain name.

·        That Complainant spent over $651,000 to promote its mark prior to January 10, 2006.

·        That registering a domain name with the intent to eventually trade on the good will of a new mark constitutes bad faith.

·        That Respondent’s arguments that the mark XOJET is descriptive and generic are unavailing as the federal registration for XOJET establishes valid trademark rights.

·        That web searches for the XOJET mark do not show any descriptive use of that term.

·        That Respondent’s use of the domain name for a web portal for search functions and advertising does not constitute a bona fide offering of goods or services.

·        That Respondent filed the domain name after widespread announcement of Complainant’s website and the widespread publicity of its mark.

·        That Respondent has an extensive history of registering domain names in bad faith.

 

D. Additional submissions of the Respondent

The Respondent timely filed an additional submission and submits the following:

·        Respondent objects to the filing of Complainant’s additional submission.

·        Rule 7 of the Forum’s Supplemental Rules is an improper modification of the UDRP Rules.

·        Complainant’s additional submission is beyond the scope of the Supplemental Rules.

·        Complainant’s attempt to prove common law rights prior to January 10, 2006 has failed.

 

 

FINDINGS

 

Complainant Xojet Inc. is a private company which specializes in the private jet and executive jet industry and offers charter carrier services under the mark XOJET. Complainant’s corporate headquarters are located in San Carlos, California.

 

On November 29, 2005, Complainant filed an intent-to-use trademark application.  In November 2005, Complainant also registered its domain name <xojet.com>.  From the end of November 2005 to January 10, 2006, Complainant declares having spent over $651,000 for promotional purposes and having continuously and substantially advertised its XOJET services.  Complainant’s services have been featured in several newspapers such as the New York Times, the Financial Times, and the Wall Street Journal.

 

The website <xojet.com> was launched in the early days of December 2005, and Complainant has been offering private jet services under the mark XOJET since January 30th, 2006.  Complainant’s trademark was registered by the U.S. Patent and Trademark Office on October 23, 2007.

 

Respondent is a Texas based business which registered the disputed domain name <xojets.com> on January 10, 2006 and uses it to advertise links to third party competitors of the Complainant.  Respondent seems to be into the business of registering as domain names what it claims to be generic or descriptive terms in order to create websites that generate advertisement revenues based on the amount of Internet traffic that is directed their way.  Respondent contends that its use of <xojets.com> is to provide a web portal which provides users with a search function as well as advertisements.  Respondent submits that Complainant did not have common law rights in the mark at the time of registration, and that Complainant failed to provide evidence that the Respondent had knowledge of the Complainant on January 10, 2006 when the disputed domain name was registered.  Respondent further alleges that it is making a legitimate use of non-distinctive and generic terms, as it does with dozens other domain names.

 

Panel notes that the <xojets.com> domain name has been disabled since at least December 10, 2007.

 

DISCUSSION

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.

 

The Panel does not agree with the Respondent’s argument that Rules 7 of the Supplemental Rules is an improper modification of the UDRP Rules. Furthermore the Panel doubts that it would have the power to declare that Rule 7 of the Supplemental Rules is an improper modification of the UDRP Rules. The Panel also does not agree with the Respondent that the additional submission of the Complainant is beyond the scope of the Supplemental Rules.

 

Identical and/or Confusingly Similar

 

For the purposes of this dispute, Complainant must establish under Policy 4(a)(i) that it has rights in the XOJET mark.

 

To do so, Complainant must provide prima facie evidence that the disputed domain name is identical or confusingly similar in the mark in which it claims to have rights. The submitted evidence should indicate adoption or use of the trademark. If Complainant is unable to meet its burden, the Panel must reject the Complaint.

 

Complainant asserts rights in the XOJET mark, and contends that from November 2005, it continuously and substantially advertised its XOJET services and spent over $651,000 to promote its mark prior to January 10, 2006. Complainant’s Chief Marketing and Strategy Officer, Nick Sollinger declares that between December 8, 2005 and January 10, 2006, 1,295 visitors accessed the site and 461, 206 visitors to <google.com> viewed pages containing the company’s on-line advertisements for XOJET private jet charters during the same period.

 

The fact that the date of creation of Complainant’s website on November 24, 2005 and the filing date of its trademark application on November 29, 2005 predate Respondent’s registration of the disputed domain name, demonstrates that Complainant has adopted the XOJET mark prior to the registration of the contested domain name. Given that Complainant had initiated extensive advertising at the time, “a simple Internet search would have clearly notified him of the existence of Complainant’s previously existing domain name and gave rise to a duty for Respondent to inquire further”; See Ganz v. Texas Int’l Property Association, FA 991778 (Nat. Arb. Forum July 19, 2007).  Respondent’s assertion that Complainant failed to show rights in the XOJET mark when the disputed domain name was registered is therefore false.

 

Complainant also submits that its services under the mark XOJET have been featured in several high-profile media articles such as the New York Times and The Wall Street Journal. Although these articles are subsequent to the registration of the disputed domain name, they can help establish that the mark is well known around the United States. Furthermore, a Google search performed with the term “xojet” brings out dozens of websites or articles mentioning Xojet Inc. and its tremendous business success.  The fact that Fortune magazine erroneously listed Complainant’s website as “www.xojets.com” also helps establish the aura and success of the mark nation wide, and the fact that Respondent’s domain name can easily be confused with Complainant’s mark.

 

Despite the above mentioned arguments, Panel finds that the issue of an identical or confusingly similar domain name to Complainant’s mark can be ruled upon by dealing with Complainant’s intent-to-use application with the U.S. Patent and Trademark Office.

 

UDRP decisions have established that in addition to the means used to promote the mark, intent-to-use applications by a complainant support the finding that the Complainant has rights in the trademark; see Coupons Inc. v. Motherboards.com, FA 192249 (Nat. Arb. Forum Nov. 4, 2003).

 

Furthermore, Complainants having filed an intent to use trademark application in the U.S. Patent Office, are considered to have fulfilled the requirements of paragraph 4(a)(i) of the Policy; see Phone-N-Phone Serv. (Bermuda) Ltd. v. Levi, D2000-0040 (WIPO Mar. 23, 2000).

 

Moreover, when a Complainant’s trademark application is subsequently approved by the U.S. Patent and Trademark office, the relevant date for showing rights in the mark dates back to the filing date; “As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing rights in the mark for the purposes of Policy 4(a)(i) dates back to Complainant’s filing date”; see Thomson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003). See also, FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum March 26, 2003):  Although the FDNY holds U.S. Patent and Trademark Office Reg. No. 2,606,740 for the FDNY mark, the registration was not effected until August 13, 2002 (nine months after Respondent’s <fdny.biz> domain name was registered). However, the FDNY’s successful registration of its mark on the Principal Register is evidence of its rights in the mark (emphasis added).

 

As Complainant filed an intent-to-use trademark application on November 29, 2005, and considering the trademark was registered in October 2007, Panel finds that the <xojets.com> domain name is confusingly similar to the XOJET trademark. See Associated Bank Corp. v. Texas Int’l Property Association, D2007-0334 (WIPO June 28, 2007) “questions of whether a mark is generic or highly descriptive and hence not susceptible to legal exclusivity as a valid federal trademark, are simply not within the purview of a UDRP proceeding”.

 

Additionally, the mere addition of an “s” to the mark XOJET fails to prevent a likelihood of confusion, as the two domain names are similar in sound appearance and connotation; see Cream Pie Club v. Halford, FA 95253 (Nat. Arb. Forum Aug. 17, 2000). Internet users seeking for Complainant’s website could make such a typing or spelling error and be directed to Respondent’s site.

 

Finally, Respondent’s arguments that the mark is generic and descriptive must be rejected as the words “xo and “jet” must not be considered individually, but as a whole; see Global Affiliates Inc. v. Texas International Property Associates, FA 1053370 (Nat. Arb. Forum Sept. 26, 2007), (where the alliance of two unrelated words was considered as the creation of a confusingly similar and distinctive mark).

 

Accordingly, the Panel finds that Complainant has established both common law and registered rights in the mark and therefore concludes that Policy 4(a)(i) has been satisfied.

 

 

Rights or Legitimate Interests

 

In regards to Policy 4(a)(ii), the Complainant has to provide prima facie evidence that the Defendant has no rights or legitimate interests in the <xojets.com> domain name. If the Complainant does so, the burden shifts to the Respondent who must come forward with evidence rebutting this assertion.

 

According to Policy 4(c)(i) (ii) (iii), the Complainant must provide prima facie evidence that:

(i)      The Respondent is not using nor has prepared to use the domain name in connection with a bona fide offering of goods or services

(ii)    The Respondent has not been commonly known by the domain name

(iii)   The Respondent is not making a legitimate non-commercial or fair use of the domain name and intends to misleadingly divert consumers or tarnish the trademark or service mark at issue.

 

Once the Complainant has asserted that the Respondent has no rights or legitimate interest in the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion; see Clerical Med. Inv. Group Ltd. V. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).

 

Complainant correctly asserts that Respondent has not submitted any credible evidence to the fact that it is commonly known by the <xojets.com> domain name, as XOJET is a fanciful and unique mark invented by Complainant. Further, the disputed domain name was registered under the name “Texas International Property Associates” and Complainant has not authorized Respondent to use the XOJET mark in any form whatsoever.

 

A Google search under Respondent’s name does not refer the user to the <xojets.com> website, but only to arbitration decisions regarding cybersquatting and typosquatting and involving Respondent. Thus, a Google XOJET search refers the user to websites exclusively dedicated to the XOJET mark held by the Xojet Inc. company. This leads the Panel to think that the XOJET trademark is fanciful and distinctive. Moreover, if, as argued by Respondent, the mark had not acquired distinctiveness it’s registration as a trademark would not have been approved by the U.S. Patent and Trademark Office.

 

The Panel finds that Respondent has failed to establish that it has been commonly known by the domain name under Policy 4(c)(ii).

 

Regarding Policy 4c)(i) and (iii), Complainant has established that the Respondent is not using nor has prepared to use the domain name in connection with a bona fide offering of goods or services and that Respondent is not making a legitimate non-commercial or fair use of the domain name and intends to misleadingly divert consumers or tarnish the trademark or service mark at issue.

 

Complainant first submits that the disputed domain name was registered to divert Internet users searching for Complainant’s website to Respondent’s pay-per-click portal site which provides links to third party services in direct competition with the private jet services offered by the Complainant. This contention is not rebutted. It can therefore be inferred that Respondent receives click through fees every time users click on one of these links.   

 

It has been established that redirecting Internet users to websites featuring pop-up advertisements and links to third-party websites does not constitute a bona fide offering of goods under Policy 4(c)(i) , nor a legitimate noncommercial or fair use under Policy 4(c)(iii), as the registrant of such a domain name receives financial compensation when users click on the click through fees; See Wells Fargo & co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003).

 

As provided by Complainant’s evidence, the <xojets.com> website also seems to have offered links to explicit sexual content websites. Panel finds that this does not constitute a bona fide offering of goods or services.

 

Finally, Complainant contends that Respondent used graphics that were directly inspired from the <xojet.com> website. Complainant supports this assertion by providing evidence of the graphics of the two websites at the time of complaint. After being sent a cease and desist letter on October 3, 2007 (date on which Complainant learned that Fortune magazine erroneously listed it’s website as <xojets.com>), the Respondent changed the <xojets.com> site content to display advertisements and links to third-party commercial websites related to travel agent services rather then private jet services (the link to an adult website was also withdrawn at the time). Complainant contends that displaying links to commercial websites related to travel agent services will still likely lead to confusion among Internet users as to a potential affiliation between Complainant and Respondent.

 

Respondent argues that it has a legitimate interest in the domain name as the domain name is comprised of generic and descriptive terms. Respondent therefore contends to be entitled to use the domain name as a web portal providing users with a search function as well as ads provided through the Google Adsense program. Respondent alleges that it conducts a legitimate business of registering generic terms to which no one can claim exclusive rights. Yet, as established by Complainant, no web searches show interchangeable use of the terms “xo” and “jet”, nor do searches for the XOJET mark or for XO alone show any descriptive use of these terms. Further, Respondent’s argument that the domain name is generic or descriptive based on the individual words “xo” (that Respondent contends is a common acronym for “executive office” or “executive officer”) and “jet” is useless, as a trademark may not be broken into fragments when it can be evaluated as a whole; see Ganz v. Texas Int’l property Assoc., FA 991778 (Nat. Arb. Forum July 19, 2007).

 

Respondent’s allegation that the XOJET mark is generic and descriptive has already been decided upon by the Panel, and such an argument is not sufficient to establish legitimate rights in a mark.

 

Furthermore, Respondent seems to be engaged in the practice of typosquatting, which consists of misspelling a mark and registering it as a domain name in order to take advantage of Internet users. Such a practice helps establish the lack of rights and legitimate interest in a domain name; see RMC of Ill Inc. v. Texas Int’l Property Association, FA 998091 (Nat. Arb. Forum Aug. 14, 2007) (finding that typosquatting belies a lack of rights or legitimate interest).

 

Accordingly, the Panel finds that Respondent has failed to establish any rights or legitimate interest in the <xojets.com> domain name under Policy 4(a)(ii).

 

 

Registration and Use in Bad Faith

 

In order to establish the registration and use of a domain name in bad faith, the Complainant has to establish any of the circumstances, in particular but without limitation, listed at paragraph 4(b) of the Policy. 

 

Complainant alleges that Respondent used the domain name to capture Internet users and divert them to websites and advertisements unrelated to Complainant. According to Complainant the addition of an “s” to the mark XOJET was deliberate and done with the intention to redirect Internet traffic to Respondent’s website, and create confusion with Complainant’s distinctive and fanciful mark.

 

Knowingly creating a likelihood of confusion with a Complainant’s mark consists of a use in bad faith of a domain name. Moreover, attracting Internet users to a website which contains commercial links to the websites of the Complainant’s competitors has been found to be a bad faith registration under Policy 4(b)(iii); see Tesco Pers. Fin. Ltd. V. Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007).

 

The use of click-through fees on the disputed domain name brings Panel to infer that Respondent is seeking commercial gain by attracting Internet users to its website after creating confusion with Complainants mark. It is well established that creating confusion between marks in order to obtain commercial gain has been found to be bad faith registration pursuant to Policy 4(b)(iv); see Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006).

 

The use of links to adult-oriented websites on the disputed domain name can be considered as an evidence of bad faith: “As regards Respondent’s use of the Domain Name to attract Internet users to an adult website, the Panelist’s view is of the following. Preliminary, it is commonly understood, under WIPO case law, that whatever the motivation of respondent, the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”. See Six Continents Hotels Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003).

 

Finally, Complainant has established that Respondent has engaged in a bad faith pattern of registering und using trademark related domain names. Respondent has been party to at least nineteen previous domain name disputes with the National Arbitration Forum in the past year, and each of the nineteen decisions set forth in Complainant’s Additional Submission have ordered transfer of the domain names on the basis of illegitimate cybersquatting or typosquatting.  

 

All this is further evidence of bad faith registration and use under Policy 4(b)(ii); see Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Nat. Arb. Forum May 17, 2004) (finding bad faith where Respondent engaged in the practice of registering domain names containing the marks of others).

 

It also seems that in the previous disputes, Respondent frequently advances the same two arguments that it registered the domain name before the first date of use of the mark by Complainant, and that the mark is generic and descriptive. See RMC of Ill. Inc. v. Texas Int’l Property Assoc., FA 998091 (Nat. Arb. Forum Aug. 14, 2007) (where it has been decided that repeatedly making the same arguments tends to support the allegations that Respondent has engaged into a pattern). “Finally TIP has been the Respondent in numerous UDRP cases, and has repeatedly made the same faulty arguments and baseless contentions resulting in the disputed domain names being transferred.  These proceedings are also evidence that Respondent is guilty of bad faith registration and use under Policy 4(b)(ii).”

 

Accordingly, the Panel finds that Respondent registered and used the <xojets.com> domain name in bad faith, and that Policy 4(a)(iii) is satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <xojets.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Hugues G. Richard, Panelist
Dated: December 24, 2007

 

 

 

 

 

 

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