Alpha Flying, Inc. v. Planesense
Claim Number: FA0910001289800
Complainant is Alpha Flying, Inc. (“Complainant”), represented by Gary M. Arber, of Alpha Flying, Inc., New Hampshire, USA. Respondent is Planesense (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <planesense.com>, registered with Network Solutions, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 16, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 19, 2009.
On October 16, 2009, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <planesense.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 October 26, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 16, 2009 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@planesense.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 19, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <planesense.com> domain name is identical to Complainant’s PLANESENSE mark.
2. Respondent does not have any rights or legitimate interests in the <planesense.com> domain name.
3. Respondent registered and used the <planesense.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Alpha Flying, Inc., is a well-known aviation company. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the PLANESENSE mark (Reg. No. 2,006,047 issued October 8, 1996).
Respondent registered the <planesense.com> domain name on November 11, 1997. Respondent’s disputed domain name resolves to a blank webpage. After Complainant contacted Respondent about the disputed domain name, Respondent offered the disputed domain name for sale.
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 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 domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant holds a trademark registration for the
PLANESENSE mark with the USPTO (Reg. No. 2,006,047 issued October 8,
1996). The Panel finds that Complainant
has established rights in the PLANESENSE mark for purposes of Policy ¶ 4(a)(i) through
its trademark registration with the USPTO.
See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the
complainant had sufficiently established rights in the SKUNK WORKS mark through
its registration of the mark with the USPTO); see also Clear!Blue
Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5,
2007) (“The Panel finds that Complainant has established trademark rights in
the CLEAR BLUE marks through introduction of the certificates for its U.S.
registration for those trademarks. The
U.S. Trademark Act is clear that the certificate of registration on the Principal
Register, as here, is prima facie
evidence of the validity of the registered mark and the registrant's exclusive
right to use the mark in commerce in on or in connection with the goods
specified in the registration.”).
Complainant alleges that
Respondent’s <planesense.com> domain name is identical to
Complainant’s PLANESENSE mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains
Complainant’s mark in its entirety and adds the generic top-level domain
(“gTLD”) “.com.” The addition of a gTLD does not differentiate a domain name
from an incorporated mark in any significant way because every domain name must
contain a gTLD. Therefore, the Panel
finds that this change does not minimize or eliminate the resulting likelihood
of confusion, and so Respondent’s disputed domain name is not sufficiently
distinguished from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See
Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000)
(finding <pomellato.com> identical to the complainant’s mark because the
generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Busy
Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000)
("[T]he addition of the generic top-level domain (gTLD) name ‘.com’
is . . . without legal significance since use of a gTLD is
required of domain name registrants . . . ."). Therefore, the Panel finds that Respondent’s <planesense.com> domain name is identical to
Complainant’s PLANESENSE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or
legitimate interests in the disputed domain name. Complainant is required to produce a prima facie case in support of its
allegations and then the burden shifts to Respondent to prove it possesses
rights or legitimate interests in the disputed domain name. The Panel finds Complainant has adequately
established a prima facie case. Due to Respondent’s failure to respond to
these proceedings, the Panel may assume Respondent does not possess rights or
legitimate interests in the disputed domain name. The Panel, however, will examine the record
to determine whether Respondent possesses rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c).
See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s
Submission constitutes a prima facie case under the Policy, the burden
effectively shifts to Respondent. Respondent’s failure to respond means that
Respondent has not presented any circumstances that would promote its rights or
legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am.
Express Co. v. Fang Suhendro, FA 129120
(Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond,
it is presumed that Respondent lacks all rights and legitimate interests in the
disputed domain name.”).
The Panel finds that although Respondent is
listed as “planesense” in the WHOIS information, without affirmative evidence
of Respondent being commonly known by the disputed domain name,
Respondent lacks all rights and legitimate interests in the disputed domain
name pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita,
FA 155461 (Nat. Arb. Forum June 17, 2003)
(finding that the respondent was not “commonly known by” the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS
contact information because there was “no
affirmative evidence before the Panel that the respondent was ever ‘commonly
known by’ the disputed domain name prior to its registration of the disputed
domain name”); see also City News & Video v.
Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although
Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is
no evidence before the Panel to indicate that Respondent is, in fact, commonly
known by the disputed domain name <citynewsandvideo.com> pursuant to
Policy ¶ 4(c)(ii).”).
Respondent’s disputed domain name resolves to a blank website. The Panel finds that Respondent’s failure to make an active use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Complainant alleges that Respondent offered to sell the disputed domain to Complainant. Respondent’s apparent willingness to offer the disputed domain name for sale is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); 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 its rights).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent offered to sell the
disputed domain name to Complainant for an amount above Respondent’s
out-of-pocket costs. The Panel finds
that this offer to sell is evidence of bad faith registration and use pursuant
to Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v.
AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding
the respondent’s offer to sell the domain name for $2,000 sufficient evidence
of bad faith registration and use under Policy ¶ 4(b)(i)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA
180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the
disputed domain name registration for sale establishes that the domain name was
registered in bad faith under Policy ¶ 4(b)(i).”).
Respondent has registered the disputed domain name but has failed to make an active use of it. The Panel finds that such non-use consitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that failure to make an active use of a domain name permits an inference of registration and use in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <planesense.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 30, 2009
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