Textron Innovations Inc. v. Apple International Inc Ltd / Richard Harper
Claim Number: FA1210001466330
Complainant is Textron Innovations Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, PLC, Virginia, USA. Respondent is Apple International Inc Ltd / Richard Harper (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <407bell.com>, registered with Fastdomain, Inc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 8, 2012; the National Arbitration Forum received payment on October 8, 2012.
On October 10, 2012, Fastdomain, Inc. confirmed by e-mail to the National Arbitration Forum that the <407bell.com> domain name is registered with Fastdomain, Inc. and that Respondent is the current registrant of the name. Fastdomain, Inc. has verified that Respondent is bound by the Fastdomain, Inc. 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 October 11, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 17, 2012 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@407bell.com. Also on October 11, 2012, 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.
On October 18, 2012, the Parties submitted a Joint Request to Stay the Administrative Proceeding until December 3, 2012. The Order granting the Stay was approved on October 18, 2012. On December, 3, 2012, Complainant submitted a Request to Continue the Administrative Proceeding, which was granted on December 3, 2012.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 27, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
Complainant made the following contentions.
1. Complainant is the owner of the BELL and 407 marks that it licenses to Bell Helicopter Textron Inc.:
BELL Reg. No. 937,437 registered July 11, 1972 and
407 Reg. No. 2,371,267 registered October 1, 1999.
2. The domain name <407bell.com> is confusingly similar to Complainant’s registered BELL and 407 marks because the disputed domain name combines the two marks.
3. Respondent has no rights or legitimate interests in the disputed domain name.
4. The disputed domain name resolves to a web page that carries the heading “Apple International Inc.” and offers a variety of goods and services, some of which relate to the BELL 407 helicopter and others which are totally unrelated.
5. Complainant has not licensed or permitted Respondent to use its BELL and 407 marks in connection with any goods or services or for use in a domain name.
6. Respondent’s website resolving from the <407bell.com> domain name does offer parts and services related to the BELL 407 helicopter, but the disputed domain name is not being used to sell only BELL or BELL 407 goods and services.
7. There is also nothing on Respondent’s resolving website that contains any disclosure accurately and prominently disclosing its relationship to Complainant.
8. Respondent is not an authorized BELL helicopter distributor or authorized reseller but still prominently displays the BELL helicopter logo on its web page.
9. Respondent uses the resolving website to offer for sale non-BELL helicopter parts and repair services and to promote the sale of fixed-wing aircraft.
10. Since Respondent uses its resolving website to sell non-BELL helicopter goods and services, including goods and services related to Complainant’s competitors, and totally fails to disclose accurately and prominently its non-existent relationship with Complainant, Respondent has failed to meet at least two of the “Oki Data” requirements. This failure indicates that Respondent is not making a bona fide offering of goods or services at the disputed domain name.
11. The resolving website is clearly a commercial site.
12. Respondent does not operate a business known as “407 Bell,” nor does it advertise under that name. There is absolutely nothing that indicates that Respondent is commonly known as “407 Bell.”
13. Respondent is attempting to divert Internet traffic to its website at the <407bell.com> domain name when Internet users are looking for BELL helicopter or its products.
14. The facts of the record support a finding that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(i).
15. Respondent is using the <407bell.com> domain name to attempt to attract intentionally, for commercial gain, Internet users to the resolving web page by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the disputed domain name, which is evidence of bad faith under Policy ¶ 4(b)(iv).
16. It is clear that Respondent registered the disputed domain name fully aware of the existence of Complainant and its marks because Complainant’s registrations of its marks predates Complainant’s registration of the domain name by either 40 or 10 years.
17. Respondent was found in a previous proceeding to have registered and used in bad faith the <206bell.com> domain name, which is a combination of the 206 and BELL marks owned by Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Bell Helicopter Textron Inc. ("Bell Helicopter") is a United States company that is well known throughout the world as the manufacturer of quality helicopters under the BELL mark.
2. Complainant is a United States company that is the owner of the following BELL and 407 marks that it licenses to Bell Helicopter:
BELL Reg. No. 937,437 registered July 11, 1972 and
407 Reg. No. 2,371,267 registered October 1, 1999.
3. Respondent is a United Kingdom company that buys, sells and acts as a broker in the sale of aircraft, including helicopters and aviation spare parts.
4. Respondent registered the disputed domain name on June 23, 2011. The domain name resolves to a website where Respondent advertises the sale of Bell helicopters and spare parts, other brands of spare parts including spare parts for helicopters that compete with Bell, other types of aircraft and servicing and maintenance of both Bell and non-Bell helicopters.
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 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.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant argues that it is the owner of the BELL and 407 marks that it licenses to Bell Helicopter Textron Inc. Complainant has provided evidence of its registrations for these marks with the United States Patent and Trademark Office (“USPTO”):
BELL Reg. No. 937,437 registered July 11, 1972 and
407 Reg. No. 2,371,267 registered October 1, 1999.
The Panel finds that these USPTO trademark registrations are sufficient to show that Complainant owns rights in the BELL and 407 marks for the purposes of Policy ¶ 4(a)(i), even though Respondent is located in the United Kingdom and not the U.S. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s BELL mark or its 407 mark. Complainant argues that the domain name <407bell.com> is confusingly similar to Complainant’s registered BELL and 407 marks because the disputed domain name combines the two marks. The Panel also notes that the disputed domain name attaches the generic top-level domain (“gTLD”) “.com” to Complainant’s marks. Previous panels have found that combining one of a complainant’s marks with another of a complainant’s marks, as well as adding a gTLD, does not prevent a finding of confusing similarity. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also 3M Co. v. Silva, FA 1429349 (Nat. Arb. Forum Mar. 30, 2012) (finding that the <littmanncardiologyiii.info> domain name is confusingly similar to the complainant’s LITTMANN and CARDIOLOGY III marks). The Panel therefore concludes that Respondent’s <407bell.com> domain name is confusingly similar to each of Complainant’s 407 and its BELL mark according to Policy ¶ 4(a)(i) as the objective internet user would conclude that the domain name was invoking either of the two trademarks or both of them.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant 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 it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s 407 and BELL trademarks and to use them in its domain name;
(b) Respondent has then caused the disputed domain name to resolve to a website that promotes Complainant’s products and spare parts as well as products not related to Complainant’s business;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant further submits that it has not permitted or licensed
Respondent to use the BELL and 407 marks in connection with any goods or services or in any domain name. Complainant also alleges that Respondent does not operate a business known as “407 Bell,” nor does it advertise under that name. Complainant argues that there is absolutely nothing to indicate that Respondent is commonly known as “407 Bell.” Based on this evidence and the submissions of Complainant, the Panel determines that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark);
(e) Complainant contends that Respondent’s disputed domain name resolves to
a commercial website with the heading “Apple International Inc.” that offers a variety of goods and services, some of which relate to the BELL 407 helicopters and others which are totally unrelated. Complainant argues that the resolving website offers for sale non-BELL helicopter parts and repair services, as well as promoting the sale of fixed-wing aircraft. Complainant asserts that the resolving website is not being used to sell only BELL goods and services. The Panel has examined the pages of Respondent’s website exhibited to the Complainant and finds that Respondent’s assertions are correct. Complainant further contends that Respondent is not an authorized BELL helicopter distributor or authorized reseller, and that there is no disclosure on the resolving website of Respondent’s true relationship with Complainant. Complainant argues that Respondent therefore fails to meet at least two of the principles emerging from the decision in Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903
and similar cases because it sells non-BELL goods and services and also because fails to disclose accurately and prominently its relationship with Complainant. As to the first of those two Oki Data requirements, the decision in Oki Data made it quite clear that a reseller may only rely on the decision if it used the website to which the disputed domain name resolved “…to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774 (WIPO Feb. 26, 2001) (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate).” Complainant has amply demonstrated by evidence and argument that Respondent does not meet this requirement because as well as Bell helicopters and parts, it promotes on its website non-Bell helicopters and parts and, indeed, aircraft after than helicopters. As to the second of the two Oki Data requirements referred to, had that relationship been accurately described, Respondent would have revealed that it did not have a commercial relationship with Complainant that justified its use of Complainant’s trademarks or its promotion of Complainant’s products or products with other brands. Because it did not have such a relationship, Respondent is, without permission, using Complainant’s trademark to sell Complainant’s and other brands of aviation equipment; such conduct cannot amount to a right or legitimate interest. As a result, the Panel agrees with Complainant’s submission that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). The Panel finds that Respondent’s use of the disputed domain name to sell Complainant’s goods and services, as well as other parties’ goods and services, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use, either within the Oki Data situation or otherwise. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not a bona fide use); see also Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
All of these matters go to make out the prima facie case against Respondent.
Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it. The Panel notes, however, that in email correspondence between the parties on the Joint Request to Stay the Administrative Proceeding , Respondent submitted to Complainant that two of Respondent’s competitors had websites, namely www.bell407.com and www.bell206.com, that were used for similar purposes as those for which Respondent had used the disputed domain name and the website to which it resolved. However, whatever the proprieties of the use of other domain names may be, it cannot effect the Panel’s decision on the disputed domain name in this proceeding and , at best, they raise matters that are solely for Complainant to pursue.
Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent uses the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to the resolving web page by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of the disputed domain name. Complainant argues that the resolving website is used to offer products and services for sale, some of which are Complainant’s own products and services and others which are totally unrelated. Complainant asserts that the disputed domain name is designed to imply that there is an affiliation between Respondent and BELL Helicopter. Complainant contends that Respondent is not authorized to use the BELL or 407 marks, and its use of the disputed domain name is likely to confuse consumers to believe that they have reached a website of an authorized BELL helicopter dealer or parts supplier. Complainant alleges that Respondent’s activities at the disputed domain name fall squarely within the parameters of Policy ¶ 4(b)(iv). The Panel agrees with Complainant on each of those submissions and finds bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the BELL and 407 marks and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <407bell.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 28, 2012
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