Horizon Hobby, Inc. v. Sonny
Lambert
Claim Number: FA0804001176662
PARTIES
Complainant is Horizon Hobby, Inc. (“Complainant”), represented by Loius
J. Alex, of Cook, Alex, McFarron, Manzo, Cummings &
Mehler, Ltd.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bladecxpro.com>, <bladecx-2.com>,
<bladecx2.com>, <bladecx2.info>, <bladecx2.net>, <bladecx2.org>, <bladecppro.com>, <bladecppro.info>, <bladecppro.net>, <bladecppro.org>, <cx-2.com>, <bladecxpro.info>, <bladecxpro.net>,
<bladecxpro.org>, <e-flite.info>, <e-flite.org>, <eflite.info>, <horizonhobby.biz>, <bladecx2pro.com>, <bladecx2pro.net>, <cx2pro.com>, <bladecx.net>, <bladecx.biz>, <bladecx.info>, <bladecx.org>, <bladecxforum.com>, <bladecxmod.com>, <bladecxmods.com>, <bladecxpart.com>, <bladecxparts.com> and <bladecx3.com>, registered
with Godaddy.com,
Inc.
PANEL
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.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 7, 2008; the
National Arbitration Forum received a hard copy of the Complaint on April 8, 2008.
On April 8, 2008, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that <bladecxpro.com>, <bladecx-2.com>,
<bladecx2.com>, <bladecx2.info>, <bladecx2.net>, <bladecx2.org>, <bladecppro.com>, <bladecppro.info>, <bladecppro.net>, <bladecppro.org>, <cx-2.com>, <bladecxpro.info>, <bladecxpro.net>,
<bladecxpro.org>, <e-flite.info>, <e-flite.org>, <eflite.info>, <horizonhobby.biz>, <bladecx2pro.com>, <bladecx2pro.net>, <cx2pro.com>, <bladecx.net>, <bladecx.biz>, <bladecx.info>, <bladecx.org>, <bladecxforum.com>, <bladecxmod.com>, <bladecxmods.com>, <bladecxpart.com>, <bladecxparts.com> and <bladecx3.com> domain
names are registered with Godaddy.com, Inc. and
that the Respondent is the current registrant of the names. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, 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 April 14, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 14, 2008 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@bladecxpro.com, postmaster@bladecx-2.com, postmaster@bladecx2.com, postmaster@bladecx2.info, postmaster@bladecx2.net, postmaster@bladecx2.org, postmaster@bladecppro.com, postmaster@bladecppro.info, postmaster@bladecppro.net, postmaster@bladecppro.org, postmaster@cx-2.com, postmaster@bladecxpro.info, postmaster@bladecxpro.net,
postmaster@bladecxpro.org, postmaster@e-flite.info, postmaster@e-flite.org, postmaster@eflite.info, postmaster@horizonhobby.biz,
postmaster@bladecx2pro.com, postmaster@bladecx2pro.net, postmaster@cx2pro.com, postmaster@bladecx.net, postmaster@bladecx.biz,
postmaster@bladecx.info, postmaster@bladecx.org, postmaster@bladecxforum.com, postmaster@bladecxmod.com,
postmaster@bladecxmods.com,
postmaster@bladecxpart.com, postmaster@bladecxparts.com and postmaster@bladecx3.com by e-mail.
A Response was received but
considered deficient pursuant to ICANN Rule 5 because it was received late in
hard copy.
On May 14, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed John J. Upchurch as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1.
The
disputed domain names are each identical to or confusingly similar to
Complainant’s marks;
2.
Respondent
lacks rights and legitimate interests in the disputed domain names; and
3.
The
disputed domain names were registered and are being used in bad faith.
FINDINGS
The Panel finds in favor of the Complainant
and finds that all of the disputed domain names should be transferred from
Respondent to Complainant.
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.
Complainant has asserted rights in
the E-FLITE, BLADE, HORIZON HOBBY and CX2 marks. Complainant has provided evidence of the
registration of its E-FLITE and BLADE marks with the USPTO on March 14, 2006
(Reg. No. 3,068,160) and November 7, 2007 (Reg. No. 3,342,743)
respectively. The Panel finds Complainant’s
registration of its E-FLITE and BLADE marks establishes Complainant’s rights in
the marks pursuant to Policy ¶ 4(a)(i). See
Additionally, Complainant has
asserted common law rights in its BLADE, HORIZON HOBBY and CX2 marks. The Panel finds registration of a mark with a
governmental authority is not necessary to confer rights in a mark provided
Complainant can provide evidence of common law rights in its BLADE, HORIZON HOBBY
and CX2 marks pursuant to Policy ¶ 4(a)(i).
See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Rules do not require that the complainant's trademark
or service mark be registered by a government authority or agency for such
rights to exist); see also
Complainant has used its BLADE mark to market its product line of remote controlled hobby products since November 15, 2001. Complainant has provided evidence of the continuous use of its mark to introduce new product lines and market them through advertisements in commerce. Therefore, the Panel finds Complainant has sufficiently established common law rights in its BLADE mark pursuant to Policy ¶ 4(a)(i) dating back to November 15, 2001. See BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that the complainant had provided evidence that it had valuable goodwill in the <minorleaguebaseball.com> domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark).
Additionally, Complainant has continuously used its HORIZON HOBBY mark to manufacture and sell hobby model products including radio controlled aircrafts, parts and accessories since 1985. Complainant has provided evidence of the use of its HORIZON HOBBY mark in commerce over this time period including press releases and advertisements. The Panel finds Complainant has sufficiently established common law rights in its HORIZON HOBBY mark pursuant to Policy ¶ 4(a)(i) dating back to 1985. See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Complainant also provides evidence it has used its CX2 mark continuously in commerce to produce and market a specific line of remote controlled hobby aircraft. Complainant has continuously advertised and offered products under its CX2 mark since October 12, 2006. Complainant has provided evidence demonstrating the online and print advertisement of the products under its CX2 mark. The Panel finds Complainant has adequately established common law rights in its CX2 mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”).
Respondent’s
disputed domain names incorporate Complainant’s alleged marks with the addition
of typos, the addition of generic or descriptive terms or their abbreviations,
the addition or deletion of punctuation such as hyphens and the addition of
top-level domains. The Panel finds that
none of these alterations sufficiently distinguish Respondent’s disputed domain
names from Complainant’s E-FLITE, BLADE, HORIZON HOBBY or CX2 marks. Therefore, the Panel finds Respondent’s
disputed domain names are confusingly similar to Complainant’s marks pursuant
to Policy ¶ 4(a)(i). See Dow Jones & Co., Inc. v.
Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the
deliberate introduction of errors or changes, such as the addition of a fourth
“w” or the omission of periods or other such “generic” typos do not change
respondent’s infringement on a core trademark held by the complainant); see also Arthur Guinness Son &
Co. (
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domains names pursuant to Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests in the disputed domain names. 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 WHOIS information lists Respondent as “Sonny Lambert.” Complainant alleges Respondent applied to be an authorized dealer of Complainant’s products but Complainant rejected that application. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Respondent is using all of the
disputed domain names to advertise and offer for sale unauthorized parts and
accessories for Complainant’s hobby radio controlled aircrafts. The Panel finds Respondent’s use of the
disputed domain names 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 Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain
names because Respondent competes with Complainant by selling Complainant's
used parts without a license from Complainant to do so.”); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat.
Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain
name (and Complainant’s mark) to sell products in competition with Complainant
demonstrates neither a bona fide
offering of goods or services nor a legitimate noncommercial or fair use of the
name”).
The Panel finds that Respondent’s offer to sell the
disputed domain names indicates that Respondent lacks rights and legitimate
interests under Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4,
2003) (“Respondent’s lack of rights and legitimate interests in the domain name
is further evidenced by Respondent’s attempt to sell its domain name
registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use).
Complainant states Respondent
offered to sell the disputed domain names for two million dollars each or eight
million dollars collectively. The Panel
finds Respondent’s apparent willingness to dispose of the disputed domain names
in return for compensation exceeding the expenses 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
registered thirty-one domain names incorporating Complainant’s marks. The Panel finds these registrations
constitute a pattern and are evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept.
8, 2000) (finding that one instance of registration of several infringing
domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also
EPA European Pressphoto Agency B.V. v.
Respondent’s disputed domain names
all offer for sale unauthorized products of parts and upgrades for Complainant’s
products. The Panel finds Respondent’s
uses of these disputed domain names constitute disruption and are evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS,
FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the
<fossilwatch.com> domain name from the respondent, a watch dealer not
otherwise authorized to sell the complainant’s goods, to the complainant); see also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent
acted in bad faith by attracting Internet users to a website that competes with
the complainant’s business).
Complainant contends that
Respondent is using the confusingly similar disputed domain names to sell
unauthorized parts and upgrades for Complainant’s products. Respondent presumably profits from this
use. Additionally, the Panel determines
that Respondent’s use of Complainant’s marks creates a likelihood of confusion
regarding the source of the content resolving from the disputed domain names. The Panel finds this is an attempt by
Respondent to profit from the goodwill associated with Complainant’s
marks. Therefore, the Panel finds
Respondent’s actions constitute bad faith registration and use pursuant to
Policy ¶ 4(b)(iv).
Additionally, Complainant alleges Respondent registered
some of the disputed domain names within days or months of Complainant’s press
releases regarding new product lines.
The Panel finds Respondent’s registration and use of these disputed
domain names is opportunistic and evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See Sota v. Waldron,
D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of
the <seveballesterostrophy.com> domain name at the time of the
announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates
an opportunistic registration”); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000)
(finding that the respondent demonstrated bad faith where the respondent was
aware of the complainant’s famous mark when registering the domain name as well
as aware of the deception and confusion that would inevitably follow if he used
the domain names).
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 <bladecxpro.com>, <bladecx-2.com>,
<bladecx2.com>, <bladecx2.info>, <bladecx2.net>, <bladecx2.org>, <bladecppro.com>, <bladecppro.info>, <bladecppro.net>, <bladecppro.org>, <cx-2.com>, <bladecxpro.info>, <bladecxpro.net>,
<bladecxpro.org>, <e-flite.info>, <e-flite.org>, <eflite.info>, <horizonhobby.biz>, <bladecx2pro.com>, <bladecx2pro.net>, <cx2pro.com>, <bladecx.net>, <bladecx.biz>, <bladecx.info>, <bladecx.org>, <bladecxforum.com>, <bladecxmod.com>, <bladecxmods.com>,
<bladecxpart.com>, <bladecxparts.com>
and <bladecx3.com> domain names be TRANSFERRED from
Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: May 28, 2008
National
Arbitration Forum
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