CharterX, Inc. and Wyvern Consulting, Ltd. v. Gregg Westgate
Claim Number: FA1007001335604
Complainant is CharterX, Inc. and Wyvern
Consulting, Ltd. (“Complainant”),
represented by Karen J. Bernstein, of Law Offices of Karen J. Bernstein, LLC, New York, USA. Respondent is Gregg Westgate (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wyvern.com>, registered with Network Solutions, LLC.
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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 15, 2010.
On July 16, 2010, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <wyvern.com> domain name is registered with Network Solutions, LLC and that the Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 July 20, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 2010 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 firstname.lastname@example.org by e-mail. Also on July 20, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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.
A timely Response was received and determined to be complete on July 28, 2010.
Complainant’s Additional Submission was received on August 2, 2010 in compliance with Supplemental Rule 7.
On July 19, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., as Panelist.
Complainant requests that the domain name <wyvern.com>, be transferred from Respondent to Complainant.
Complainant, Charter X, Inc., a
Respondent registered the disputed domain name on or about January 24, 2006. In June 2006 Complainant contacted Respondent to inquire about Respondent’s using the domain name, and Respondent indicated it was uncertain of its plans. Complainant next corresponded with Respondent in May of 2010 demanding transfer of the disputed domain name. Respondent indicated that it was now using the domain name as a private forum for his “World of Warcraft” organization. Complainant contends that the disputed domain name is not accessible to the public and notes that World of Warcraft is a multiplayer online game.
Complainant contends that the disputed domain name is confusingly similar to Wyvern’s trade name, through which it has established secondary meaning sufficient to assert common law rights based upon twenty years of substantial good will in the mark, substantial media coverage in the creation of a valuable association in the minds of purchasers as a source of vital safety information for the private aviation industry, prior to registration of the disputed domain name. Complainant contends that the disputed domain name is identical to its WYVERN mark.
Complainant contends that it has not licensed, or otherwise authorized Respondent to use the WYVERN trade name; Respondent is not known by the name WYVERN, does not operate a business under the name WYVERN, and is not making a bona fide offering of goods or services, or making a legitimate non-commercial or fair use of the disputed domain name because the disputed domain name is inactive.
Complainant contends that the disputed domain name is used in bad faith because the website contains the language “Forbidden. Access Denied” when access has been attempted. Complainant contends that a review of the website located at <www.archive.org> does not reveal the domain name was used for any legitimate business purpose and that Respondent’s representations regarding its intended use of the domain name have been misleading.
Respondent contends he is the chief technology officer of First Reserve Corporation and purchased the domain name in 2005 for the purpose of using it in conjunction with his employer’s business for a new company that would specialize in gasification projects. The venture never materialized and he elected to later use the domain as a private forum for his World of Warcraft guild. Respondent contends he selected the Wyvern name because it is a mythical winged dragon that is featured in the World of Warcraft game. Respondent had not heard of Wyvern the company, until he received correspondence from Complainant in 2006, after his registration of the domain name. Respondent claims that the site is used for private purposes and he does not sell any product or conduct any commercial activity on the website. Respondent’s website can be joined only by invitation and only invited members have access to the website. Respondent contends that his use of the domain name has nothing to do with Wyvern’s business, and he is not aware of any confusion regarding his use of the domain.
In response to Complainant’s allegations, Respondent has “no comment on what Wyvern says about its trademark or brands” and agrees that his domain name contains the Wyvern name. He contends that he uses the <www.wyvern.com> name in connection with his legitimate, non-commercial recreational services related to World of Warcraft and submits proof of email usage under the name <www.wyvern.com> dating back to 2007. Respondent contends that he did not register the domain name in bad faith, or for any improper purpose. He originally intended to use it for business purposes and later abandoned that project to use it for his own personal entertainment and recreational purposes.
C. Additional Submissions
Complainant submits an additional submission noting that it is unable to verify or dispute Respondent’s statement that he “had not heard of the Wyvern Company when he registered the domain name”. Complainant contends that Respondent’s passive holding of the disputed domain name is causing Complainant to lose potential customers, but submits no proof of lost customers, or any proof of confusion in the industry. Complainant also believes that Respondent is attempting to raise a laches defense because he had not heard from Complainant for 4 years after their initial correspondence in 2006. Complainant contends that it did not pursue the matter because it was misled by Respondent to believe he was using it for a legitimate business purpose. Complainant also points out that Respondent does not dispute Complainant’s trademark rights to the WYVERN mark, Respondent fails to show that he is making a legitimate use of the disputed domain name, and that Respondent’s renewals of the disputed domain name and passive holding of the domain name, were in bad faith.
Respondent in its additional response states that his previous submission adequately explains why he has not acted in bad faith, or violated the Complainant’s rights.
Complainant has met its burden of proof with respect to the first two UDRP factors, but has failed to submit sufficient proof to establish Respondent’s registration and use is in bad faith, and thus its request for transfer is denied.
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:
<![if !supportLists]>(1) <![endif]>the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
<![if !supportLists]>(2) <![endif]>the Respondent has no rights or legitimate interests in respect of the domain name; and
<![if !supportLists]>(3) <![endif]>the domain name has been registered and is being used in bad faith.
Complainant does not own a trademark registration for its WYVERN mark, but contends that it owns common law rights in such. Trademark registrations are not necessary to establish rights under Policy ¶ 4(a)(i) if Complainant can establish common law rights in its mark through an established secondary meaning. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
Complainant alleges that it is a
leading authority on aviation safety, auditing, consulting, and monitoring
services for the private aviation industry and has used the trade name WYVERN
continuously in that capacity since 1991.
Complainant contends that since 1991 it has earned approximately $28
million in gross profits and has spent around $4 million promoting and
advertising the WYVERN name, and submits documentary proof and a signed affidavit
in support. Complainant asserts that it
registered its official <wybernltd.com> domain name on August 12, 1998
and has used the website extensively since that date. Further, Complainant states it is a long time
member of many leading aviation trade associations including the National Air
Transportation Association, the National Business Aviation Association and the
Flight Safety Foundation. Complainant
further provides evidence of the media coverage surrounding it in aviation
publications such as the Aviation
International News and the Business
Jet Traveler years before the disputed domain name was registered. Complainant notes that the above publications
have a combined circulation of 71,000 per month in print and at least 160,000
on-line visitors per month. Complainant
also provides evidence that it formed a
Complainant contends that the <wyvern.com> domain name is identical to its WYVERN mark. Complainant alleges that the only change made to its mark is the addition of the generic top-level domain (“gTLD”) “.com.” Respondent makes no contentions with respect to Policy ¶4(a)(i), and does not dispute any of Complainant’s contentions in this regard. Respondent has chosen to not challenge Complainant’s claim of common law rights and secondary meaning and the Panel accepts Complainant’s claims and finds that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i) as it contains Complainant’s entire WYVERN mark in addition to the gTLD “.com.”
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.”).
Complainant contends that it has not licensed or otherwise authorized Respondent to use the WYVERN mark. Further, Complainant argues that Respondent is not commonly known by the WYVERN mark or the disputed domain name. Complainant notes that the WHOIS information for the <wyvern.com> domain name identifies “Gregg Westgate” as the registrant. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006).
Complainant argues in its Complaint and Additional Submission that Respondent is not making an active use of the disputed domain name, and as such is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Complainant submits screen-shot evidence to show that Respondent does not have an active profile on the World of Warcraft site, and has not used the name “Kalyx” that Respondent references in its Response since 2008. Respondent’s inactive holding 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 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. 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)). Complainant has met its initial burden.
In response Respondent offers only proof of use of the domain as an email address. Complainant argues that even if Respondent was using the <wyvern.com> domain name as it says, the use of a domain name as an e-mail address is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. UDRP decisions have found that use of a disputed domain name as an e-mail address without more, is not sufficient. See Alienware Corp. v. Dann, FA 1290045 (Nat. Arb. Forum Dec. 28, 2009) (“If the use of the disputed domain name by itself as an email address for the Respondent amounted to bona fide use, UDRP would become easily avoidable.”); see also Pharmacia & Upjohn Co. v. Xanax Advocates, D2000-0817 (WIPO Sept. 10, 2000) (“The use of the domain name for internal identification purposes does not constitute use or demonstrable preparation for use ‘in connection with a bona fide offering’ of services in the sense of paragraph 4(c)(1) of the Policy since no use has been made of the name in connection with identifying a service or service provider”). Proof of Respondent’s use of the disputed domain name as a “@wyvern” designation in an email address without more use does not amount to 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).
Complainant alleges that Respondent’s disputed domain name resolves to a website that displays “Forbidden. Access Denied.” Complainant argues that such passive holding of the disputed domain name is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the WYVERN mark. Complainant admits that Respondent did not have actual knowledge of Complainant’s trademark rights until Complainant contacted Respondent on June 21, 2006.
Complainant has failed to establish that Respondent violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent contends that it did not register the <wyvern.com> domain name in bad faith because it originally registered the domain name for its company, First Reserve Corporation, which is an investment firm in the energy field. Respondent contends that it purchased the disputed domain name in 2005, without knowledge of Complainant’s company, for a new business specializing in gasification projects. Respondent further contends that the venture never materialized, so it decided to keep the <wyvern.com> domain name and use it personally as a private forum for its World of Warcraft guild. Complainant has failed to establish Respondent’s registration of the <wyvern.com> domain name was made in bad faith. See Sanitech Corp. v. Paton, FA 935273 (Nat. Arb. Forum Apr. 30, 2007) (holding that Policy ¶ 4(a)(iii) requires bad faith registration and use, so where a respondent initially registered the disputed domain name in good faith, the panel should deny the transfer of the disputed domain name to the complainant); see also Greyson Int’l, Inc. v. Loncar, D2003-0805 (WIPO Dec. 3, 2003) (“Paragraph 4(a)(iii) is conjunctive [requiring that] both registration and use in bad faith must be proven. Numerous panels have applied this language strictly, to deny complaints [where the complainant fails to prove both].”).
Respondent further argues that the general public cannot access content at the disputed domain name due to Respondent’s administrative lock that only enables those Internet users who have been invited to view the content of the website. Respondent contends that it is using the disputed domain name in connection with a forum and e-mail service connected to the World of Warcraft game. Respondent argues that it did not register the domain name with knowledge of Complainant's Company, or to sell it, use it against Complainant’s business, or otherwise disrupt Complainant’s business interests. Complainant does not have a registered trademark, and offers no proof of consumer confusion or loss of business. Respondent’s proof of its current use is minimal, but the burden is upon Complainant on this issue. Respondent’s use of the disputed domain name as a forum and e-mail service for its World of Warcraft guild does not establish that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Schering Aktiengesellschaft v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that because “Respondent neither offered the Domain Name for sale, nor wanted it to disrupt Complainant’s business, [nor] prevent Complainant from reflecting the mark in its domain,” it did not register or use the domain name <metagen.com> in bad faith); see also Seaway Bolt & Specials Corp. v. Digital Income Inc., FA 114672 (Nat. Arb Forum Aug. 5, 2002) (finding that because the complainant’s mark was not particularly well-known outside of its field, and the complainant failed to show that the respondent knew or should have known about the complainant at the time of registration, the respondent did not register the domain name in bad faith).
Complainant failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <wyvern.com> domain name REMAIN with Respondent.
David P. Miranda, Esq., Panelist
Dated: August 16, 2010
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