AirFX, LLC v. ATTN AIRFX.COM
Claim Number: FA1104001384655
Complainant is AirFX, LLC (“Complainant”), represented by Jeff Schwindt of AirFX, LLC, Indiana, USA. Respondent is ATTN AIRFX.COM (“Respondent”), represented by Marc Lurie, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <airfx.com>, registered with GoDaddy.com, 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.
Hon. Nelson A Diaz (ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 19, 2011; the National Arbitration Forum received payment on April 19, 2011.
On April 20, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <airfx.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 April 26, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 2011 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 email@example.com. Also on April 26, 2011, 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 May 3, 2011.
On May 10, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nelson A Diaz as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts the disputed domain name is identical to the mark protected by U.S.Trademark Registration No. 3214511 and is the current owner.
Respondent should be considered as having no rights or legitimate interests in the disputed domain name because Respondent has admitted that he has no product or service that relates to the registered trademark, and never has. Additionally, Respondent is not commonly known by the domain name in question, nor has Respondent used the domain name in connection with a legitimate noncommercial or fair use without intent for commercial gain. Furthermore, Respondent has not used the name for a legitimate offer of goods or services. In contrast, Respondent's airfx.com website has at all known times held a temporary page with links to unrelated items, such as generators and DJ equipment. Respondent appears to have registered the disputed domain name in bad faith given the timing of his registration and the tactics he has employed in discussions with Complainant or Complainant's representatives, who have always identified Complainant as the rightful trademark owner. In particular, Complainant assertsas follows: (i.) Respondent has offered to rent, and not sell, the disputed website to Complainant for amounts that would far exceed any cost Respondent may have had in acquiring the domain name. Moreover, Respondent has insisted that any rental period would be a short term, to be renegotiated frequently, with Respondent receiving a royalty of Complainant's sales. (ii.) Respondent appears to have registered the disputed domain name within months of Complainant's registered trademark being published for opposition - a process that places a trademark in a public database. Just one month before Complainant's mark was advanced to "Registered" status, the Respondent registered the disputed domain. (iii.) In previous conversations with Complainant or its representatives, Respondent held himself out as an "intellectual property attorney," and therefore has acute knowledge of how to find marks that were recently published for opposition, and about to register. On information and belief, Respondent is in the business of securing domain names for marks, including issuing trademarks, that he knows are valuable to other corporations, with the sole purpose of seeking to derive income from the rental of those domain names. (iv.) In Respondent's most recent communication with Complainant, Respondent asserted that he sold wind tunnels under the disputed domain name, but was unable to provide any proof of such assertions. When Respondent was told that a Google search did not lend any information whatsoever on an AirFX wind tunnel, Respondent responded with a threat to sue Complainant, asserting he was an attorney
Complainant only acquired federal registration for the mark AIRFX six weeks after Respondent registered the AIRFX.COM domain. Respondent admits that the disputed domain name and claimed marked are identical. However, in order to successfully make out its claims, Complainant also must adequately demonstrate that it has rights in the claimed mark. In its attempt to meet the burden of proof for this requirement, Complainant relies on its registration of AIRFX mark with the U.S. Patent and Trademark Office (“USPTO”). However, four paragraphs later, Complainant admits that Respondent registered AIRFX.COM prior to Complainant obtaining federal protection. As such, Complainant cannot meet the burden or proof by relying on a federal trademark registration issued after Respondent already registered AIRFX.COM. Complainant did not allege any rights it may have at common law. A mere allegation of the lack of rights or interest of the Respondent is not enough under the scope of the Policy to find a Complaint successful. As such, the unsubstantiated and uncorroborated portions of Complainant’s allegations should not be considered for purposes of meeting the burden of proof.
Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and Respondent registered the domain name in bad faith under Policy ¶ 4(b)(i).
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.
While Respondent argues that its registration of the <airfx.com> domain name predates Complainant’s alleged rights in the mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
The 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 asserts that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information for the disputed domain name identifies “ATTN AIRFX.COM” as the registrant. The Panel finds that even though it appears that Respondent may be known by the disputed domain name, that it in fact has not been commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name); see also Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the domain name.”).
Further, Complainant argues that Respondent has not used the disputed domain name in relation to a bona fide offering of goods or services. Complainant submits a screen-shot from Respondent’s website which shows that the domain name resolves to a landing page with the registrar containing third-party links to various unrelated businesses and websites. Complainant also contends that Respondent has admitted that it has not offered products or services that related to the AIRFX mark, and never has. The Panel may find that Respondent is not using the disputed domain name for 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), where the domain name is parked with the registrar. See Herbalife Int’l, Inc. v. Farmana, D2005-0765 (WIPO Oct. 3, 2005) (parking of the domain name for many years constitutes no more than a passive use or de facto activity, which activity can reinforce a finding of no legitimate interest); see also Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)).
The Panel notes that Complainant’s submitted screen-shot of the resolving website shows that Respondent is using the domain name to display various third-party links to unrelated businesses. Therefore, the Panel finds that Respondent has registered and is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <airfx.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Nelson A Diaz (ret.), Panelist
Dated: May 16, 2011
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