BAE Systems plc v. N Rahmany et al.
Claim Number: FA1506001623125
Complainant: BAE Systems plc of Farnborough, United Kingdom.
Complainant Representative: Bird & Bird LLP of London, United Kingdom.
Respondent: N Rahmany of Los angeles, California, United States of America.
N Rahmany of Los angeles, California, United States of America.
REGISTRIES and REGISTRARS
Registries: Fox Castle, LLC
Registrars: GoDaddy.com, 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 Examiner in this proceeding.
Petter Rindforth, as Examiner.
Complainant submitted: June 8, 2015
Commencement: June 8, 2015
Response Date: June 9, 2015
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Findings of Fact:
The Complainant is owner the Community Trademark registration No 001358985 BAE SYSTEMS (word), registered on May 7, 2001 for goods and services in Intl Classes 9,12,13,16,37and 42, and renewed until October 14, 2019.
The Complainant has provided evidence of use such as advertisements and by screenshots from the website www.baesystems.com.
Legal Findings and Conclusion:
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
IDENTICAL OR CONFUSINGLY SIMILAR
The Complainant met the standard sets out in 1.2.6.1. of the URS Procedure since the Complainant has proved its right to the valid Community Trademark No 001358985 BAE SYSTEMS (word), a trademark that is in current use.
The Examiner concludes that the disputed domain name is confusingly similar to the Complainant's trademark BAE SYSTEMS.
NO RIGHTS OR LEGITIMATE INTERESTS
The Complainant has informed, and the Respondent has not denied that information, that the Respondent on April 10, 2015 wrote to the Complainant purportedly to seek the Complainant's approval for the Respondent to do "whatever [he] wants" with the disputed domain name. Having been put on notice of the Complainant's trade mark rights by letter from the Complainant's lawyers dated April 29, 2015, the Respondent then offered to sell <baesystems.services> for an amount vastly in excess of the Respondent's out of pocket expenses.
The Respondent is referring to, what the Examiner concludes is a printout from a simple search from USPTO’s Trademark Electronic Search System (TESS), concluding that there are other trademarks for BAE and the Respondent thereby draw the conclusion that the Respondent is not in trademark violation.
However, to register another’s well-known trademark as a domain name for the only obvious purpose to sell it back to the trademark owner cannot be considered as legitimate interest.
Accordingly, the Examiner finds that the Complainant has established that the Respondent has no rights or legitimate interests in <baesystems.services>.
BAD FAITH REGISTRATION AND USE
The According to the URS Procedure 1.2.6.3, examples of circumstances that demonstrate bad faith registration and use by the Registrant include the situation where the “Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name”.
This is exactly what happened in this case. The Respondent’s initial contact with the Complainant cannot be interpreted otherwise than as a threat against the Complainant, with the goal to force the Complainant to buy the disputed domain name for an out of pocket amount.
Although the Respondent has referred to other registered trademarks including the letters B, A and E, none of those are the combined trademark BAE SYSTEMS. It is therefore clear that the Respondent had the Complainant’s trademark in mind at the time of registration of <baesystems.services>.
The Examiner concludes that the Complainant has shown that the Respondent has both registered and used the disputed domain name in bad faith.
The Respondent has alleged that the Complaint was brought in an abuse of the URS Policy, referring to the TESS search, showing 50 trademarks, whereof 23 are marked as “dead”, some of the “live” registrations does not include BAE, and some of the others are registered in the name of the Complainant. The Respondent concludes that there are many different registrants for BAE, and that there are none registrant for BAESYSTEMS.COM, BAESYSTEMS.SERVICES or for BAE.SYSTEMS.
The Examiner notes that the Respondent has in fact referred to both the Complainant’s trademarks as well as trademarks that has absolutely nothing to do with this case (some not including the letters B, A, E at all).
As from what have been provided in respect of facts ad arguments from the Complainant and the Respondent, the Examiner cannot draw any other conclusions than that the Complainant had good reasons to use the URS.
Accordingly, the Examiner cannot find any evidence of abuse.
After reviewing the parties’ submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be SUSPENDED for the duration of the registration.
<baesystems.services>
Petter Rindforth, Examiner
Dated: June 11, 2015
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