Airtron, Inc. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1812001822308
Complainant is Airtron, Inc. (“Complainant”), represented by Meredith Phillips of IPWatch Corporation, Alabama, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), represented by Zak Muscovitch of Muscovitch Law P.C., Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <airtron.com>, registered with TLD Registrar Solutions Ltd.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Anne M. Wallace, QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 21, 2018; the Forum received payment on December 21, 2018.
On December 31, 2018, TLD Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <airtron.com> domain name is registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the names. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the TLD Registrar Solutions Ltd. 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 January 2, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 2019 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. Also on January 2, 2019, 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.
A timely Response was received and determined to be complete on January 22, 2019.
On January 28, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Anne M. Wallace, QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that:
a. Complainant uses the AIRTRON mark in connection with its goods and services, and has been using the mark since 1961. Complainant has rights in the AIRTRON mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 952,414, registered Jan. 30, 1973). Respondent’s <airtron.com> domain name is identical and confusingly similar to Complainant’s AIRTRON mark as Respondent incorporates the mark in its entirety.
b. Respondent has no rights or legitimate interests in the <airtron.com> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to divert users and prevent Complainant from using register the domain name itself.
c. Respondent registered and uses the <airtron.com> domain name in bad faith. Respondent has parked the website and prevents Complainant from registering the disputed domain name. Finally, given the distinctiveness and fame of the AIRTON mark, Respondent creates a likelihood of confusion through the disputed domain name.
Respondent contends that:
a. Respondent is a Florida corporation that has been in existence since 1997. Respondent concedes that the <airtron.com> domain name is confusingly similar to Complainant’s AIRTRON mark; however, Complainant does not have a monopoly on the AIRTRON mark as it is comprised of two generic terms “air” and “tron,” which Respondent believed was an attractive, made-up term capable for a number of things.
b. Respondent has rights and legitimate interests in the <airtron.com> domain name. Complainant fails to provide any evidence to support its bald assertions. Respondent registered the disputed domain name with the combination of two, generic terms, believing that it formed an attractive, made up word. Further, Respondent registered the disputed domain name believing that it may be of interest for a future entity. Respondent’s use of the disputed domain name to feature general advertisements is an appropriate use absent proof that the ads are targeting Complainant’s business.
c. Respondent did not register or use the <airtron.com> domain name in bad faith. Complainant again fails to provide any evidence to support its bald assertions. Further, there is no explanation for the 11+ year delay in making a claim to the disputed domain name. Respondent did not register or use the disputed domain name to sell it, disrupt Complainant’s business, or commercially benefit from Complainant’s mark. Respondent also had no actual or constructive knowledge of Complainant’s AIRTRON mark when it registered the disputed domain name.
The Panel finds:
1. Complainant has rights in the AIRTRON mark.
2. Respondent’s domain name is confusingly similar to Complainant’s AIRTRON mark.
3. Complainant has failed to establish that Respondent does not have rights or legitimate interests in the disputed domain name <airtron.com>.
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.
Complainant claims rights in the AIRTRON mark based upon registration of the mark with the USPTO (e.g., Reg. No. 952,414, registered January 30, 1973 and Reg. No. 2,020,856 registered December 3, 1996)). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel is satisfied that Complainant has established rights in the AIRTRON mark.
Complainant next argues Respondent’s <airtron.com> domain name is confusingly similar to the AIRTRON mark, because the disputed domain name incorporates the mark in its entirety. While Complainant does not specifically argue this, Respondent also adds a “.com” generic top-level domain (“gTLD”). Such changes to the mark are not sufficient, however, to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.”). The Panel therefore concludes that the <airtron.com> domain name is confusingly similar to the AIRTRON mark as contemplated by Policy ¶ 4(a)(i).
Complainant has not established a prima facie case that Respondent lacks rights or legitimate interests under Policy ¶ 4(a)(ii). While Complainant has established, prima facie, that Respondent is not commonly known by the disputed domain name, Complainant has not established that Respondent has failed to use the name to make a bona fide offering of goods or services or for a legitimate non-commercial use. Indeed, Complainant has provided no evidence at all about Respondent’s use of the disputed domain name. Complainant’s only evidence is copies of its registrations for the AIRTRON mark. Complainant did not tender any evidence, such as a screen shot of Respondent’s website, to demonstrate Respondent’s use of the name. Complaint provided nothing to establish a prima facie case that Respondent does not use the name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use, nor did Complainant provide anything to show Respondent diverted users to prevent Complainant from using the domain name itself.
Even if Complainant’s assertion that Respondent is not commonly known by the disputed domain name, but itself, was sufficient to meet the prima facie burden, Respondent has provided evidence to show Respondent does have rights and legitimate interested in the disputed domain name.
Respondent’s declaration says that Respondent registered the domain name because it comprised two common terms, namely, “air” and “tron” to create an attractive made-up term that was capable of lawful use and adoption for any number of things. Respondent provides evidence to show that the suffix “-tron” is a common suffix regularly combined with other words, including the word “air”. Respondent also demonstrates, through searches from the Global Brands Database, that other businesses have applied for and some have obtained marks combining the words “air” and “tron” to make “Airtron” for various purposes in various jurisdictions. This evidence tends to support Respondent’s assertion that “air” and “tron” are fairly generic terms and that they are fairly commonly used together.
A respondent may have rights or legitimate interests in a disputed domain name where it is entirely comprised of generic terms. See Platterz Inc. v. Andrew Melcher, FA 1729887 (Forum June 19, 2017) (holding that “investing in genuinely generic terms, for purpose of resale, is a legitimate business and that the acquisition of domain names consisting of common, dictionary terms for resale can confer rights and legitimate interests upon entrepreneurs who engage in this activity”); see also Walsh Bishop Assocs. v. Honggi, Honggi Kim, FA 907521 (Forum Mar. 6, 2007) (“[A] respondent may have a legitimate interest in a domain name if the domain name is used to profit from the generic value of the word, without intending to take advantage of complainant’s rights in that word.”). The Panel therefore agrees with Respondent and finds that Respondent has rights or legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).
In light of the Panel’s finding that Respondent has rights and legitimate interests in the disputed domain name, the Panel need not address this question. Suffice it to say here, however, that had Complainant established lack of rights under Policy ¶ 4(c), because of the utter lack of evidence in support of Complainant’s submissions, Complainant would not have established bad faith under the Policy. Complainant provided no evidence that Respondent has inappropriately parked the website and no evidence of distinctiveness or fame of Complainant’s mark.
In light of the Panel’s finding that Respondent has rights and legitimate interests in the disputed domain name, the Panel declines to address Respondent’s submissions about laches.
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 <airtron.com> domain name REMAIN WITH Respondent.
Anne M. Wallace, QC, Panelist
Dated: February 4, 2019
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