JMB Aircraft s.r.o. v. Trym Hoff / justfly As
Claim Number: FA1911001872262
Complainant is JMB Aircraft s.r.o. (“Complainant”), represented by Ivan Rámeš of HAVEL & PARTNERS s.r.o., Czech Republic. Respondent is Trym Hoff / justfly As (“Respondent”), Norway.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jmbaircraft.us> and <vl3.us>, registered with Domeneshop AS dba domainnameshop.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 21, 2019; the Forum received payment on November 21, 2019.
On November 21, 2019, Domeneshop AS dba domainnameshop.com confirmed by e-mail to the Forum that the <jmbaircraft.us> and <vl3.us> domain names are registered with Domeneshop AS dba domainnameshop.com and that Respondent is the current registrant of the names. Domeneshop AS dba domainnameshop.com has verified that Respondent is bound by the Domeneshop AS dba domainnameshop.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On November 25, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 16, 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 postmaster@jmbaircraft.us, postmaster@vl3.us. Also on November 25, 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 November 25, 2019.
On December 3, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
On December 5, 2019, the Panel issued an Order For Additional Submission and Extending Time For Rendering A Decision. No additional submission was received by the Forum in response to this Order.
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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a manufacturer and distributor of aircraft in the United States. Complainant has common law rights in the trademarks JMB AIRCRAFT and VL3 dating back to 2016. Complainant and Respondent entered into an Exclusive Agency Agreement on August 17, 2016 but Complainant discontinued all business cooperation with Respondent on December 20, 2018. Respondent’s <jmbaircraft.us> and <vl3.us> domain names, both registered on August 18, 2016, are identical to Complainant’s marks as Respondent uses the JMB AIRCRAFT and VL3 marks in their entirety.
Respondent has no rights or legitimate interests in the <jmbaircraft.us> and <vl3.us> domain names as Complainant has discontinued all business cooperation with Respondent and terminated Respondent’s exclusive agency agreement with Complainant. Respondent uses the disputed domain names with the intent to divert customers and tarnish Complainant’s marks.
Respondent uses the <jmbaircraft.us> and <vl3.us> domain names in bad faith by disrupting Complainant’s business. Respondent threatened to launch an online defamation campaign to damage the reputation of the Complainant and its products, as well as of Complainant’s executive director. These threats were intended to blackmail Complainant.
B. Respondent
Respondent denies the facts as alleged by Complainant and denies threatening to start a defamation campaign against Complainant. Respondent asserts that the information on the webpage that resolves from the disputed domain names is factually correct. Respondent further claims that Complainant’s executive director “told me i should call my company JMB Aircraft USA” and points out that its agreement with Complainant requires that all disputes thereunder should be brought before a court in the Czech Republic. Respondent does not make any further arguments under the Policy.
Finally, the Response contains the statements “We are willing to transfer the domain names to your client to show good will”, and “JMB is given the chance to pay 160.000 euro now as full and final payment to Justfly AS. We will then handle [sic] over the website…”
C. Additional Submissions
The Panel issued an Order For Additional Submission and Extending Time For Rendering A Decision inviting the Respondent “to clarify if it consents to the transfer of the two disputed domain names to Complainant as a result of this UDRP case.” No response to this Order was received by the Forum in response to this Order.
(1) each of the domain names registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Complainant has not made a prima facie showing that Respondent has no rights to or legitimate interests in respect of the disputed domain names; and
(3) insufficient evidence has been provided to support a conclusion that the disputed domain names were registered and are being used by Respondent in bad faith.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP
Respondent argues that Complainant owes it money resulting from various contractual disputes between the parties. Complainant argues that Respondent is defaming and blackmailing Complainant based on allegations that Respondent is making which stem from the above-mentioned contract disputed.
Panels may find that business and/or contractual disputes between two companies fall outside the scope of the UDRP and may deny complaints on such grounds. See Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) (complaint held to be outside the scope of the Policy where “The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues.”) Here, the Panel has reviewed the Exclusive Agency Agreement which was entered into between the parties, a copy of which was submitted into evidence by the Complainant. While this agreement contains a range of commercial business terms, it does not mention or concern Complainant’s claimed trademarks save for a rather tangential reference to Respondent’s obligation to promote the sale of Complainant’s products on “its own website”, in advertisements, and at an “airshow or exhibition”. In light of these facts, the Panel finds that this agreement does not impact Complainant’s trademarks, any license or other claim of rights that the Respondent may have in such marks, or the issues addressed by the Policy with regard to the disputed domain names. As such, the Panel finds that it has jurisdiction over this dispute and that it is proper to proceed with the present case under the Policy.
Complainant claims to have common law rights in both the JMB AIRCRAFT and VL3 marks as Complainant has used the marks in connection with the sale and promotion of aircraft since 2016. Policy ¶ 4(a)(i) does not require a complainant to own a formal trademark registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”) Here, Complainant has provided copies of sales brochures and news articles pertaining to its use of the JMB AIRCRAFT and VL3 marks in commerce in the United States. The Panel finds this evidence sufficing to establish secondary meaning and finds that Complainant has adequately shown it has common law rights in the marks.
Complainant argues that Respondent’s <jmbaircraft.us> and <vl3.us> domain names are identical to Complainant’s marks as Respondent uses the JMB AIRCAFT and VL3 marks in their entirety. Registration of a domain name that includes a mark in its entirety does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Cards Against Humanity, LLC v. sri winarti, FA 1736823 (Forum July 31, 2017) (“The Panel therefore finds Respondent’s <cardsagainsthumanity.us> to be identical to Complainant’s CARDS AGAINST HUMANITY mark.”) Complainant argues that Respondent uses each of the claimed marks in its entirety. While not argued by Complainant, the disputed domain names also add the “.us” country code top-level domain (“ccTLD”) to the marks. The addition of a ccTLD is inconsequential in determining whether a domain name is identical. See CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (“The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Respondent’s domain names are identical to Complainant’s marks per Policy ¶ 4(a)(i).
Complainant asserts that while it had a contractual arrangement with Respondent for exclusive distribution of its product in the US, that agreement has since been terminated. The existence of a contract between the parties may impact the question of whether a respondent has rights or legitimate interests in a disputed domain name. American Express Marketing & Development Corp. v. Planet Amex and Blake Fleetwood, FA 1395159 (Forum Jan. 6, 2012) (claim denied where Complainant acquiesced to Respondent’s use over many years and never objected resulting in a de facto license to use the domain name.) Here, Complainant states that “[t]he Respondent was a distributor and promoter of the aircraft in the territory of the USA, who used the [JBM AIRCRAFT and VL3] designations as a contractual partner of the Complainant acting in accordance with the Exclusive Agency Agreement…” which was entered into on August 17, 2016. A copy of this agreement is submitted into evidence and, although it does not expressly mention the Complainant’s marks, it sets forth Respondent’s obligation to promote the sale of Complainant’s products on “its own website”, in advertisements, and at an “airshow or exhibition”. This agency agreement was then terminated by Complainant on December 20, 2018 based upon a dispute involving sales volume and the provision of support services. Furthermore, in its Response, Respondent states that Complainant’s executive director “told me i should call my company JMB Aircraft USA” and, on December 19, 2016, Respondent incorporated a business entity named JMB AIRCRAFT USA INC. with the state of Florida. The Complainant does not refute this statement by Respondent and there is no evidence that Complainant objected to the Respondent’s registration of the disputed domain names at or for a significant time after the domain names were initially registered (i.e., while the parties were still operating under their agency agreement).
Next, from the facts and evidence presented in this case, it is clear that, during the pendency of the parties’ agency agreement, Respondent owned a corporate entity named JMB AIRCRAFT USA INC. and both the Complainant and Respondent cooperated in promoting the sale of Complainant’s trademarked aircraft products in the US. This leads the Panel to find by a preponderance of the evidence, that Respondent did use the <jmbaircraft.us> domain name in connection with a bona fide offering of goods and services and that it was commonly known by this domain name per Policy ¶ 4(c)(i) and (ii).
In light of the above, the Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also JJ206, LLC v. Erin Hackney, FA 1629288 (Forum Aug. 25, 2015) (finding that a respondent may defeat a complainant’s established case by showing it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).
The Panel finds a lack of proof that Respondent registered or uses the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). Specifically, the Panel finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration or use pursuant to Policy ¶ 4(a)(iii). See Uhrenholt A/S v. FILLIP NIELSEN, FA 1646444 (Forum Dec. 21, 2015) (finding that mere assertions of bad faith, without evidence, are insufficient for a complainant to establish bad faith under Policy ¶ 4(a)(iii)). The Complainant asserts that “Respondent started to publish biased and false information using the domain names” and has sought to engage in blackmail by having “repeatedly threatened the Complainant with launching an online defamation campaign to damage the reputation of the Complainant and its products…” The Respondent denies these allegations asserting that “I have never given any false statements” and adding that all of the statements published at the website of the disputed domains are “only truthful information”. It is apparent that the parties at one time were business partners and that the current commercial dispute between them arises out of the business terms contained in the exclusive agency agreement. As such, despite Respondent’s demand for a financial payment by Complainant, based upon all of the circumstance of this case, the Panel cannot conclude that Respondent registered the disputed domain names primarily for the purpose of selling them to Complainant under Policy ¶ 4(b)(i). Respondent also makes the claim, which has not been disputed by Complainant, that Complainant’s executive director “told me i should call my company JMB Aircraft USA”. As such, there is insufficient evidence to find that Respondent registered the <jmbaircraft.us> domain name to prevent the Complainant from reflecting its mark in a corresponding domain name, Policy ¶ 4(b)(ii), or to disrupt the business of a competitor, Policy ¶ 4(b)(iii). Finally, the content of Respondent’s websites at the disputed domain names appears to be rather straightforward and factual and it does not promote Respondent’s or any third-party business. Of course, the Panel is not in a position to resolve the dispute between the parties relating to violations of the agency agreement or the accuracy of statements made on the website. That will need to be handled in a court or other forum of competent jurisdiction. Regardless, it is not possible to find that the disputed domain names are intended to attract, for commercial gain, users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks in violation of Policy ¶ 4(b)(iv).
In light of all the evidence and arguments presented here, the Panel finds that Complainant has failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
Having not established all three elements required under the usTLD Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <jmbaircraft.us> and <vl3.us> domain names REMAIN WITH Respondent.
Steven M. Levy, Esq., Panelist
Dated: December 12, 2019
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