Xojet Inc. v.
Claim Number: FA0711001105705
PARTIES
Complainant is Xojet, Inc. (“Complainant”), represented by Linda
Joy Kattwinkel, of Owen Wickersham & Erickson, PC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xojets.com>, registered with Conmpana,
LLC.
PANEL
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.
Hugues G. Richard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On November 8, 2007, Conmpana, LLC confirmed by e-mail to the
National Arbitration Forum that the <xojets.com> domain name is
registered with Conmpana, LLC and that
the Respondent is the current registrant of the name. Conmpana, LLC
has verified that Respondent is bound by the Conmpana,
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 November 12, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 3, 2007 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@xojets.com by e-mail.
A timely Response was received and determined to be complete on
On
On
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant alleges the following:
1- The Respondent’s <xojets.com> domain name is
confusingly similar to the complainant’s XOJET common law trademark.
2-The Respondent has no rights or legitimate interest in the <xojets.com> domain name.
3- The Respondent registered the domain name in bad faith, in order to
redirect Internet users to websites and advertising unrelated to Complainant.
B. Respondent
1-The Respondent denies each of the Complainant’s allegations.
2- The Respondent claims:
·
That at
the time the disputed domain name was registered the Complainant had not yet
begun to use the term “xojet” in commerce.
·
That the
domain name registration was not in bad faith because the Complainant failed to
provide evidence that it had established common-law trademark rights in the
mark in the period preceding the registration.
·
That the
Respondent was not aware of the Complainant on
·
That
decisions finding bad faith registration where the domain name was registered
prior to the acquisition of trademark rights do not apply to the present
situation.
·
That XO
is a common acronym for “executive” or “executive office” or “executive
officer” and that the mark XOJET is neither inherently distinctive nor
creative.
·
That XOJET
is merely descriptive of “executive jets” and must be considered a weak mark.
·
That the
Complainant is not the only party using “xo jet” in commerce.
·
That the
purchase of advertisements through Google does not constitute a use in bad
faith.
·
That Google
controls the content of the advertisements, therefore Respondent is not
responsible of the potentially offending content of the advertisements.
·
That
common acronyms and generic terms are legitimately subject to registration as
domain names on a first-come, first-served basis.
·
That the
fact that advertising revenues may be generated by Respondent’s activity
demonstrates a legitimate interest.
·
That
Complainant misstates Respondent’s prior NAF Decisions.
·
That
Respondent is the registrant of thousands of domain names which consist of
electronically registered generic words and that registering such terms is a
legitimate business done in good faith.
C. Additional Submissions of the Complainant
The Complainant timely filed an additional submission and submits the
following:
·
That
contrary to Respondents assertion, every one of the decisions against
Respondent cited in the Complaint was decided on the merits and each of these
decisions ordered transfer of the subject domain names on grounds of
illegitimate cybersquatting or typosquatting.
·
Complainant
admits that it has mistakenly identified Respondent as the respondent in two
decisions that involved a different party. Complainant apologizes for those
errors.
·
That
Respondent’s arguments rest on two theories which are faulty and baseless.
·
That the
argument that Complainant had no rights in the mark before the Respondent
registered the domain name because of the date of first use in commerce listed
on Complainant’s federal registration is meritless.
·
That
Complainant made an extensive promotional use of its mark, including
registration of its own domain name, in November 2005.
·
That
Complainant launched its website in early December 2005 and proceeded to
extensive advertising and press coverage of the mark before the Respondent
registered the disputed domain name.
·
That
Complainant spent over $651,000 to promote its mark prior to
·
That
registering a domain name with the intent to eventually trade on the good will
of a new mark constitutes bad faith.
·
That
Respondent’s arguments that the mark XOJET is descriptive and generic are
unavailing as the federal registration for XOJET establishes valid trademark
rights.
·
That web
searches for the XOJET mark do not show any descriptive use of that term.
·
That
Respondent’s use of the domain name for a web portal for search functions and
advertising does not constitute a bona
fide offering of goods or services.
·
That
Respondent filed the domain name after widespread announcement of Complainant’s
website and the widespread publicity of its mark.
·
That
Respondent has an extensive history of registering domain names in bad faith.
D. Additional submissions of the Respondent
The Respondent timely filed an additional submission and submits the
following:
·
Respondent
objects to the filing of Complainant’s additional submission.
·
Rule 7
of the Forum’s Supplemental Rules is an improper modification of the UDRP
Rules.
·
Complainant’s
additional submission is beyond the scope of the Supplemental Rules.
·
Complainant’s
attempt to prove common law rights prior to
FINDINGS
Complainant Xojet Inc. is a private company which specializes in the
private jet and executive jet industry and offers charter carrier services
under the mark XOJET. Complainant’s corporate headquarters are located in
On November 29, 2005, Complainant filed an intent-to-use trademark
application. In November 2005,
Complainant also registered its domain name <xojet.com>. From the end of November 2005 to January 10,
2006, Complainant declares having spent over $651,000 for promotional purposes
and having continuously and substantially advertised its XOJET services. Complainant’s services have been featured in
several newspapers such as the New York Times, the Financial Times, and the
Wall Street Journal.
The website <xojet.com> was launched in the early days of December
2005, and Complainant has been offering private jet services under the mark XOJET
since January 30th, 2006. Complainant’s
trademark was registered by the U.S. Patent and Trademark Office on October 23,
2007.
Respondent is a
Panel notes that the <xojets.com> domain name has been
disabled since at least
DISCUSSION
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:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
The Panel does not agree with the Respondent’s argument that Rules 7 of
the Supplemental Rules is an improper modification of the UDRP Rules.
Furthermore the Panel doubts that it would have the power to declare that Rule
7 of the Supplemental Rules is an improper modification of the UDRP Rules. The
Panel also does not agree with the Respondent that the additional submission of
the Complainant is beyond the scope of the Supplemental Rules.
For the purposes of this dispute, Complainant
must establish under Policy 4(a)(i) that it has rights in the XOJET mark.
To do so, Complainant must provide prima facie evidence that the disputed
domain name is identical or confusingly similar in the mark in which it claims
to have rights. The submitted evidence should indicate adoption or use of the
trademark. If Complainant is unable to meet its burden, the Panel must reject
the Complaint.
Complainant asserts rights in the XOJET mark,
and contends that from November 2005, it continuously and substantially
advertised its XOJET services and spent over $651,000 to promote its mark prior
to January 10, 2006. Complainant’s Chief Marketing and Strategy Officer, Nick
Sollinger declares that between December 8, 2005 and January 10, 2006, 1,295
visitors accessed the site and 461, 206 visitors to <google.com> viewed
pages containing the company’s on-line advertisements for XOJET private jet
charters during the same period.
The fact that the date of creation of
Complainant’s website on November 24, 2005 and the filing date of its trademark
application on November 29, 2005 predate Respondent’s registration of the
disputed domain name, demonstrates that Complainant has adopted the XOJET mark
prior to the registration of the contested domain name. Given that Complainant
had initiated extensive advertising at the time, “a simple Internet search
would have clearly notified him of the existence of Complainant’s previously
existing domain name and gave rise to a duty for Respondent to inquire
further”; See Ganz v. Texas Int’l Property Association, FA 991778 (Nat.
Arb. Forum July 19, 2007). Respondent’s
assertion that Complainant failed to show rights in the XOJET mark when the
disputed domain name was registered is therefore false.
Complainant also submits that its services
under the mark XOJET have been featured in several high-profile media articles
such as the New York Times and The Wall Street Journal. Although these articles
are subsequent to the registration of the disputed domain name, they can help
establish that the mark is well known around the
Despite the above mentioned arguments, Panel
finds that the issue of an identical or confusingly similar domain name to
Complainant’s mark can be ruled upon by dealing with Complainant’s
intent-to-use application with the U.S. Patent and Trademark Office.
UDRP decisions have established that in
addition to the means used to promote the mark, intent-to-use applications by a
complainant support the finding that the Complainant has rights in the trademark;
see Coupons Inc. v. Motherboards.com, FA 192249 (Nat. Arb. Forum
Furthermore, Complainants having filed an
intent to use trademark application in the U.S. Patent Office, are considered
to have fulfilled the requirements of paragraph 4(a)(i) of the Policy; see Phone-N-Phone
Serv. (Bermuda) Ltd. v. Levi, D2000-0040 (WIPO Mar. 23, 2000).
Moreover, when a Complainant’s trademark
application is subsequently approved by the U.S. Patent and Trademark office,
the relevant date for showing rights in the mark dates back to the filing date;
“As Complainant’s trademark application was subsequently approved by the U.S.
Patent and Trademark Office, the relevant date for showing rights in the mark
for the purposes of Policy 4(a)(i) dates back to Complainant’s filing date”;
see Thomson v. Zimmer, FA 190625 (Nat. Arb. Forum
As Complainant filed an intent-to-use
trademark application on
Additionally, the mere addition of an “s” to
the mark XOJET fails to prevent a likelihood of confusion, as the two domain
names are similar in sound appearance and connotation; see Cream Pie Club v.
Halford, FA 95253 (Nat. Arb. Forum
Finally, Respondent’s arguments that the mark
is generic and descriptive must be rejected as the words “xo and “jet” must not
be considered individually, but as a whole; see Global Affiliates Inc. v.
Texas International Property Associates, FA 1053370 (Nat. Arb. Forum
Accordingly, the
Panel finds that Complainant has established both common law and registered
rights in the mark and therefore concludes that Policy 4(a)(i) has been
satisfied.
In regards to Policy 4(a)(ii), the
Complainant has to provide prima facie
evidence that the Defendant has no rights or legitimate interests in the <xojets.com> domain name. If the
Complainant does so, the burden shifts to the Respondent who must come forward
with evidence rebutting this assertion.
According to Policy 4(c)(i) (ii) (iii), the
Complainant must provide prima facie
evidence that:
(i)
The
Respondent is not using nor has prepared to use the domain name in connection
with a bona fide offering of goods or
services
(ii)
The
Respondent has not been commonly known by the domain name
(iii)
The
Respondent is not making a legitimate non-commercial or fair use of the domain
name and intends to misleadingly divert consumers or tarnish the trademark or
service mark at issue.
Once the Complainant has asserted that the Respondent has no rights or legitimate interest in the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion; see Clerical Med. Inv. Group Ltd. V. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).
Complainant correctly asserts that Respondent has not submitted any credible evidence to the fact that it is commonly known by the <xojets.com> domain name, as XOJET is a fanciful and unique mark invented by Complainant. Further, the disputed domain name was registered under the name “Texas International Property Associates” and Complainant has not authorized Respondent to use the XOJET mark in any form whatsoever.
A Google search under Respondent’s name does not refer the user to the <xojets.com> website, but only to arbitration decisions regarding cybersquatting and typosquatting and involving Respondent. Thus, a Google XOJET search refers the user to websites exclusively dedicated to the XOJET mark held by the Xojet Inc. company. This leads the Panel to think that the XOJET trademark is fanciful and distinctive. Moreover, if, as argued by Respondent, the mark had not acquired distinctiveness it’s registration as a trademark would not have been approved by the U.S. Patent and Trademark Office.
The Panel finds that Respondent has failed to establish that it has been commonly known by the domain name under Policy 4(c)(ii).
Regarding Policy 4c)(i) and (iii),
Complainant has established that the Respondent is not using nor has prepared
to use the domain name in connection with a bona
fide offering of goods or services and that Respondent is not making a
legitimate non-commercial or fair use of the domain name and intends to
misleadingly divert consumers or tarnish the trademark or service mark at
issue.
Complainant first submits that the disputed
domain name was registered to divert Internet users searching for Complainant’s
website to Respondent’s pay-per-click portal site which provides links to third
party services in direct competition with the private jet services offered by
the Complainant. This contention is not rebutted. It can therefore be inferred that
Respondent receives click through fees every time users click on one of these
links.
It has been established that redirecting Internet
users to websites featuring pop-up advertisements and links to third-party
websites does not constitute a bona fide
offering of goods under Policy 4(c)(i) , nor a legitimate noncommercial or fair
use under Policy 4(c)(iii), as the registrant of such a domain name receives
financial compensation when users click on the click through fees; See Wells
Fargo & co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum
As provided by Complainant’s evidence, the <xojets.com> website also seems
to have offered links to explicit sexual content websites. Panel finds that
this does not constitute a bona fide
offering of goods or services.
Finally, Complainant contends that Respondent
used graphics that were directly inspired from the <xojet.com> website.
Complainant supports this assertion by providing evidence of the graphics of
the two websites at the time of complaint. After being sent a cease and desist
letter on October 3, 2007 (date on which Complainant learned that Fortune
magazine erroneously listed it’s website as <xojets.com>), the Respondent changed the <xojets.com> site content to
display advertisements and links to third-party commercial websites related to
travel agent services rather then private jet services (the link to an adult
website was also withdrawn at the time). Complainant contends that displaying
links to commercial websites related to travel agent services will still likely
lead to confusion among Internet users as to a potential affiliation between
Complainant and Respondent.
Respondent argues that it has a legitimate
interest in the domain name as the domain name is comprised of generic and descriptive
terms. Respondent therefore contends to be entitled to use the domain name as a
web portal providing users with a search function as well as ads provided
through the Google Adsense program. Respondent alleges that it conducts a legitimate
business of registering generic terms to which no one can claim exclusive
rights. Yet, as established by Complainant, no web searches show
interchangeable use of the terms “xo” and “jet”, nor do searches for the XOJET
mark or for XO alone show any descriptive use of these terms. Further,
Respondent’s argument that the domain name is generic or descriptive based on
the individual words “xo” (that Respondent contends is a common acronym for
“executive office” or “executive officer”) and “jet” is useless, as a trademark
may not be broken into fragments when it can be evaluated as a whole; see Ganz
v. Texas Int’l property Assoc., FA 991778 (Nat. Arb. Forum
Respondent’s allegation that the XOJET mark
is generic and descriptive has already been decided upon by the Panel, and such
an argument is not sufficient to establish legitimate rights in a mark.
Furthermore,
Respondent seems to be engaged in the practice of typosquatting, which consists
of misspelling a mark and registering it as a domain name in order to take
advantage of Internet users. Such a practice helps establish the lack of rights
and legitimate interest in a domain name; see RMC of Ill Inc. v. Texas Int’l
Property Association, FA 998091 (Nat. Arb. Forum
Accordingly, the Panel finds that Respondent
has failed to establish any rights or legitimate interest in the <xojets.com> domain name under
Policy 4(a)(ii).
In order to establish the registration and
use of a domain name in bad faith, the Complainant has to establish any of the
circumstances, in particular but without limitation, listed at paragraph 4(b)
of the Policy.
Complainant alleges that Respondent used the
domain name to capture Internet users and divert them to websites and
advertisements unrelated to Complainant. According to Complainant the addition
of an “s” to the mark XOJET was deliberate and done with the intention to
redirect Internet traffic to Respondent’s website, and create confusion with
Complainant’s distinctive and fanciful mark.
Knowingly creating a likelihood of confusion
with a Complainant’s mark consists of a use in bad faith of a domain name.
Moreover, attracting Internet users to a website which contains commercial
links to the websites of the Complainant’s competitors has been found to be a
bad faith registration under Policy 4(b)(iii); see Tesco Pers. Fin. Ltd. V.
Mgmt. Servs., FA 877982 (Nat. Arb. Forum
The use of click-through fees on the disputed
domain name brings Panel to infer that Respondent is seeking commercial gain by
attracting Internet users to its website after creating confusion with
Complainants mark. It is well established that creating confusion between marks
in order to obtain commercial gain has been found to be bad faith registration
pursuant to Policy 4(b)(iv); see Allianz of Am. Corp. v. Bond, FA 680624
(Nat. Arb. Forum
The use of links to adult-oriented websites
on the disputed domain name can be considered as an evidence of bad faith: “As
regards Respondent’s use of the Domain Name to attract Internet users to an
adult website, the Panelist’s view is of the following. Preliminary, it is
commonly understood, under WIPO case law, that whatever the motivation of
respondent, the diversion of the domain names to a pornographic site is itself
certainly consistent with the finding that the Domain Name was registered and
is being used in bad faith”. See Six Continents Hotels Inc. v. Nowak,
D2003-0022 (WIPO
Finally, Complainant has established that
Respondent has engaged in a bad faith pattern of registering und using trademark
related domain names. Respondent has been party to at least nineteen previous
domain name disputes with the National Arbitration Forum in the past year, and
each of the nineteen decisions set forth in Complainant’s Additional Submission
have ordered transfer of the domain names on the basis of illegitimate
cybersquatting or typosquatting.
All this is further evidence of bad faith
registration and use under Policy 4(b)(ii); see Stevens v. Modern
Ltd.-Cayman Web Dev., FA 250005 (Nat. Arb. Forum
It also seems that in the previous disputes,
Respondent frequently advances the same two arguments that it registered the
domain name before the first date of use of the mark by Complainant, and that
the mark is generic and descriptive. See RMC of Ill. Inc. v.
Accordingly, the Panel finds that Respondent
registered and used the <xojets.com>
domain name in bad faith, and that Policy 4(a)(iii) is satisfied.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xojets.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hugues G. Richard, Panelist
Dated: December 24, 2007
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