Aeroxchange Ltd. v.
AEROEXCHANGE.com c/o WHois IDentity Shield
Claim Number: FA0902001249747
PARTIES
Complainant
is Aeroxchange Ltd. (“Complainant”),
represented by Jason E. Mueller, of Locke Lord Bissell & Liddell LLP,
REGISTRAR
The domain name at issue is <aeroexchange.com>, registered with Nameview, Inc.
PANEL
The undersigned certify that they have acted independently
and impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National
Arbitration Forum electronically on February 26, 2009; the National Arbitration
Forum received a hard copy of the Complaint on February 27, 2009.
The
National Arbitration Forum attempted to verify that the <aeroexchange.com> domain name was registered with Nameview, Inc. and that
Respondent was the current registrant of the domain name. Nameview, Inc., however, did not respond to multiple contact attempts
from the National Arbitration Forum. The National Arbitration Forum then
contacted ICANN regarding Nameview, Inc.’s lack of response
to the verification request, and notified ICANN that it would be proceeding without verification. The National
Arbitration Forum commenced the case on March 26, 2009.
On March 26, 2009, a Notification of Complaint and
Commencement of Administrative Proceeding (the “Commencement Notification”),
setting a deadline of April 15, 2009 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@aeroexchange.com by
e-mail.
On April 8, 2009, the National Arbitration Forum granted
Respondent’s April 7, 2009 Request for Extension of Time to Respond to
Complaint with Complainant’s Consent, thereby setting a deadline of April 25,
2009 by which Respondent could file a Response to the Complaint.
On April 27, 2009, the National Arbitration Forum granted
Respondent’s April 24, 2009 Request for Extension of Time to Respond to
Complaint with Complainant’s Consent, thereby setting a deadline of May 7, 2009
by which Respondent could file a Response to the Complaint.
A timely Response was received and determined to be
complete on May 7, 2009.
On May 20, 2009, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the
National Arbitration Forum appointed
RELIEF SOUGHT
Complainant requests that the domain name be transferred
from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that Respondent’s domain name <aeroexchange.com> is phonetically
identical to and confusingly similar to the Complainant’s marks and domain
<aeroxchange.com>, which was registered well before Respondent’s <aeroexchange.com> domain. Complainant
also contends that Respondent
has not been using the domain in connection with a "bona fide"
offering of goods or services because Respondent has been using the <aeroexchange.com> domain
to mislead consumers and potential consumers of Aeroxchange to a commercial
website which is not affiliated with, nor otherwise sponsored or approved by
Aeroxchange and which provides direct links to
third-party websites, a number of which offer aviation products directly
competitive with Aeroxchange's Aviation Products or the products of
Aeroxchange's customers. Complainant asserts that Respondent's registration and
use of the <aeroexchange.com> domain has been with constructive and, Aeroxchange believes,
actual notice of Aeroxchange's exclusive right to use the Aviation Marks. Specifically, the <aeroxchange.com>
domain was registered since November 1999, a full two
years before Respondent registered <aeroexchange.com>, and Complainant used its "AEROXCHANGE" mark in
commerce in the
B. Respondent
Respondent contends that the <aeroexchange.com> domain is used in a descriptive sense.
Respondent also contends that there is no evidence Respondent registered the <aeroexchange.com> domain with
Complainant’s trademark in mind because Respondent registered the domain, after
it expired and was deleted, becoming available for re-registration. Respondent registered the <aeroexchange.com> domain solely
because it incorporated a descriptive term, and there is no evidence it was
registered to profit from Complainant’s mark; furthermore, Respondent had no
knowledge of Complainant when it registered the Disputed Domain, nor was there
a basis for such knowledge since Complainant’s trademark was not registered
until December 24, 2002, more than a year after the November 13, 2001
registration date of the <aeroexchange.com>
domain and at a time that Complainant was not very well known. It is also
asserted by Respondent that the domain<aeroexchange.com>
was registered by it solely due to its descriptive nature as evidenced by
numerous other descriptive domains that Respondent has registered.
FINDINGS
Complainant owns AEROXCHANGE, U.S. Reg. No. 2,665,318,
registered December 4, 2002, and which is now incontestable under 15 U.S.C. §
1065. Complainant has failed to establish that it had common law rights in its
mark so that its rights and constructive notice thereof commenced with issuance
of its AEROXCHANGE registration subsequent to registration of the domain <aeroexchange.com> by Respondent.
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.
Since
the Panel finds that Complainant failed to meet its burden of proving that the
domain name was registered in bad faith, this element is not addressed.
Since the Panel finds that Complainant failed to meet its burden of proving that the domain name was registered in bad faith, this element is not addressed.
The Panel finds that Complainant
failed to meet the burden of proof of bad faith registration and use under
Policy ¶ 4(a)(iii).
See Starwood Hotels & Resorts
Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9,
2005) (finding that the complainant failed to establish that the respondent
registered and used the disputed domain name in bad faith because mere
assertions of bad faith are insufficient for a complainant to establish Policy
¶ 4(a)(iii)); see also Graman USA Inc. v.
Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003)
(finding that general allegations of bad faith without supporting facts or
specific examples do not supply a sufficient basis upon which the panel may
conclude that the respondent acted in bad faith).
Respondent argues that it had no
knowledge of Complainant at the time of the disputed domain name’s
registration, and that Respondent only meant to target the generic value of the
terms in the disputed domain name. The
Panel finds that Complainant has failed to establish that Respondent registered
the disputed domain name in bad faith since Complainant has not demonstrated
that it had common law rights at the time that Respondent registered the domain
<aeroexchange.com>, and since
Complaint has not demonstrated that Respondent registered the domain with
knowledge of Complainant or its AEROXCHANGE mark. See Starwood Hotels & Resorts Worldwide,
Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005)
(finding that the complainant failed to establish that respondent registered
and used the disputed domain name in bad faith because mere assertions of bad
faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)); see also Hugo Daniel Barbaca Bejinha
v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28,
2006) (failing to find common law rights where the complainant provided little
evidence showing the extent of its use of the mark over the three years that
the complainant claimed to have been using the mark); see also Witteles v. Domain Guy,
FA 616302 (Nat. Arb. Forum Feb. 27, 2006) (finding that the complainant
failed to prove common law rights because it “did not provide any evidence of
secondary meaning or continuing use…”).
DECISION
Having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that
the <aeroexchange.com> domain name be retained by Respondent.
___________________________________________________
David S. Safran, Chair
Diane Caball and
Dated: June 1, 2009
Click
Here to return to the main Domain Decisions Page.
Click Here
to return to our Home Page
National
Arbitration ForuM