Pacific
Aircraft Incorporated v. Pacific Aircraft Corporation
Claim Number: FA0106000097645
Complainants are Edward H. Tuton and Pacific Aircraft Incorporated, Scottsdale, AZ, USA (“Complainant”) represented by Richard Keyt, of Gallagher & Kennedy, P.A. Respondent is Pacific Aircraft Corporation, Angeles City, PH (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <pacificaircraft.com> and <pacificaircraft.net>, registered with Network Solutions, Inc.
PANEL
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainants submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on June 11, 2001; the Forum received a hard copy of the Complaint on June 12, 2001.
On June 13, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <pacificaircraft.com> and <pacificaircraft.net> are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 June 14, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 24, 2001 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@pacificaircraft.com and postmaster@pacificaircraft.net by e-mail.
A timely response was received and determined to be complete on July 24, 2001.
A timely Additional Submission by Complainants was received and determined to be complete on July 30, 2001.
On
July 31, 2001, pursuant to Complainants’ request to have the dispute decided by
a single-member Panel, the Forum
appointed Hon. Carolyn Marks Johnson as Panelist.
RELIEF SOUGHT
Complainants request that the domain names be transferred from Respondent to Complainants.
PARTIES’ CONTENTIONS
A. Complainants urge that Respondent registered domain names that are identical to or confusingly similar to a mark in which Complainants have rights; that Respondent has no right to or legitimate interests in the mark contained within the domain names and that Respondent registered and used the domain names in bad faith.
B. The response filed on behalf of Respondent urges that Respondent acted under the permission of Complainants to register and develop the domain names in question and that it did not act in bad faith.
C. Complainants replied, urging that Complainants did not give Respondent permission or a license to use their mark in a domain name and that Respondent had no authority to use Complainants’ mark in domain names.
FINDINGS
Complainants
have been known as Pacific Aircraft Incorporated since 1991 and have sold model
aircraft, ship models and plaques under that name. Complainants incorporated January 14, 1991, in Arizona. Complainants have spent an average of
$200,000. since that time each year developing the model aircraft and ship and
plaque business. Using catalogue sales,
Complainants captured an international market of some 50,000 customers. Complainants operate in thirteen countries
including the United States, France, United Kingdom, Belgium, Japan, Australia,
Canada, Germany, Mexico, Austria, Italy, Switzerland and Sprain. Complainants registered and used the domain
name www.warplanes.com.
On
March 30, 1999, Respondent registered the domain names in issue in the
Philippines. Respondent also sells
model aircraft that are identical to or virtually identical to those sold by
Complainants. Respondent knew that Complainants were in business under the name
Pacific Aircraft Incorporated because Complainant Edward H. Tuton, the CEO of
Pacific Aircraft Incorporated, also was one of the founders of Respondent,
Pacific Aircraft Modeling Corporation (hereafter PAMC) and Tuton ultimately
became the controlling shareholder. The PAMC Articles of Incorporation were
filed in the Philippines on June 9, 1997.
Complainants assert that some of PAMC’s original shareholders are
conspiring to use Respondent as a vehicle to usurp Complainants’ trade name
without consent and as a means of engaging in competition with Complainants
using Complainants’ own products.
Respondent also is acting to prevent Complainants from doing Internet
business in their own name.
Complainants
urge that Respondent acted in bad faith and that Respondent is not making a
fair, non-commercial use of the disputed domain names. Complainants assert that
the domain names that Respondent registered are tarnishing the reputation of
Complainants’ mark because the website says “undr kunstrukson” on thirteen of
its sixteen pages.
Complainants
also urge that Respondent acted in bad faith because Respondent offered the
domain names for sale for $30,000. an amount that is in excess of any
registration and development expenses that Respondent could have had under
these circumstances.
Robert
H. Amerault responded for Respondent and took the position that he was hired
January 11, 1999, by two shareholders in PAMC, Brian S. Jackson and Lillian
Buiza to develop the domain names at a time when Tuton did not hold a majority
of the shares. Amerault asserts that he
took control of the domain names when Jackson and Buiza failed to pay him. Amerault concedes that he offered to sell
the domain names for $30,000 to Complainants and stated, without offering
further proof, that the amount “was a fair price for the work I did, the
expenses I incurred, plus interest and penalties for the original non-payment
of services.” Amerault alleged that at
the time he was hired to develop the domain names, Tuton, Jackson and Buiza
were partners. Amerault said he acted
in good faith. Amerault urges that
Complainants permitted Respondent to develop a website for each of the disputed
domain names, an allegation that Complainants deny.
In
Complainants' additional submission, Complainant’s assert, inter alia, that the individual who filed the response is not the
Respondent and therefore that Respondent has filed no valid response. Complainants further state that Complainants
have control over PAMC and that therefore Complainants should have control over
the disputed domain names as well.
Amerault’s response on behalf of Respondent raises a number of matters that are outside the scope of the UDRP. See The Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) (stating that "this Panel is not a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names”); see also Commercial Publ'g Co. v. EarthComm, Inc., FA 95013 (Nat. Arb. Forum July 20, 2000) (stating that the Policy is intended to resolve only a narrow class of cases of “abusive registrations” and does not extend to cases where a registered domain name is subject to legitimate disputes, which are relegated to the courts). This Panel does not have the jurisdiction to decide whether Amerault has a right to recover in contract or quantum meruit for the services he alleges he gave to PAMC.
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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(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.
Complainants have established in
this proceeding their common law rights in the PACIFIC AIRCRAFT mark by virtue
of continuous and extensive use of the mark in the United States and
internationally. Such rights are a
sufficient basis for filing a Complaint under the UDRP. Compare
Great Plains
Metromall, LLC v. Creach, FA
97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name
Dispute Resolution Policy does not require “that a trademark be registered by a
governmental authority for such rights to exist”), and Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7,
2001) (finding that the Policy does not require that the mark be registered in
the country in which a Respondent operates.
It is sufficient that a Complainant can demonstrate a mark in some
jurisdiction). See also Smart Design LLC v.
Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy 4(a)(i)
does not require Complainant to demonstrate “exclusive rights,” but only that
complainant has a bona fide basis for making the complaint in the first place).
Complainants contend that the <pacificaircraft.com> and <pacificaircraft.net>
domain names are identical to Complainants' PACIFIC AIRCRAFT mark. It is well settled that the addition of TLDs
such as “.com” and “.net” do not defeat a claim that the domain names are
identical to another's mark. See, e.g., Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “net” or “com” does not
affect the domain name for the purpose of determining whether it is identical
or confusingly similar).
In addition, the Panel may find that the disputed domain names are so confusingly similar that a reasonable Internet user would assume that the domain names are somehow affiliated with Complainants. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).
The Panel has some concerns because the domain names in issue, <pacificaircraft.com> and <pacificaircraft.net> may be viewed as being comprised of generic descriptive and geographical terms. See Port of Helsinki v. Paragon Int’l Projects, Ltd., D2001-0002 (WIPO Feb. 12, 2001) (finding that ICANN Policy does not provide protection for geographic names); see also Travel Berkeley Springs, Inc. v. Glens Country Estate, FA 96347 (Nat. Arb. Forum Feb. 16, 2001) (finding that Complainant could not have superior right to use of “Berkeley Springs” to the exclusion of other entities, particularly where there were many other businesses that used geographic names as part of their business name). The Panel also questions whether Complainants’ proof permits a finding that Complainants established common law rights to the PACIFIC AIRCRAFT mark under Philippine law. See Cf. Interactive Television Corp. v. Noname.com, D2000-0358 (WIPO June 26, 2000) (finding that “[S]erious questions as to whether Complainant has any proprietary rights require us to reject Complainant’s claim. The ultimate decision as to whether Complainant does or does not have proprietary rights is better left to a court or trademark office tribunal”).
However, looking at the totality of the circumstances here, Complainants established a right to the mark contained in its entirety within the two domain names registered by Respondent and the Panel finds that Complainants met the burden under Policy 4(a)(i) to show that the disputed domain names are identical to and/or confusingly similar to a mark in which Complainants have rights.
Complainants also established rights to and legitimate interests in the mark that is contained in its entirety in the disputed domain names that Respondent registered. On the other hand, Amerault, appearing for Respondent, did not submit information that could support a finding that Respondent has rights in the mark contained within the disputed domain names <pacificaircraft.com> and <pacificaircraft.net>. The record permits an inference that Amerault registered domain names for the purpose of permitting PAMC to offer competing goods using Complainants’ mark. This is not a bona fide offering of goods or services such as would establish that Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i). See, e.g., The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent’s use of the domain names to sell competing goods was an illegitimate use and not a bona fide offering of goods); see also North Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website).
Amerault alleges further on behalf of Respondent that two shareholders of PAMC authorized him to act on behalf of PAMC to register and develop the domain names. Amerault urges that he acquired rights to the domain names as a result of PAMC’s non-payment. This domain name dispute is not a proper jurisdiction to determine Amerault’s contractual or quantum meruit right to recover from PAMC for such services.
Complainants have shown rights to and legitimate interests in the mark contained in its entirety within the disputed domain names. Respondent PAMC has not. Given that result, Amerault also did not acquire rights in the mark even if every allegation that Amerault makes about his own conduct is true.
Complainants further assert that Respondent is using the <pacificaircraft.com> and <pacificaircraft.net> domain names with the intent of commercial gain to misleadingly divert consumers and to tarnish Complainants' PACIFIC AIRCRAFT mark in violation of Policy ¶ 4(c)(iii). See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).
Amerault asserts on behalf of Respondent that, inter alia, it is using the <pacificaircraft.com> and <pacificaircraft.net> domain names to offer services beyond those that compete directly with Complainants and that it has done so since it registered the disputed domain names, before any notice of this Complaint. It claims that such a use is both a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) and a fair use under Policy ¶ 4(c)(iii). See IG Index PLC v. Index Trade, D2000-1124 (WIPO Oct. 16, 2000) (finding that Respondent has rights in the domain name because Respondent’s claimed use of the domain name is a “plausible explanation” to which the Panel must give weight); see also SFX Entmt., Inc. v. Cushway, D2000-0356 (WIPO July 10, 2000) (finding that Respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services); see also Tough Traveler, Ltd. v. Kelty Pack, Inc, D2000-0783 (WIPO Sept. 28, 2000) (finding that Respondent had a legitimate interest in the domain name, <kidcarrier.com>, as a generic term for a class of products that Respondent sells). The Panel disagrees with this proposition. Amerault allegedly registered two domain names using Complainants’ PACIFIC AIRCRAFT mark on the request of two shareholders for Complainants’ sister corporation PAMC. Even had Amerault not been aware of Complainants’ presence, the two shareholders that allegedly authorized Amerault to act knew of Complainants and knew of Complainants’ area of commerce. Amerault did not offer a competent challenge to Complainants’ assertion of the assignment by these shareholders to Complainant Tuton and of Complainants’ majority control of PAMC. The Panel is entitled to assume that if Amerault could have done so, he would have.
The Panel finds that Complainants
established rights to and legitimate interests in the mark contained in its
entirety in the domain names registered by Respondent and that Respondent
failed to show any such rights and interests.
Policy 4(a)(ii).
The Panel finds that Respondent and
Amerault acted in bad faith. Policy
4(a)(iii).
DECISION
Having found that Complainants met all three Policy requirements and that the requested relief should be granted, it is ORDERED that the domain names in issue, <pacificaircraft.com> and <pacificaircraft.net>, be transferred from Respondent to Complainants.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 14, 2001.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page