Old Republic Aerospace, Inc. v. Cloude, Peter
Claim Number: FA1605001675478
Complainant is Old Republic Aerospace, Inc. (“Complainant”), represented by Robert P. Alpert of Morris, Manning & Martin LLP, Georgia, United States. Respondent is Cloude, Peter (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <phoenixaviationmgrs.com>, registered with Network Solutions, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 17, 2016; the Forum received payment on May 23, 2016.
On May 18, 2016, Network Solutions, LLC confirmed by e-mail to the Forum that the <phoenixaviationmgrs.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 May 24, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 2016 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@phoenixaviationmgrs.com. Also on May 24, 2016, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 21, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the PHOENIX AVIATION mark in connection with its business in insurance underwriting in the fields of commercial and products liability, workers’ compensation, and aviation. Complainant registered the PHOENIX AVIATION mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,793,629, first use Nov. 30, 2012, filed Nov. 19, 2014, registered Aug. 18, 2015), which demonstrates rights in the mark. Respondent’s <phoenixaviationmgrs.com> domain name is confusingly similar to the PHOENIX AVIATION mark as it includes the mark in its entirety, less the space, and adds the generic “mgrs” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <phoenixaviationmgrs.com> domain name. Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <phoenixaviationmgrs.com> domain name. Rather, the domain name resolves to a website that Respondent is attempting to pass off as Complainant by including Complainant’s mission statement on the home page, as well as by claiming that “Phoenix Aviation have a new website” that “has been completely redeveloped with a new fresh look,” leading users to believe that the website belongs to Complainant. Further, Respondent lacks rights or legitimate interests in the <phoenixaviationmgrs.com> domain name because Respondent registered the disputed domain name after Complainant, the domain name’s previous owner, allowed the registration to lapse.
Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Old Republic Aerospace, Inc., of Kennesaw, GA, USA. Complainant previously did business as Phoenix Aviation Managers and owned the disputed domain name prior to renaming the business. Complainant is the owner of a domestic registration for the mark PHOENIX AVIATION, which it has used continuously since at least as early as 1983, in connection with its provision of services in insurance underwriting in the fields of commercial liability, products liability, and workers’ compensation and aviation.
Respondent is Peter Cloude of London, United Kingdom. Respondent’s registrar’s address is listed as Jacksonville, FL, USA. Complainant asserts that Respondent reactivated the disputed domain name and became its owner on November 8, 2015, after Complainant failed to renew its registration earlier that year.
The Panel notes that the <phoenixaviationmgrs.com> domain name was registered on or about September 17, 1997, by Complainant, doing business as Phoenix Aviation Managers.
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.
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.”).
Complainant uses the PHOENIX AVIATION mark in connection with its business in insurance underwriting in the fields of commercial and products liability, workers’ compensation, and aviation. Complainant has registered the PHOENIX AVIATION mark with the USPTO (Reg. No. 4,793,629, first use Nov. 30, 2012, filed Nov. 19, 2014, registered Aug. 18, 2015), which it contends demonstrates rights in the mark. Prior panels have agreed that a filing with the USPTO demonstrates rights in a mark for the purposes of Policy ¶ 4(a)(i), even where a respondent operates in a different country. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man). In the present case, Complainant’s USPTO registration was filed over fifteen years after the disputed domain name was created, but Complainant asserts that it is the original owner of the disputed domain name, and that Respondent did not register the domain name until November 8, 2015. Past panels have found that a respondent’s rights in a domain name begin when the domain name is transferred to the respondent, rather than the date the domain name was first registered. See BWR Resources Ltd. v. Waitomo Assoc. Ltd., D2000-0861 (WIPO Oct. 4, 2000) (finding that registration refers to the date when the respondent acquired the name from the person who first registered it). The Panel here finds that Complainant has demonstrated rights in the PHOENIX AVIATION mark under Policy ¶ 4(a)(i) which predate Respondent’s registration of the disputed domain.
Next, Complainant argues that Respondent’s <phoenixaviationmgrs.com> domain name is confusingly similar to the PHOENIX AVIATION mark. The Panel notes that the disputed domain name includes the mark in its entirety, less the space, and adds the generic term “mgrs” and the gTLD “.com.” Previous panels have found such alterations to marks to be insufficient to overcome a finding of confusing similarity under Policy ¶ 4(a)(i). See EMVCO, LLC c/o Visa Holdings v. Corey Grottola / Prophet Companies, FA 1649199 (Forum Dec. 22, 2015) (Holding that the addition of descriptive terms to a complainant’s mark does not serve to adequately distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel here finds that Respondent’s <phoenixaviationmgrs.com> domain name is confusingly similar to the PHOENIX AVIATION mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interests in the <phoenixaviationmgrs.com> domain name. Complainant does not discuss whether Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS information regarding the <phoenixaviationmgrs.com> domain name lists “Cloude, Peter” as registrant. The Panel further notes that Respondent has not submitted a response in this proceeding. Therefore, in light of the available evidence, the Panel finds there is no basis to conclude that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Complainant argues that Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <phoenixaviationmgrs.com> domain name. Rather, Complainant contends that the domain name resolves to a website that Respondent is attempting to pass off as Complainant by including Complainant’s mission statement on the home page, as well as by claiming that “Phoenix Aviation has a new website” that “has been completely redeveloped with a new fresh look,” leading users to believe that the website belongs to Complainant. Complainant has provided screenshots comparing the parties’ websites in support of its contentions.
Complainant further asserts that Respondent is using the disputed domain name to offer aviation insurance services in competition with Complainant. Prior panels have found that use of a complainant’s mark to pass a website off as belonging to the complainant or to operate a competing website does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel here finds that Respondent’s <phoenixaviationmgrs.com> domain name constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant further asserts that Respondent lacks rights or legitimate interests in the <phoenixaviationmgrs.com> domain name because Respondent registered the disputed domain name after Complainant, the domain name’s previous owner, allowed the registration to lapse. Previous panels have found a respondent’s registration of a domain name previously held by a complainant to demonstrate a lack of rights or legitimate interests in the domain name. See Edmunds.com, Inc. v. Ult. Search Inc., D2001-1319 (WIPO Feb. 1, 2002) (finding that the respondent could not rely on equitable doctrines under the Policy to defend its registration of the disputed domain name after the registration was inadvertently permitted to lapse by the complainant, noting that “Respondent was aware of the Complainant’s well-known business and its mark and intended to exploit the mark”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Complainant contends that Respondent registered the domain name to create a likelihood of confusion with Complainant and Complainant’s mark in order to profit from users looking for Complainant’s website. Complainant further asserts that the title of the website, “Phoenix Aviation Managers;” the mission statement taken from Complainant’s website; and the claim that “Phoenix Aviation has a fresh new look” demonstrate that Respondent is attempting to pass itself off as Complainant, as well as attract users to its competing website for commercial gain. The Panel here finds that Internet user confusion that results in the redirection to Respondent’s site which offers services competing with those offered by Complainant constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See CAN Financial Corporation v. William Thomson / CAN Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <phoenixaviationmgrs.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 30, 2016
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