Pilot Travel Centers LLC v. Idah
Claim Number: FA2301002028760
Complainant is Pilot Travel Centers LLC (“Complainant”), represented by Seth L. Hudson of Nexsen Pruet, PLLC, North Carolina, USA. Respondent is Idah Idah (“Respondent”), ID, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pilotflyintj.com>, registered with Key-Systems GmbH.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to Forum electronically on January 24, 2023; Forum received payment on January 24, 2023.
On January 24, 2023, Key-Systems GmbH confirmed by e-mail to Forum that the <pilotflyintj.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 January 31, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2023 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@pilotflyintj.com. Also on January 31, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On February 27, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 asserts rights in FLYING J; PILOT and various PILOT-formative trademarks and submits that the domain name is confusingly similar to the trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered the disputed domain name in bad faith having targeted Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides truck stop services in the United States;
2. Complainant owns, inter alia, United States Patent & Trademark Office (“USPTO”) Reg. No. 5,413,904, registered on February 27, 2018, for the trademark, PILOT FLYING J TRUCK CARE;
3. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademarks or register any domain name incorporating the trademarks;
4. the disputed domain name was registered on December 30, 2022 and resolves to a landing page with links to “Pilot Training”, “Flight Training” and “Flying Lesson”.
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 based on 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[i].
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Complainant states (i) that it is the owner of the domain name pilotflyingj.com; (ii) that it is the owner of various trademarks for PILOT; and (iii) that it is the exclusive licensee of the FLYING J trademark. It states that the PILOT and FLYING J marks are “very well-known”. It states that the PILOT mark has been “extensively used, promoted, and advertised … for over 60 years and has “become well recognized by consumers as designating Complainant as the source of the goods and services so marked.”
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[ii]. Further, unregistered (common law) trademark rights can be proven by way of evidence of public use and marketplace recognition such that it may be inferred that the relevant term has acquired a reputation and secondary trademark significance.
Breaking down Complainant’s claims, there is no evidence that it is the owner of the domain name, <pilotflyingj.com>. The accompanying exhibit is not proof of ownership of the domain name, but a snapshot in time of use of the resolving website maintained by Complainant. That exhibit is not, of itself, proof of trademark rights. The Complaint makes no other attempt to substantiate the claims of use and reputation and the Panel does not find that common law trademark rights have been established in PILOT or FLYING J.
The claim that Complainant is the owner of various trademarks for PILOT is overstated since the only registration in evidence for PILOT, solus, is not shown to be in the name of Complainant. However, for the purposes of paragraph 4(a)(i) of the Policy, the Panel takes notice of the USPTO registration for PILOT FLYING J TRUCK CARE which stands in Complainant’s name and predates the creation date of the disputed domain name. Avoiding all other potential issues, the Panel need only compare the disputed domain name with this trademark which, it may be noted, disclaims exclusivity in the (descriptive) words, “truck care”. The domain name is a trivial misspelling of the distinctive part of the trademark, combined with the “.com” gTLD. The Panel finds the disputed domain name to be confusingly similar to the trademark for the purposes of paragraph 4(a)(i) of the Policy[iii].
Accordingly, Complainant has satisfied the first element of the Policy.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[iv].
The Panel accepts that Complainant has not authorised Respondent to use the trademark, and there is no relationship between Complainant and the Respondent which would otherwise entitle Respondent to use the trademark. Accordingly, the Panel finds that a prima facie case has been established and it is for Respondent to show it has rights or legitimate interests in the disputed domain name. Absent a Response, the Panel will assess paragraph 4(c) of the Policy based on the reasonable inferences that can be drawn from the evidence.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
No evidence has been provided to demonstrate that Respondent has trademark rights corresponding to the domain name, or that Respondent is commonly known by the domain name.
The domain name resolves to a webpage, as described already. There is no evidence that Respondent has used, or has made any demonstrable preparations to use, the domain name for a non-commercial or fair use, or in connection with a bona fide offering of goods or services. The onus has not been rebutted and so the Panel finds that Respondent has no rights or legitimate interests in the domain name and that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered and used in bad faith.
Guidance is found in paragraph 4(b) of the Policy which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Panel finds that paragraph 4(b)(iv) has direct application. The Panel has already found the disputed domain name to be confusingly similar to the trademark; it falsely suggests that the resolving online location is associated with Complainant. The Panel finds registration in bad faith under the Policy. Further, in terms of the Policy the Panel finds that Respondent has intentionally used the domain name to attract, for commercial gain, Internet users to the resolving webpage by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that page. The Panel finds registration and use in bad faith and so finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pilotflyintj.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Date: March 1, 2023
[i] See, for example, 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; 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.”)
[ii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[iii] See, for example, Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015): “The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”).
[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
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