Experimental Aircraft Association (EAA)
v. EAA.COM
Claim Number: FA0310000206309
Complainant
is Experimental Aircraft Association
(EAA) (“Complainant”) represented by Patricia
A. Motta of Michael Best &
Friedrich LLP, 100 East Wisconsin Avenue, Suite 3300, Milwaukee, WI, 53202.
Respondent is EAA.COM (“Respondent”) represented by John Berryhill of Dann, Dorfman, Herrell, and Skillman P.C., 1601 Market Street, Suite 2400, Philadelphia, PA, 19103.
The
domain name at issue is <eaa.com>
registered with Tucows, Inc.
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.
David A.
Einhorn (Chairman), David H. Bernstein and Terry F. Peppard appointed as
Panelists.
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on October 27, 2003; the Forum received a hard copy of the
Complaint on October 27, 2003.
On October
28, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <eaa.com> is registered with Tucows,
Inc. and that Respondent is the current registrant of the name. Tucows, Inc.
has verified that Respondent is bound by the Tucows, Inc. 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 October
29, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of November
18, 2003 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@eaa.com by e-mail.
A timely
Response was received and determined to be complete on November 18, 2003.
On
November 21, 2003, Complainant submitted a timely and complete Additional
Submission.
On December 2, 3003, pursuant to Complainant’s request to have the
dispute decided by a three-member
Panel, the Forum appointed David A.
Einhorn, David Bernstein and Terry F. Peppard as Panelists.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
[a.] EAA is the registered trademark of the
Experimental Aircraft Association. <Eaa.com> includes links to aviation
related content, including a link to ‘Experimental aircraft’ which falsely
leads internet visitors to believe this is the official website of the
Experimental Aircraft Association. The
official website for the Experimental Aircraft Association (EAA) is
<eaa.org>, was first registered on March 1, 1995, and has been
continuously used since that time.
[b.] There is no stated relationship on the
current or past <eaa.com>
website as to how the EAA trademark is utilized by the current website
owner/operator. The current owner of
the <eaa.com> web site appears
to be intentionally misleading visitors by including content links that are
directly related to the business of the Experimental Aircraft Association and
causing confusion and lost business opportunities.
[c.] The current operator appears to be
intentionally misleading visitors in believing they are visiting the
Experimental Aircraft Association’s website by having links called
“Experimental aircraft”, “Aviation headsets”, Flight school”, “Pilot training”,
and “Flight training”. The EAA is an
internationally recognized “Leader in Recreational Aviation” (mark filed with
the United States Patent and Trademark Office on May 12, 2000, serial number
76/046,872), supporting pilots and aviation enthusiasts in their pursuit of
flight. EAA is the recognized
association for authoritative information on experimental aircraft design,
building, flying, and maintaining of homebuilt aircraft from both plans and
kits. EAA also has an extensive online store for its members and non-members
providing EAA trademarked clothing and supplies. NAFI (the National Association of Flight Instructors) is an
affiliate of the EAA that supports the Flight Instruction profession.
B. Respondent
[a.]
The
Complainant has presented several trademark registration certificates. Most of
these certificates were issued well after the July 10, 1997 registration date
of the disputed domain name, and include several stylized marks from which
words are disclaimed. The sole registration of relevance to this proceeding is
US TM Reg. No. 1,166,870, which was registered in connection with “Indicating
Membership in [Complainant’s] Organization.”
[b.]
The letters
EAA are neither distinctive to the Complainant, nor do they represent a famous
combination of letters solely associated with the Complainant. This acronym,
and the corresponding domain name at eaa.net is used by the European Aluminum
Association without objection. “EAA” is further used as an identifier by the
European Athletic Association; the European Association of Archaeologists;
European American Armory Corp.; the European Accounting Association; the
European Acoustics Association; the Electric Auto Association; the Estate
Agent’s Authority (HK); the Evergreen Artist’s Association; the Environmental
Assessment Association; and many others.
Although the Respondent does not deny that the Complainant has a
hitherto unknown (to the Respondent) registration of a collective mark for
indicating membership in the Complainant’s organization, these ample concurrent
uses demonstrate that the Complainant’s rights, if any, are narrowly limited to
the purpose for which it obtained
registration, and do not extend to other purposes for which the letters
may be used.
[c.] The Respondent has registered a portfolio
of domain names incorporating common words, generic terms, short terms, and
useful phrases. These domain names are employed in conjunction with an
advertising subscription database, operated by a third party advertising
consolidator, to return search results from the database on the basis of
correspondence between terms in the domain names and search terms for which
advertisers have paid subscriptions on a performance basis. The use of a
three-letter domain name as an advertising and general-purpose search portal
having nothing to do with the Complainant’s goods and services is not
illegitimate.
[d.] The Respondent has also registered the
following three-letter and two-character domain names:
<mgq.com>
<vyf corn> <hhc.com> <oeg.com> <ojx.com>
<zqf.com> <idh.net> <og.com> <65.com>
[e.] The Web page provides links to a free
email service, current headlines, a search box, various advertisements
unrelated to the Complainant’s organization and a block of links automatically
provided by a “pay-per-click” search engine provider. The domain name is in
actual use, is not merely warehoused, and the sponsored links provide revenue
to the Respondent, to which the Respondent is legitimately entitled and has a
legitimate expectation interest.
[f.] The
Respondent has made no attempt to sell the domain name to the Complainant during the course of several years of
registration of the domain name; the Respondent is not, and has not been,
attempting to divert or confuse consumers by claiming sponsorship, endorsement,
or affiliation with the Complainant; the Respondent is not, and has not been,
using the domain name in a manner adverse to the Complainant’s goodwill and
reputation; and the Respondent has not engaged in a pattern of registrations
designed to block or prevent the Complainant or anyone else from reflecting its
mark in a domain name.
C. Additional Submissions
Complainant’s
additional submissions raised the following additional arguments:
At the time Complainant filed its Complaint and prior
thereto, Web surfers looking for Complainant and its services, could reasonably
type in the <eaa.com> domain
name, and by the time Web surfers would arrive at Respondent's site, they were
subjected to a view of Respondent's site and its "sponsored
links." These links directed users
to sites competitive with Complainant.
This has caused confusion and lost business opportunities for
Complainant.
Respondent then filed an additional paper after the deadline
for submission. As this paper was filed
late, it is not being considered in detail.
However, this supplemental submission reiterates and clarifies
Respondent’s earlier contention that any aviation links which may have once
appeared were generated by a third party with no knowledge thereof on the part
of the Respondent.
Complainant’s
registration number 1,166,870 predates Respondent’s Web site registration and
is in force. Complainant improperly
cited registration number 1,167,252, as that registration has been cancelled
under Section 8.
The brief
appearance of aviation links on Respondent’s sites was automatically provided
by a pay-per-click search engine provider and was not intended by Respondent.
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy 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
domain name <eaa.com> is
identical to Complainant’s mark, EAA.
Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy.
Respondent
has not established any trademark or same mark rights to the term “EAA”, and
has not shown that it is known by that name in connection with the bona fide offering of goods or services. See, Lex Mundi, Ltd. v. Chris Truax, FA0209000124749 (Nat Arb Forum Nov.
8, 2002) (finding that Respondent did not have rights in a domain name where it
was not known by that mark).
Furthermore, a random selection of three letter combinations is insufficient
to create legitimate rights.
Complainant has therefore not satisfied its burden under paragraph
4(a)(ii) of the Policy.
Complainant
has not satisfied its burden of proof that Respondent has intentionally attempted
to attract users by creating a likelihood of confusion. It is the finding of this Panel that the
brief appearance of aviation links on Respondent’s Web sites was automatically
provided by a pay-per-click search engine provider and was not intended by Respondent. Further, since there is no evidence that
Respondent’s business is in connection with aviation, we do not find that the
Respondent had a duty to be aware of Complainant’s mark.
Moreover, to prevail,
Complainant must prove both bad faith registration and bad faith use. See
E-Duction, Inc. v. Zuccarini, D2000-1369 (WIPO Feb. 5, 2001). In this case, Respondent has demonstrated by
a preponderance of the evidence that, until the initiation of this challenge,
it had never heard of Complainant or its EAA mark. Respondent's registration cannot have been in bad faith if, at
the time of registration, Respondent had not heard of Complainant. See DK
Bellevue, Inc. d/b/a Digital Kitchen v. Landers, D2003-0780 (WIPO Nov. 24,
2003); see also Intermap Techns. Corp. v.
Salvage Elec. Inc., FA 203130 (Nat. Arb. Forum Dec. 12, 2003).
Complainant
has therefore not satisfied the requirements of paragraph 4(a)(iii) of the
Policy of showing bad faith use and bad faith registration.
As
Complainant has failed to establish the requirements of Policy ¶ 4(a)(iii),
Complainant’s request for relief is hereby DENIED.
David A. Einhorn (Chairman), Panelist
David H. Bernstein, Panelist
Terry F. Peppard, Panelist
Dated: December 16, 2003
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