DECISION

 

Textron Innovations Inc. v. Robert Vondersaar

Claim Number: FA2407002106243

 

PARTIES

Complainant is Textron Innovations Inc. ("Complainant"), represented by Jeremiah A. Pastrick, Indiana, USA. Respondent is Robert Vondersaar ("Respondent"), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <lycomingoverhaul.com>, registered with Network Solutions, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Jeffrey J. Neuman as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on July 14, 2024; Forum received payment on July 14, 2024.

 

On July 15, 2024, Network Solutions, LLC confirmed by e-mail to Forum that the <lycomingoverhaul.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the names. 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 July 18, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 2024 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@lycomingoverhaul.com. Also on July 18, 2024, 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.

 

A timely Response was received and determined to be complete on August 6, 2024.

 

On August 6, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Jeffrey J. Neuman 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.       Complainant

 

Textron Inc. (NYSE: TXT) is not only one of the world's best known multi-industry companies, it is a pioneer of the diversified business model. Founded in 1923, Textron has grown into a network of businesses with total revenues of $12.4 billion (Textron is ranked 265th on the FORTUNE 500 list of largest U.S. companies), with approximately 34,000 employees with facilities and presence in 25 countries, serving a diverse and global customer base. Textron's companies include some of the most respected global brands in transportation, including Bell, E-Z-GO golf carts and Cessna aircraft. Textron operates a web site at www.textron.com that features information regarding the company, its products, businesses and subsidiaries.

 

Complainant, Textron Innovations Inc. is the owner of the following trademark registrations:

 

LYCOMING

U.S. Trademark Registration Number 0834293 issued August 29, 1967 in International Class 7 for, among other goods, internal combustion engines.

 

LYCOMING AUTHORIZED SERVICE CENTER

U.S. Trademark Registration Number 4887513 issued January 19, 2016 in International Class 37 for repair, maintenance, modification, and installation of aircraft engines and engine systems.

 

Since building its first aircraft engine in 1929, Lycoming Engines, which was acquired by Complaint in 1985, has specialized in making piston aircraft engines for both fixed wing and rotary aircraft. Lycoming Engines power over 200,000 aircraft – or half the world's general aviation fleet. Lycoming Engines operates a web site at <lycoming.com> that features information regarding the company, its history, its products and related information.

 

Respondent operates a business that provides "overhauls" of Lycoming engines. In offering these services, Respondent directly competes with Complainant and Complainant's authorized Lycoming engine service providers. As part of its engine overhauling services, Complainant "tests overhauled engines and components above and beyond the minimum accepted values to the exact specifications they need. [They] measure against Lycoming Factory tolerances that exceed field requirements to ensure reliability throughout the life of your engine. [They] also hot test every engine before it leaves the factory." Engines overhauled by Lycoming are backed by a full Lycoming warranty.

 

Additionally, Lycoming maintains a global network of authorized service providers who are trained and approved to offer Lycoming engine overhauling services. In the Dallas, TX area alone, where Respondent appears to be located, there are three authorized Lycoming service providers. Respondent is not one of those authorized service providers. Not only does Respondent compete directly with Complainant but Respondent also competes directly with these authorized Lycoming service providers – none of whom utilize the Lycoming mark in their domain. Complainant has not approved Respondent (nor any other organization) to utilize the LYCOMING mark as part of its domain.

 

B. Respondent

Respondent did not file a formal response, but did submit an e-mail response to Forum stating simply "I Overhaul Lycoming engines, I do not have any association with Textron Innovations. I have had that website for 13 years, Overhaul of lycoming is a service I provide, It is not in any way associated with Textron Innovations. Lycoming is the type of engine I service same as ford or chevrolet."

 

The Panel accepts this response and will incorporate this response in its analysis.

 

FINDINGS

1.       Complainant has demonstrated rights in the LYCOMING trademarks and the Respondent's domain name <lycomingoverhaul.com> is confusingly similar to Complainant's trademark.

 

2.       Complainant has not met its burden to demonstrate that the Respondent does not have rights or legitimate interests in the domain name.

 

3.       Given that the Complainant has not met its burden to establish the second element of the Policy, the Panel need not consider the issue of whether or not the domain name was registered and used in bad faith under the Policy.

 

4.       That said, the UDRP was designed to curb abusive domain name registrations known as "cybersquatting". Where there are complex questions involving elements of nominative fair use, as there is here, these must be resolved in a court of competent jurisdiction as opposed to the UDRP, especially where the result could be shutting down a legitimate business that has been operating for the past 13 years.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

Identical and/or Confusingly Similar

The Complainant holds rights in the LYCOMING mark through its registration with the United States Patent and Trademark Office (USPTO) under Registration No. 0834293, issued on August 29, 1967, in International Class 7 for goods including, but not limited to, internal combustion engines. Additionally, the Complainant owns another registration for the LYCOMING AUTHORIZED SERVICE CENTER mark, registered under Trademark Registration No. 4887513, issued on January  19, 2016, in International Class 37, covering services related to the repair, maintenance, modification, and installation of aircraft engines and engine systems. The exclusive right to the phrase "authorized service center," when used separately from the mark, has been disclaimed. Collectively, these trademarks are referred to as the LYCOMING Marks.

 

Registration of a mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i). This principle is supported by precedent, such as in DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018), where it was held that "Complainant's ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i)." Accordingly, the Panel finds that the Complainant has successfully demonstrated its rights in the LYCOMING Marks under Policy ¶ 4(a)(i).

 

The Disputed Domain Name, <lycomingoverhaul.com>, is confusingly similar to the Complainant's LYCOMING Marks as the Respondent has merely added a descriptive term to the LYCOMING mark and appended the generic top-level domain (gTLD) ".com." It is well established that the first element of the UDRP primarily functions as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. This approach is supported by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), Section 1.7. The addition of the term "Overhaul" does not substantially diminish the similarity between the domain name and the Complainant's Marks. For instance, in Textron Innovations Inc. v. wen bin miao, FA 2095236 (Forum May 24, 2024), the panel found <cessnapartsdealer.com> to be confusingly similar to the CESSNA mark, and similarly, in Textron Innovations Inc. v. Daniel Maccarone, FA 2093791 (Forum May 22, 2024), the panel found <cessnaseats.com> confusingly similar to CESSNA.

 

Rights or Legitimate Interests

In addition to proving that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, the Complainant must also demonstrate that the Respondent lacks rights or legitimate interests in the Disputed Domain Name under Policy ¶ 4(a)(ii). While the overall burden of proof in UDRP proceedings rests with the complainant, panels have acknowledged the inherent difficulty in proving that a respondent lacks rights or legitimate interests, often likened to the "impossible task of 'proving a negative,'" which typically requires information primarily within the respondent's control. This principle is articulated in Section 2 of the WIPO Overview 3.0. Therefore, to satisfy its prima facie case under the Policy, the Complainant must present evidence demonstrating that (a) the Respondent is not commonly known by the Disputed Domain Name and has not been authorized to use the Complainant's mark, and (b) the Respondent is not using the Disputed Domain Name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use.

 

a)    Commonly Known by Domain Name 

The Complainant contends that the Respondent lacks rights or legitimate interests in the Disputed Domain Name on the grounds that (i) the Respondent is not commonly known by the domain name or any variation thereof, and (ii) the Respondent's use of the Disputed Domain Name does not constitute a bona fide offering of goods or services, nor does it represent non-commercial or fair use. In support of its prima facie case, the Complainant presents evidence that the WHOIS record identifies "Robert Vondersaar" as the Registrant Organization. Based on this evidence, the Complainant has demonstrated that the Respondent is not commonly known by the domain name or any derivation thereof.

 

b)    Bona Fide Offerings of Goods / Services 

The Complainant asserts that the Respondent uses the Disputed Domain Name to offer services that directly compete with LYCOMING overhaul services. The Complainant further claims that Lycoming not only provides these services directly but also maintains a network of authorized service providers, including three located in the same area as the Respondent. The Complainant argues that "[N]ot only does Respondent compete directly with Complainant, but Respondent also competes directly with these authorized Lycoming service providers—none of whom utilize the Lycoming mark in their domain names." The Complainant alleges that the Respondent's use of the LYCOMING marks is misleading and confusing regarding (i) the true origin of the Respondent's services or (ii) the perceived official connection, association, or sponsorship between the Respondent's services and the Complainant, of which there is none.

 

The Respondent acknowledges that it has no direct or indirect "association" with the Complainant as an authorized service provider. However, the Respondent asserts that its business involves overhauling airplane engines, including those manufactured by Lycoming. Although not explicitly stated, the Respondent appears to be invoking an argument of nominative fair use.

 

Under the UDRP, service providers who use a domain name containing the Complainant's trademark to offer services or repairs related to the Complainant's goods or services may nonetheless be engaged in a bona fide offering of goods or services, which could establish a legitimate interest in the domain name under the Policy. This principle is supported by Section 2.8.1 of the WIPO Overview 3.0 based on one of the most cited UDRP decisions, Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001) .

 

Fluke Corporation v. Erwin Bryson / fixmyfluke / Nelson Bryson FA 1988399 (Forum July 6, 2022) (majority opinion citing Oki Data) summarizes the Oki Data decision.  It states that under the Oki Data test:

 

"a sales or service dealer of trademarked goods or services (whether authorized or unauthorized) may demonstrate that its domain name use is bona fide where:

 

1.                      it is actually offering the goods or services at issue;

2.                      it uses its website to sell only the trademarked goods or services and not those of a complainant's competitors or other third-parties;

3.                      the website accurately discloses the registrant's relationship (or lack thereof) with the trademark owner; and

4.                      the Respondent has not tried to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name."

 

The Panel analyzes these elements as follows:

 

Oki Data Element 1:

Under the Oki Data test, the first element does not distinguish between whether a Respondent is an authorized or unauthorized reseller, servicer, or repairer of the Complainant's products, nor does it consider whether the Respondent's services compete with those of the Complainant. The panel in Yeti Coolers, LLC v. Ryley Lyon / Ditec Solutions LLC, FA 1675141 (Forum July 11, 2016), observed:

 

"[t]he Oki Data test was developed in the context of an authorized retailer, and as the Complainant points out in its Complaint, Respondent was never authorized to sell Complainant's products. Nevertheless, the Oki Data standard has repeatedly been applied in the context of unauthorized resellers as well. See, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin' Connection, Inc., D2007-1524 (WIPO Jan. 28, 2008); Volvo Trademark Holding AB v. Peter Lambe, D2001-1292 (WIPO June 8, 2005). Indeed, there is no reason to distinguish between nominative fair use principles whether the user is authorized or unauthorized. Either way, if the use is fair and non-confusing, it should be permitted."

 

This establishes that the Oki Data test applies equally to authorized and unauthorized users, focusing instead on whether the use is fair and non-confusing.

 

Complainant does not dispute the fact that Respondent provides overhaul services nor that it provides such services with respect to Complainant's products. 

 

Oki Data Element 3

Under the third element of the Oki Data factors, the website associated with the Disputed Domain Name must accurately disclose the registrant's relationship (or lack thereof) with the trademark owner. While the Respondent asserts in its email response that it is not affiliated with the Complainant, there is no disclaimer to this effect on the website.

 

However, when an end-user first visits the Respondent's website, the name "A&E Aircraft Engines" is prominently displayed as the company providing the services. Additionally, towards the bottom of the homepage, there is information about the Respondent, stating that he has 43 years of accident-free maintenance experience and has received an NBAA 40-year safety award.

 

The absence of a disclaimer on the Respondent's website does not automatically result in a failure to meet the Oki Data test. The overall presentation of the website, including the clear identification of the service provider and the credentials displayed, can still be considered in determining whether the Respondent's use is fair and non-confusing under the Oki Data framework.

 

In Fluke, the majority of the three-member panel placed significant reliance on the decision in Sub-Zero, Inc. v. Adrian Loughlin / Factor Appliance, FA 1927129 (Forum Feb. 23, 2021) (hereinafter referred to as "the Sub-Zero II case"). In Sub-Zero, which involved the domain name <centricsubzerorepair.com>, the panel determined that, in the absence of an effective disclaimer, it is necessary to consider the broader facts and circumstances, including the content of the associated website.

 

In this context, Section 2.5.2 of the WIPO Overview 3.0 outlines several factors that should be considered in such an assessment, including:  

(i)      Whether the domain name has been registered and is being used for legitimate purposes and not as a pretext for commercial gain or other such purposes inhering to the respondent's benefit,

(ii)      Whether the respondent reasonably believes its use (whether referential, or for praise or criticism) to be truthful and well-founded,

(iii)        Whether it is clear to Internet users visiting the respondent's website that it is not operated by the complainant,

(iv)     Whether the respondent has refrained from engaging in a pattern of registering domain names corresponding to marks held by the complainant or third parties,

(v)      Whether there is an actual connection between the complainant's trademark in the Disputed Domain Name and the corresponding website content, and not to a competitor, or an entire industry, group, or individual, and

(vi)     Whether the domain name registration and use by the respondent is consistent with a pattern of bona fide activity (whether online or offline).

 

Applying these factors to the present case, the Panel finds:

(i)         The Respondent is using the domain name in connection with its legitimate business of overhauling LYCOMING engines, a service it has provided for more than forty years.

(ii)         The Respondent reasonably believes in the accuracy of its references to the Complainant's services, and this belief appears to be justified.

(iii)        See below.

(iv)         There is no evidence to suggest that the Respondent has engaged in a pattern of registering domain names that correspond to marks held by the Complainant or third parties.

(v)         There is a clear and legitimate connection between the Complainant's trademark in the Disputed Domain Name and the content of the corresponding website.

(vi)           The Respondent's registration and use of the domain name is consistent with a pattern of bona fide activity, whether conducted online or offline.

 

With respect specifically to factor (iii) above, the Panel does believe that Respondent has adequately made it clear to Internet users visiting the respondent's website that it is not operated by, or sponsored by, the Complainant.  Although the Respondent does not appear to use any of Complainant's logos of the Disputed Domain Name, the website does identify the Respondent's company as the provider of the overhaul services.

 

Oki Data Element 2

Where the Respondent encounters difficulties under the Oki Data elements, as is often the case in UDRP proceedings, is with respect to the second element. The Oki Data test requires according to Fluke that, to avail itself of a defense of nominative fair use, the Respondent must offer services exclusively related to the trademarked goods or services. In this instance, it is evident from the Respondent's website that it provides overhaul services not only for the Complainant's engines but also for a third party's airline engines, specifically those of "Continental." Additionally, by clicking on "More" in the list of services, an end-user can see that the Respondent also performs annual inspection services for several other third-party engines, including Seneca, Barron, and Learjet.

 

On its face, the Respondent's use of the disputed domain name appears to violate the second element of the Oki Data test. However, the Fluke summary of the Oki Data test does accurately summarize the entirety of element 2 of the Oki Data test. Element 2 of Oki Data states "Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods." (emphasis added) In other words, the primary concern underpinning element 2 is to prevent Respondents from using "the trademark to bait Internet users and then switch them to other goods." The decision further clarifies that "It is important to keep in mind that the Policy was designed to prevent the extortionate behavior commonly known as cybersquatting. It cannot be used to litigate all disputes involving domain names." See Oki Data.

 

In Lise Charmel Industrie v. Laurela Inc., Alexander Kargin-Utkin / Domains By Proxy LLC, D2012-1874 (WIPO November 15, 2012), the Panel elaborated further on this point, stating:

 

the Oki Data factors are intended to be applied contextually. It should be kept in mind that the overarching purpose of the Policy is to defeat cybersquatting. Therefore, if the use of the Domain Name does not amount to bait-and-switch selling, or to the Respondent attempting to divert Internet users contrary to the Complainant's presumed interests, then the Oki Data factor under b is more likely met.

 

Following this approach, the Panel's overall assessment is that, on balance, the Respondent's references to providing support for other non-Complainant engines do not constitute bait-and-switch selling or an attempt to divert Internet users in a manner contrary to the Complainant's interests. There is no evidence presented that supports the concern that users will go to Respondent's website to get information on overhauling services for Lycoming engines, see the information presented by Respondent about providing overhaul services for other engines, and decide instead to purchase overhauling services for other engines rather than for Complainant's engines.  Nor is there any evidence that a consumer of airline engines will see that Respondent offers services for other engines, and then decide to purchase a competing third-party engine. The Panel also notes that the Respondent's website does not contain any statements promoting the advantages of third-party engines or criticizing the Complainant's engines.  The website merely states the fact that it provides services for other airline engines and the pricing of such services.

 

Furthermore, as observed in Walbro Engine Management, LLC v. Registration Private, Domains By Proxy, LLC / Shahrokh Gabbaypour, Express Fuel Pumps, D2021-2409 (WIPO October 29, 2021)("Walbro"), it is appropriate to consider the concepts of laches and acquiescence. While UDRP panels have generally declined to specifically adopt concepts such as laches or other equitable defenses, Section 4.17 of the WIPO Overview 3.0 acknowledges that "in specific cases, certain delays in filing a UDRP complaint may make it more difficult for a complainant to establish its case on the merits, particularly where the respondent can show detrimental reliance on the delay." In this case, the Respondent has been using the disputed domain name as the primary email for its business for 13 years prior to the filing of this action. Additionally, there is no evidence in the record that the Complainant notified the Respondent of its concerns at any point during those 13 years. The Respondent's first notice of this issue was the receipt of the Complaint.

 

For these reasons, the Panel finds that the Complainant has not succeeded in establishing that the Respondent lacks rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

As the Panel has determined that the Complainant does not succeed under paragraph 4(a)(ii) of the Policy, there is no need to conduct a detailed assessment of whether the disputed domain name was registered and used in bad faith. The evidence indicates that the Respondent has operated a service business providing overhaul services for LYCOMING engines. Although the Respondent's website includes pricing and other factual information about overhaul services for third parties, these complexities do not conclusively demonstrate bad faith.

 

Furthermore, the Panel believes it would be inappropriate to use the UDRP to shut down a successful business that the Respondent has operated for over 13 years. According to Paragraph 4.1(c) of the ICANN Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, "Except in cases involving 'abusive registrations' made with bad-faith intent to profit commercially from others' trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts . . . and calls for registrars not to disturb a registration until those courts decide." The Panel, aligning with the view expressed in Walbro Engine Management, believes that the present case represents such a dispute and is more appropriately resolved through the courts.

 

The Panel is not in any way suggesting that Respondent's website would succeed in a trademark infringement action, nor that Respondent would not be found liable in a court of competent jurisdiction, but rather, there is not enough evidence submitted in which the Panel could conclude that the domain name was either registered or used in bad faith.

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <lycomingoverhaul.com> domain name REMAIN with Respondent.

 

 

 

Jeffrey J. Neuman, Panelist

Dated: August 20, 2024