Generic Top Level Domain Name (gTLD) Decisions

P. O. Box 50191
Minneapolis, Minnesota 55405 USA
www.arbitration-forum.com

The New Piper Aircraft, Inc.,

Complainant

vs.

Piper.com,

Respondent

DOMAIN NAME DISPUTE
ADMINISTRATIVE PANEL DECISION
Forum File Number FA # 94367

The above entitled matter came on for an administrative hearing on May 1, 2000, before the undersigned arbitrator in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy and Rules. The arbitrator certifies that he has no conflict of interest in this matter. After due consideration of the written record as submitted, the following decision was made:

PROCEDURAL FINDINGS

Domain Name: Piper.com

Domain Registrant Piper.com Date: May 22, 1997

Domain Registrar: Network Solutions, Inc.

This action was commenced by the Complainant filing its complaint with the National Arbitration Forum (The Forum) on March 28, 2000. Thereafter, following a compliance review made in accordance with ICANN Rule 4, all necessary parties were duly notified of the commencement of the administrative proceedings. In due course the Respondent filed its Response to the Complaint.

Complainant is seeking an assignment of the domain name "piper.com" from the Respondent, pursuant to Paragraph 4(i) of the Rules. In order to justify transfer of a domain name the ICANN Policy provides that a complainant must prove each of the following:

1. that 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. that the Respondent has no legitimate interests in respect of the domain name; and
   
   
3. the domain name has been registered and used in bad faith.

FACTUAL BACKGROUND

PARTIES ALLEGATIONS:

1. The Complainant is the holder of U.S. Trademark Registration No. 514,529 for the mark "Piper" and the "Piper" logo applied to "airplanes and structural parts thereof". The mark was registered August 30, 1949, based upon a date of first use in commerce in November, 1937.

2. Complainant is the owner of U.S. Trademark Registration for the mark "Piper" applied to the "maintenance and repair of aircraft and related parts and accessories". The mark was registered August 18, 1998 based upon a date of first use in commerce of December, 1943.

3. Complainant is the owner of U.S. Service Mark for the mark "Piper Logo" covering "maintenance and repair of aircraft and related parts and accessories therefor," issued July 15, 1997, based on a first use in commerce of July, 1995.

5. Complainant and its predecessor in interest, Piper Aircraft Corporation, have for over sixty years been engaged in the business of the manufacture and sale of aircraft and aircraft parts, and, through authorized distributors and service centers, in the provision of aircraft maintenance and repair services, all under the Piper name and mark.

6. In January 1996, Complainant established a web site for the electronic promotion of its business endeavors under the domain name "newpiper.com".

8. The domain name "piper.com was available at the time Complainant acquired its domain name "newpiper.com". It did not express interest in the "piper.com" name until May 1999 when it contacted Respondent

.

9. Respondent is involved in the sale of new and used aircraft, including Piper aircraft. The domain name "piper.com" was associated with Respondent’s web site from the time it was acquired in May, 1997 until Respondent received notice of Complainant’s dispute with the domain in May, 1999. When Respondent acquired the domain name it contacted Complainant to offer a free link on the "piper.com" site. Although Respondent spoke with a representative of Complainant and left messages, Complainant never responded to the offer

.

10. After receiving Complainant’s letter of May 26, 1999 demanding that Respondent cease and desist from using the domain name, Respondent revised the "piper.com site to one dealing with various things related to pipes and pipers. Respondent says the revision was made in an effort to alleviate any potential harm claimed by Complainant and at Complainant’s request that the "piper.com" site not be associated with Respondent’s aircraft site. Although Respondent did not believe that Complainant’s rights were violated because Respondent did in fact sell Piper aircraft and has the right to inform the public of such by virtue of fair use defenses to trademark infringement, Respondent says it did not want to exasperate the situation and decided to revise the website to alleviate Complainant’s concerns while the parties were attempting to resolve the matter. Complainant asserts that the revision to the site evidences bad faith. The revised site makes no reference to aircraft.
1. Respondent further responded to Complainant’s May 26^th letter by a letter dated June 17, 1999, in which Respondent set forth its rationale as to why no infringement, unfair competition or dilution existed for the Aircraft Site based on fair use doctrine and offered to include a disclaimer or notice on the "piper.com" site to clarify that no association between Respondent and Complainant existed. The Respondents letter also pointed out that there were several domain names registered by entities other than Complainant or Respondent which included the identical Piper trademark, to wit: "piper.net", "piper.org", and "piperaircraft.com". Later Respondent learned that other entities had registered "piperaircraft.net" and "usedpiper.com".

12. By a letter dated January 7, 2000, Complainant restated its position and inquired into

the availability of Respondent’s domain name for purchase. In response, by letter dated January 21, 2000, Respondent restated its position and closed by saying "in the event Complainant still felt that its rights were somehow being violated, Respondent would consider settlement of the issued as offered by Complainant.

13. Via letter dated February 17, 2000, Complainant offered Respondent $3,000.00 (which it considered nuisance value) for the domain name as a "best and final offer". Respondent’s reply pointed out that it had acted within its rights in the use of the name. In addition, based on the number of "hits" at the site and the many offers to purchase, the value was far in excess of #3,000.00. Respondent counter-offered that it would be willing to settle and assign the domain name for $25,000.00. This was rejected by Complainant. Respondent offered to lower the price to $20,000.00, which was also rejected by the Complainant.

14. Respondent maintains that it has rights and a legitimate interest in "piper.com" as used for both the Aircraft Site and the Pipe Site. Pursuant to 4(c)(i) of the Policy, Respondent claims it was using the "piper.com" Aircraft Site in connection with the bona fide offering of goods and services (Piper Aircraft) before any notice of the dispute. (May, 1997 - May, 1999). Respondent did not have to be an authorized distributor in order to sell Piper Aircraft.. Respondent is in the business of selling Piper aircraft and, as such, it has the right to inform consumers that it sells such aircraft. Accordingly, Respondent claims its use of the domain name and site falls under the fair use doctrine as a defense to infringement.

15. In further support of its right to use "piper.com", as set forth in Rule 4(c )(iii), Respondent claims its use of the domain name is a legitimate non-commercial and/or fair use of the domain without intent for commercial gain to misleadingly divert consumers or tarnish the trademark. The Pipe Site (as the domain is presently used), is not likely to cause confusion with Complainant nor does it tarnish the Piper trademark, which is widely used as registered trademarks and trade names of numerous entities other than Complainant.

FINDINGS OF FACT

After careful consideration of the submittals, I find the following facts:

1. The subject domain name is similar to Complainant’s mark. However, this might also be said of a number of other domain names, some of which appear to be more directly related to the Complainant.

2. As a seller of aircraft, including Piper aircraft, Respondent has a legitimate interest in the domain name which is the subject of this complaint. Respondent’s use of "piper.com" is a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark of the Complainant.

4. Sale of the site only came up as an option after Complainant raised issue with
Respondent. There is no evidence that Respondent made an effort to sell the domain name to the Complainant, a competitor or anyone else before the complaint. Respondent’s counter- offer to the Complainant’s unsolicited offer to transfer the domain name for compensation does not constitute bad faith.

DECISION

After reviewing the facts as established through the submittals, it is the decision of the arbitrator that the Complainant has failed to prove its case in that the Respondent has rights or legitimate interest in the domain name which is the subject of the complaint; and, the Respondent did not register or use the domain name in bad faith. Accordingly, the Respondent is allowed to retain and use the domain name.

Louis E. Condon, Arbitrator

May 2, 2000

Charleston, SC