Generic Top Level Domain Name (gTLD) Decisions

Complainant is The Boeing Company, Seattle, WA ("Complainant") represented by Jonathan M. Gelchinsky of Finngan, Henderson, Farabow, Garrett & Dunner, L.L.P. Respondent is H3A H3A, Malaga, Spain ("Respondent").

The domain names at issue are <boeing-usa.com>, <boeing-europe.com> and <boeing-africa.com>, registered with Go Daddy Software, Inc.

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 5, 2001; the Forum received a hard copy of the Complaint on September 6, 2001.

On September 5, 2001, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <boeing-usa.com>, <boeing-europe.com> and <boeing-africa.com> are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 September 6, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 26, 2001 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@boeing-usa.com, postmaster@boeing-europe.com and postmaster@boeing-africa.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default. On October 2, 2001, consistent with Complainant’s request that a one-person Panel hear the case, the Forum appointed Hon. Carolyn Marks Johnson to sit 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." 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 names be transferred from Respondent to Complainant.

B. Respondent did not file a response in this matter.

Complainant first began using the BOEING trademark in 1917 and expanded its use of the trademark to identify goods and services in 1923. Since 1942, Complainant haas acquired more than sixty registrations on the Principal Register for its BOEING United States trademark. Complainant has also registered BOEING as a trademark in countries throughout the world. The BOEING brand name is valued at more than $4 billion according to Interbrand consulting firm.

Complainant has for many years used BOEING as the primary means of identification of itself and its affiliates within their industry and to the general public. In addition to its goods and services, Complainant operates <boeing.com> as a website where it provides investment information as well as information on goods and services.

Respondent registered the disputed domain names with Go Daddy Software registrar ("Go Daddy") on June 2, 2001. Respondent has since used the Domain Names as links to a pornographic website located at <photosexy.net> and currently, the Domain Names are links to a note that states the site is "under construction."

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."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(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.

Complainant has established that it owns the BOEING trademark. The disputed domain names <boeing-usa.com>,<boeing-europe.com> and <boeing-africa.com> are confusingly similar to Complainant's BOEING mark. The additions of "USA," "EUROPE" and "AFRICA" to the BOEING mark do not establish a distinctive domain name that sets them apart from Complainant's mark. On the contrary, disputed domain names that add only a geographical location to Complainant’s mark create a perceived affiliation between the trademark owner and the domain names and this is likely to be confusing to Internet users. This permits a finding a confusing similarity. See Rolls-Royce PLC v. Hallofpain, D2000-1709, (WIPO Feb. 19, 2001) ("addition of the name of a place to a trademark, such as the addition of the word 'Canada' to 'ROLLSROYCE' is a common method for specifying the location of business services provided under the trademark); see also Canon U.S.A. Inc., et al. v. Sims, D2000-0819 (WIPO Aug. 7, 2001) (finding the domain name USACANON.COM confusingly similar to CANON mark); see also Dollar Financial Group, Inc. v. Analytical Services, FA 0007000095106 (Nat. Arb. Forum July 24, 2000) (finding the domain name LOANMARTUSA.COM confusingly similar to complainant's mark LOAN MART); see also Net2phone Inc, v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s registration of the domain name <net2phone-europe.com> is confusingly similar to complainant’s mark); see also Nike, Inc. v. Jung, D2000-1471 (WIPO Dec. 30, 2000) (finding the domain names NIKEEUROPE.COM and NIKE-EUROPE.COM confusingly similar to complainant's Nike mark).

Complainant has established its rights to and legitimate interests in the mark contained in its entirety within the domain names registered by Respondent. The record contains no evidence that Respondent has any rights to or legitimate interests in the mark and Respondent did not use the domain names in any manner that might give Respondent such rights and interests. Respondent did not use the domain names to offer bona fide services or goods. Respondent used the three Domain names to redirect Internet users to a pornographic website located at <photosexy.net>. This is not conduct that establishes rights to or interests in a domain name containing the mark of another. See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark); see also Land O’ Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding that use of a domain name to attract/redirect to another pornographic site is not a legitimate use).

Respondent has not shown that it is commonly known by the Complainant's trademark and it is reasonable to take as true Complainant’s allegations that Respondent is not known by Complainant’s mark. BOEING is a well-established business name that is known throughout the world as an identifier of Complainant's services and goods. The well-established BOEING mark permits the inference that Respondent has not been commonly known by the domain names that are confusingly similar to Complainant’s BOEING mark. See Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).

Although Respondent briefly changed the domain names from being a portal for accessing pornographic material to a site featuring a note that read "under Construction" and contained an email link to <H3A-CORP@MSN.COM>, Respondent still did not show legitimate interests in the mark contained within the disputed domain names. See Media West-GSI, Inc., & Gannett Satellite Info. Network, Inc. v. Macafee, D2000-1032 (WIPO Oct. 6, 2000) (finding no rights and legitimate interests where Respondent was not commonly known by the BASEBALL WEEKLY mark and made no use of the domain name other than to state that the "web site for domain name BASEBALLWEEKLY.COM is under construction"); see also Pricegrabber.com v. O'Connor et al., FA 93636 (Nat. Arb. Forum June 5, 2000) (finding Respondent's registration of its competitor's mark as a domain name and use of it for an "under construction" website caused confusion and disrupted Complainant's business).

Respondent was not making a legitimate non-commercial or fair use of the domain names and Respondent did not establish rights to or legitimate interests in the domain names containing Complainant’s mark. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well known mark to provide a link to a pornographic site is not a legitimate or fair use).

Accordingly, the second prong of Policy 4(a) has been satisfied.

Complainant further alleges that Respondent has acted in bad faith. Respondent's use of domain names containing Complainant’s mark as portals to pornographic material may be found to be evidence of bad faith. See CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that "this association with a pornographic web site can itself constitute a bad faith"); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith); see also MatchNet Plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that association of confusingly similar domain name with pornographic website can constitute bad faith).

Further, the Panel may conclude that Respondent intended to confuse Internet users when Respondent used Complainant's trademark in a manner that would suggest to Internet users that an affiliation existed between Complainant and Respondent. This also is evidence of bad faith where no such affiliation exists. See The Channel Tunnel Group Ltd. v. Powell, D2000-0038 (WIPO March 17, 2000) (finding bad faith where Respondent registered the disputed domain name with knowledge of Complainant's mark and used its website to seek commercial gain); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding bad faith where Respondent registered the domain name in order to use Complainant's trademark for Respondent's commercial gain).

Finally, Respondent's breach of its registration contract with Go Daddy constitutes bad faith. Respondent breached this contract when it registered <boeing-usa.com>,<boeing-europe.com> and <boeing-africa.com> and knowlingly misrepresented that its registration of these domain names did not infringe the rights of any third party. See Slep-Tone Entertainment Corporation v. Sound Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum March 13, 2000) (finding the domain name was registered and used in bad faith because Respondent did not make its warrranty of no infringement in registration agreement in good faith).

Accordingly, the third prong of Policy 4(a) has been satisfied

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted. Accordingly, it is Ordered that the domain names <boeing-usa.com>,<boeing-europe.com> and <boeing-africa.com> be transferred from Respondent to Complainant.