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Generic Top Level Domain Name (gTLD) Decisions |
OAG Worldwide, Inc. v. Mark Nelson
Claim Number: FA0202000105183
PARTIES
Complainant is OAG Worldwide, Inc., Oakbrook, IL (“Complainant”) represented by Julie Finch, of Hinshaw & Culbertson.
Respondent is Mark Nelson, North
Aurora, IL (“Respondent”) represented by Catherine
Simmons-Gill, of Offices of
Catherine Simmons-Gill.
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue is <officialairlineguides.com>,
registered with Register.com.
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.
Carolyn M. Johnson, James Crary, and
Irving H. Perluss are the Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (“the Forum”) electronically on February 25, 2002;
the Forum received
a hard copy of the Complaint on February 25, 2002.
On February 25, 2002, Register.com
confirmed by e-mail to the Forum that the domain name <officialairlineguides.com> is registered with Register.com
and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is
bound by the Register.com 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 February 28, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”),
setting a deadline of March 20, 2002 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@officialairlineguides.com by e-mail.
A timely Response was received and
determined to be complete on March 20, 2002.
Complainant made an additional timely submission
on March 25, 2002. Respondent made an untimely additional submission, but,
nevertheless,
it will be considered by the Panel.
On April 8, 2002,
pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Carolyn M. Johnson, James Crary, and Irving H.
Perluss as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name
be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Complainant owns trademark registrations,
worldwide, on variations of the trademark/service mark OFFICIAL AIRLINE
GUIDE. These marks are used in
connection with books, databases and Internet websites that provide airline
scheduling information. These trademark
registrations are:
OFFICIAL AIRLINE GUIDE & LOGO
County Reg. Number
Japan 2711610
United
States 546542
OFFICIAL AIRLINE GUIDE & OAG LOGO
Country Reg. Number
France 1409896
OFFICIAL AIRLINE GUIDE
Country Reg. Number
Australia 450070-B
Austria 129367
Benelux 420884
Canada 369588
Denmark 383599
Finland 106057
France 1444133
Israel 64246
Norway 159034
Saudi Arabia 470/45
Singapore 378186-B
South Africa 865322
Sweden 214605
Switzerland 357122
United
States 1314556
2. Complainant
also is the owner of common law rights in the mark OFFICIAL AIRLINE GUIDE,
OFFICIAL ARLINE GUIDES and OAG. These
marks are used in connection with books, databases and Internet websites, which
provide airline scheduling information.
3. Respondent
has attempted to obtain a United States trademark registration for the domain
name at issue <officialairlineguides.com>. Respondent’s application has been
preliminarily rejected as being confusingly similar to Complainant’s registered
mark OFFICIAL AIRLINE
GUIDE.
4. The
domain name is identical to Complainant’s common law mark OFFICIAL AIRLINE
GUIDES and is nearly identical to Complainant’s federally
registered mark
OFFICIAL AIRLINE GUIDE. Complainant has
been using its mark OFFICIAL AIRLINE GUIDE for approximately 53 years and its
product has long been known as the “bible”
of the travel industry. Respondent is a former employee of
Complainant who has obtained the subject registration for the joint purpose of
reselling the domain
name at issue to Complainant and tarnishing Complainant’s
trademarks, service marks, good will and reputation.
5. Complainant
is a worldwide business employing approximately 500 people primarily in the
United States and the United Kingdom.
Complainant’s marks OFFICIAL AIRLINE GUIDE and OFFICIAL AIRLINE GUIDES
are famous.
6. Complainant
is the owner of the most comprehensive independent airline schedule database in
the world. Complainant published its
first guidebook to airline flights in February 1929, as the “Official Aviation
Guide of the Airways.” By 1949,
Complainant had shortened the name of its publication to OFFICIAL AIRLINE
GUIDE. In 1993, Complainant’s
predecessor organization (Official Airline Guide, Inc.) was valued at more than
$400 million when it was purchased
by Reed Elsevier.
7. In
1998, Reed Elsevier restructured the division containing Official Airline Guide sales, ABC and
other organizations under the organizational name Reed Travel Group. This combined structure had several
non-airline guide products, so the umbrella brand, OAG, was created to reflect
the wider products
and services available.
During this period, usage of the OFFICIAL AIRLINE GUIDE and OFFICIAL
AIRLINE GUIDES marks continued, both by members of the public,
and by
Complainant.
8. In
summer of 2001, Complainant became the owner of all OAG assets, including but
not limited to the trademark OFFICIAL AIRLINE GUIDE.
9. Complainant’s
trademarks OFFICIAL AIRLINE GUIDE and OFFICIAL AIRLINE GUIDES are widely known
throughout the travel industry. This
recognition has been continuous and widespread.
10. Respondent
was an employee of Complainant from 1984 to August of 2001, and, as such, is
and was, at all times, fully aware of Complainant’s
prior and superior use of
the marks: OFFICIAL AIRLINE GUIDE and
OFFICIAL AIRLINE GUIDES. Respondent’s
most recent job title was Data Support Analyst in Direct Marketing.
11. Respondent
acquired the domain in question for the primary purpose of selling the domain
name registration to Complainant for valuable
consideration far in excess of
Respondent’s out-of-pocket costs.
Respondent initially offered to sell the domain name to Complainant for
the sum of $1.5 million. He
subsequently reduced his offer to sell to $750,000, a sum that remains far in
excess of Respondent’s out-of-pocket costs.
12. Respondent
has made no use of the domain name in connection with a bona fide offering of
goods or services. Respondent’s website
currently states that someday, maybe, he’d like to do something with the
site. Respondent’s prior website
contained commentary regarding Complainant which was false and misleading. Since Respondent has been notified by
Complainant that Complainant believes Respondent is infringing Complainant’s
trademarks, Respondent’s
current website is nothing more than an ill-disguised
attempt to justify Respondent’s non-use of the domain name.
13. Respondent
has not become commonly known by the domain name. Complainant is commonly known by the mark OFFICIAL AIRLINE
GUIDES.
14. Respondent
is intentionally trading off of Complainant’s trademark and is attempting to
tarnish the reputation of Complainant.
A visitor, searching for Complainant, and typing in Complainant’s
service mark <officialairlineguides.com> upon reaching the site,
would reasonably conclude that it has reached Complainant’s website, and that
Complainant has no web services
available, which is a false assumption.
15. Respondent
has stated that Respondent simply wants to create a place for former employees
of Complainant to stay in touch. Respondent’s
actions, however, demonstrate the
falsity of this position. Complainant
has offered to consent to Respondent’s use of domain names that accurately reflect
Respondent’s target audience, without
confusing Complainant’s customers or
harming Complainant’s reputation. Most
recently, Complainant offered to consent to the use of the domain name
<officialairlineguidesalumni.com>.
Respondent, although stating this is the group he is trying to reach,
has rejected Complainant’s offer.
16. Respondent
has knowingly and in bad faith, undertaken to damage Complainant, and the good
will associated with Complainant’s trademarks.
Respondent has no legitimate claim to the use of Complainant’s
trademarks, and is making no legitimate use of Complainant’s trademarks.
B. Respondent
1. Complainant
cannot establish any of the three elements required by Policy 4(a). First, Complainant affirmatively abandoned
the trademarks OFFICIAL AIRLINE GUIDE and OFFICIAL AIRLINE GUIDE (AND DESIGN)
over five
years ago and, therefore, has no rights in any trademark similar or
identical to the domain name in question.
Second, Respondent has a legal right in the domain name <officialairlineguides.com>,
and has made a legitimate noncommercial use of the domain name by offering
current and former employees of Complainant and Complainant’s
corporate
predecessor, as well as others, a central location on the Internet to exchange
messages, keep in touch and network.
Finally, Respondent did not register the domain name in bad faith, nor
has Respondent used that domain name in bad faith.
2. Complainant has no right in any
trademark similar to or identical to the domain name in question. In 1996, Complainant’s predecessor
organization affirmatively abandoned the trademark OFFICIAL AIRLINE GUIDE in
favor of its preferred
mark, OAG. It
did so as part of a deliberate and organized campaign to create a “new corporate
identity . . . using only name only.”
Employees were informed that “Official Airline Guides will no longer be
referenced as part of our name . . .” and were instructed
to refer to the
company simply as “OAG.” Employees were
specifically directed not to refer to OAG as Official Airline Guides and
to inform customers that “we simply have a three letter company name” or that
“[t]he
OAG brand has evolved from the part of our business previously named
Official Airline Guides.”
3. OAG Worldwide discontinued use of the
OFFICIAL AIRLINE GUIDE mark in August of 1996, and initiated a saturation
campaign to promote
OAG as the only mark by which the company and its
services would be identified. This
campaign began with a press release on August 5, 1996, in which OAG Worldwide
publicly announced “its new corporate identity”
and noted that OAG was
“[f]ormerly Official Airline Guides.”
It continued with print ads in several national publications, including Time, Newsweek, Business Week, U.S. News
& World Report, Financial World, Wall Street Journal, Money, Nation’s
Business and Sports Illustrated,
promoting OAG as the company’s new brand.
The travel industry press also reported upon the rebranding. The project of abandonment culminated in a
recent ad campaign that stresses that OAG does not, in and of itself, stand for
anything.
4. As part of the branding changeover, the
OAG mark replaced OFFICIAL AIRLINE GUIDE on all OAG Worldwide stationery,
marketing and promotional
materials, forms and brochures. Most important, OAG replaced OFFICIAL AIRLINE
GUIDES as the identifying trademark on all of OAG Worldwide publications.
5. Complainant has not used the mark
OFFICIAL AIRLINE GUIDE in commerce since 1996, and only the mark OAG remains in
use today, not only
on Complainant’s products and services, but also on its
corporate offices, its internal newsletter, and its press releases. Complainant continues actively marketing its
products and services under the mark OAG.
OAG Worldwide advertising continues to emphasize that OAG does not, in
and of itself, stand for anything in particular. Complainant’s site on the World Wide Web, at <oag.com>, makes no mention of the
OFFICIAL AIRLINE GUIDE mark. The
product roster at that website lists 27 different products, none bearing the
OFFICIAL AIRLINE GUIDE mark. A searched
performed at <Yahoo.com> for the term “OAG” immediately brings up
Complainant’s website. A search for
“official airline guide,” however, brings up nothing relevant to this dispute,
not even Respondent’s website.
6. Complainant has affirmatively abandoned
its rights in the mark OFFICIAL AIRLINE GUIDE and its variants. A trademark is deemed abandoned if “its use
has been discontinued with intent not to resume such use. The statutory prima facie standard is 3 years.
Five and a half years have elapsed since Complainant’s last use of the
mark OFFICIAL AIRLINE GUIDE. During
those five and half years, Complainant has not used the mark, has deliberately
and publicly announced its abandonment of the
mark, has staged and active
public campaign to “rebrand” itself as OAG, and, as part of that campaign, has
disavowed any connection
between its new mark “OAG” and the words “official
airline guide(s).:
7. Third-party usage of the mark is
irrelevant because “trademark rights are created by actual ‘use’ [by the
registrant] of the mark
in commerce.” Kusek v. Family Circle, Inc. (D. Mass.
1995) 894 F.Supp. 522, 531.
8. Once a mark is abandoned, “the law
ceases to protect the owner . . . [and] trademark law allows it to be used by
another.” Abdul-Jabbar v. General Motors Corp. (9th Cir. 1996) [1996] USCA9 1498; 85
F.3d 407, 411. Complainant has
affirmatively and deliberately abandoned the mark OFFICIAL AIRLINE GUIDE and
its derivatives and has made no use of
the mark in over five years. Complainant has lost all rights to the mark.
9. Respondent has a legal right to the use
of the domain name <officialairlineguides.com> and is making a
legitimate noncommercial use of the domain name.
10. Respondent has made a legitimate noncommercial
use of the domain name, a name deliberately abandoned by Complainant. Respondent has a long and intimate history
with the name “Official Airline Guides.”
Respondent’s father began working for Official Airline Guides, Inc., in
1970, ultimately becoming Publisher of all of the print consumer
schedule
books. When Respondent was a boy, he
would often accompany his father to the office where he met many of his
father’s colleagues, as well
as, in come cases, their children, who became
friends of the Respondent. In many
cases, these children grew up to work at Official Airline Guides, Inc.,
alongside Respondent, who joined the company in 1984.
11. In
1993, Official Airline Guides, Inc. was acquired by Reed Elsevier, a British
publishing house. Soon thereafter, the
company began laying off employees in groups of approximately 30 to 60. These mass layoffs would occur every 6 to 9
months. By the late 1990’s, many of Respondent’s
friends were no longer employed by the company, which had also changed its
name, rebranded
its products and abandoned the OFFICIAL AIRLINE GUIDE mark.
12. Over four years after Complainant
abandoned the trademark OFFICIAL AIRLINE GUIDE, Respondent registered the
domain name <officialairlineguides.com>. He did so with the intent of creating a place on the Internet for
present and former employees of Official Airline Guides, i.e., Respondent’s family and lifelong friends, to exchange
messages with one another, network and otherwise remain in contact. Although possessed of few financial
resources to devote to this project and little technical expertise, Respondent
had, by August
of 2001, created a rudimentary message board system at the
domain name. Although technical
difficulties forced him to close the website later that year, he reopened the
site shortly thereafter and documented
on the site his intent to create an
Internet community for, among others, former employees of Official Airline
Guides.
13. Although Respondent’s lack of financial
resources and technical expertise has thus far prevented him from creating a
sophisticated
website, this fact in no way lessens either Respondent’s
legitimate right to use the domain name <officialairlineguides.com>
or his interest in doing so. Given
Respondent’s longstanding family and personal connection with the words
“official airline guides,” Respondent has a legitimate
interest in using the
domain name for his stated noncommercial purposes.
14. Respondent has never shown bad faith in
either his registration or his use of the domain name <officialairlineguides.com>. Respondent has not engaged in any of the
four types of behavior evidencing bad faith enumerated in Paragraph 4(b) of
UDRP nor in any
other type of bad faith action. Respondent has no intent to misleadingly divert customers from
Complainant, and can have no intent to “trade off” Complainant’s former
trademark as Respondent offers no goods or services for sale. Respondent has no intent to tarnish the
reputation of Complainant and has never made any statements on his website in
any way disparaging
or critical of Complainant. Finally, Respondent did not register the domain name with the
intent of selling it to Complainant.
Complainant actively sought and solicited Respondent to sell his domain
name. There are simply no facts
supporting Complainant’s allegations of bad faith or justifying the
cancellation of Respondent’s legitimate
rights in his domain name.
15. Complainant’s allegation that Respondent
is “intentionally trading off of Complainant’s trademark” is grossly
unsupported and cannot
support a finding of bad faith. Leaving aside the issue of whether
Complainant possesses any trademark rights at all, Complainant has overlooked
that Respondent offers
no goods or services for sale at his website and, thus,
stands no chance of profiting commercially through his use of the domain
name. Moreover, although Complainant
spends a good deal of time detailing its assumptions as to what the average
consumer would think upon
reaching Respondent’s website, they remain mere
assumptions. Respondent has never tried
to mislead the general public as to the nature of his website. Respondent’s website is not listed with any
of the major search engines and former employees of OAG Worldwide learned of
the site
strictly through word of mouth. Respondent has merely tried to give
new life to a name that means a great deal to him, his friends
and family, and
that Complainant had discarded.
16. Respondent has never attempted to tarnish
any trademark of Complainant (assuming Complainant has a trademark to tarnish)
or the reputation
of Complainant generally.
Nothing written by Respondent on either incarnation of his website is
even remotely critical of Complainant or otherwise indicates
that the purpose
of either site is to criticize, disparage or tarnish Complainant. All of the commentary on Respondent’s first
website was provided by third parties; Respondent himself did nothing but
supply a forum
for discussion.
17. Respondent did not register the domain
name in question for the purpose of selling it to Complainant for consideration
in excess of
Respondent’s out-of-pocket costs.
Respondent had owned the domain name in question for over a year before
he was approached by Complainant, who requested that Respondent
transfer the
domain name to Complainant. Respondent,
in light of his longstanding and intimate relation to the name, refused. Rather than take “no” for an answer,
Complainant repeatedly pressed Respondent to transfer the domain name, and then
made an unsolicited
offer to purchase the domain name for a token sum. Although Respondent refused this offer,
Complainant, who was also Respondent’s employer at that time, continued to
press Respondent
to sell the name.
Respondent, not wishing to sell the domain name and hoping to discourage
further offers to purchase it, responded with the admittedly
high offer of $1.5
million. At this point, Complainant,
hoping to take that which it could not buy, threatened Respondent with legal
action and simultaneously
offered to purchase the domain name for $20,000,
demanding a response by February 14, 2002.
Respondent answered that he had no wish to sell the domain name.
18. Respondent never had any intention of
selling the domain name and never made a bona fide offer to sell the domain
name. Indeed, Respondent repeatedly
refused unsolicited offers to purchase the name, and only responded with the
offering price of $1.5
million to discourage Complainant. Complainant cannot establish that Respondent
registered or used the domain name in bad faith, and the Complaint must,
therefore, fail.
C. Additional Submissions – Complainant
1. Complainant is the owner of two,
incontestable, United States Federal trademark registrations for its mark
OFFICIAL AIRLINE GUIDE,
which are prima
facie evidence of Complainant’s ownership of, and the right to use,
Complainant’s mark.
2. Complainant did select, use and promote
a corporate identity. Complainant had a
corporate identity program and ad campaign around its corporate identity
OAG. However, establishing that
Complainant had a corporate brand, and promoted that brand, does not prove
Complainant abandoned use of
all of its registered trademarks.
3. There is no validity to Respondent’s
contention that because Complainant changed its corporate identity, it gave up
its right to use
its registered trademark.
It is well established that a company may have more than one trademark.
4. Respondent’s allegations of abandonment
are improper in this forum, given that Complainant holds incontestable federal trademark
registrations
for the mark claimed by Complainant, and that Respondent has had
ample opportunity to pursue legitimate claims of abandonment in
the United
States Patent & Trademark Office.
5. There is substantial recognition that
Complainant’s mark enjoys in the marketplace, and there is great likelihood
that third parties
will be confused by Respondent’s mere addition of an “s” to
Complainant’s trademark. The
substantial recognition enjoyed by Complainant in its mark illustrates the
weakness of Respondent’s abandonment claim.
Complainant’s use of its corporate identity has not diminished
third-party recognition of Complainant’s trademark OFFICIAL AIRLINE
GUIDE. Third parties clearly associate Complainant
as the source of goods and services under Complainant’s OFFICIAL AIRLINE GUIDE
mark.
6. Respondent’s claim of legitimate use of
Complainant’s registered trademark hinges on Respondent’s status as a former
employee of Complainant. However, there
is no support for Respondent’s proposition that an ex-employee obtains a
property right in the former employer’s trademarks.
7. The registration of domain names, by
former employees, which contain the trademarks of their former employers, is
evidence of bad
faith.
8. Whether or not Respondent desires to
create a “neutral” forum for discussion and meeting by former employees of
Complainant does not
change the fact that Respondent has not done so. Respondent has held the domain name since
May 2000, a period of over 2 years.
During that period, Respondent has either not used the domain name or
created a website saying he hopes to create a website. Neither of these activities are sufficient
to demonstrate that Respondent has become associated with the domain name, or
has done
anything more than merely hold the domain name. Respondent can have no rights or legitimate
interest in the domain name under these circumstances.
9. Assuming that Respondent’s stated
desire for creating a website for communication between the former employees of
Complainant to be
truthful, this desire does not grant Respondent the right to
confuse and mislead Complainant’s customers.
10. Respondent’s first communications
regarding his willingness to sell the domain name to Complainant was by
handwritten note dated August
22, 2001.
As stated by Respondent, “This is a business deal – nothing more nothing
less.” Respondent then actively engaged
in price negotiations related to the domain name over a series of months. When Respondent’s demand for $1.5 million
was rejected by Complainant, Respondent threatened to attempt a cancellation of
Complainant’s
federal trademark registrations, and dropped his demand to
$750,000. Respondent’s demonstrated
willingness to negotiate, threaten, and reduce his selling price is
inconsistent with Respondent’s belated
clam that he never made a serious offer
to sell the domain name to Complainant.
11. Complainant has at all times acted fairly
and openly with Respondent. Complainant
first offered Respondent $5,000 for the domain name, a sum far in excess of
Respondent’s $200 - $300 out-of-pocket costs.
Respondent has been offered by Complainant as much as $20,000 for the
domain name.
D. Additional Submissions – Respondent
In
fairness, the Panel has agreed to review Respondent’s Additional Submission
even though it was untimely. His
contentions are as follows:
1. Complainant has no rights in the mark
OFFICIAL AIRLINE GUIDE and, therefore, has no rights in any trademark
confusingly similar or
identical to the domain name in question. In his Response, Respondent has demonstrated
Complainant’s deliberate and purposeful abandonment of the mark, including
specific directives
from top officers of Complainant requiring employees of
Complainant to no longer reference OFFICIAL AIRLINE GUIDE as part of Complainant’s
name and a press release informing the world that Complainant was to be known
only as OAG, and that Complainant was “[f]ormerly
Official Airline Guides.” This evidence
of abandonment is more than sufficient to rebut the presumption of validity
provided by Complainant’s trademark registrations,
which, in any case, are
currently subject to cancellation proceedings before the United States Patent
and Trademark Office.
2. Complainant has not used for almost 6
years and still does not use the mark OFFICIAL AIRLINE GUIDE in commerce on any
of its products;
instead, it uses the mark OAG. Thus, Complainant has trademark rights in OAG, but not in
OFFICIAL AIRLINE GUIDE. Complainant’s
distinction between its “corporate identity” and its “brand” is meaningless.
3. Complainant’s repeated reliance on
third-party recognition of its marks is also inappropriate. Complainant offers no legal precedent
whatsoever in support of its third-party recognition theory. This is because trademark rights are dependent
on use, not third-party recognition.
Although third-party recognition may be evidence of an intent to resume
use of a mark when that recognition is coupled with an ongoing
trademark
maintenance program (continued sales of products bearing the mark, sales of
spare or replacement parts for products bearing
the mark, etc.), it is simply
insufficient to maintain rights in a mark when that mark has been affirmatively
and publicly abandoned
together with the solidifying fact of non-use over a
period of almost 6 years. Third-party
recognition cannot cure Complainant’s abandonment of the OFFICIAL AIRLILNE
GUIDE mark.
4. Complainant attempts to convince the
Panel that it is without authority to decide whether Complainant has abandoned
its mark. Complainant offers no support
at all for this argument. Indeed,
Complainant overlooks that administrative panels regularly determine questions
of trademark validity in the course of rendering
decisions under the UDRP, as
Complainant’s own cited authority makes plain.
5. Respondent’s right to use the disputed
domain name <officialairlineguides.com> arises through
Complainant’s abandonment of the OFFICIAL AIRLINE GUIDE marks and Respondent’s
subsequent use, not through Respondent’s
status as an ex-employee of Complainant. Respondent’s rights arise through his use of
the domain name in question subsequent to Complainant’s abandonment of the
relevant marks.
6. Respondent
has made a legitimate, noncommercial use of the domain name in question by providing
a neutral discussion forum for former
employees of Complainant’s corporate
predecessor. Complainant mistakenly
states that Respondent “has either not used the domain name or created a
website saying he hopes to create
a website.”
In making this assertion, Complainant misrepresents the facts by
ignoring the evidence supplied by Respondent showing the initial
“message
board” format of the <officialairlineguides.com> site. Respondent has used the domain name in
question, albeit in an unsophisticated fashion, for a legitimate noncommercial
purpose.
7. Complainant has misrepresented the fact
regarding settlement negotiations. On
or around July 28, 2001, Complainant made the first offer to take over the
domain name from Respondent. By August
10, 2001, Complainant had made an unsolicited offer to purchase the domain name
from Respondent. The “handwritten note”
to which Complainant has referred is in fact the notes made by Respondent
during a face-to-face meeting with
Complainant’s agent Bob Bruce and
subsequently given to Mr. Bruce, a fact made clear by the notations at the top
of the page on Respondent’s
copy of these notes. It is not a demand letter or offer to sell, but merely an
acknowledgment that Respondent bore no grudge against Complainant and would
consider entering into settlement negotiations. Using Respondent’s willingness
to negotiate as evidence of Respondent’s bad faith
is fundamentally
illegitimate and unfair, as well as a violation of the Federal Rules of
Evidence. (F.R.E. 408.) Respondent only negotiated with Complainant
after receiving an unsolicited offer to purchase the domain name, and such an
unsolicited
offer cannot be evidence of bad faith. Complainant cannot prove bad faith in this case, and the
Complaint should be denied.
DISCUSSION, FINDINGS AND
CONCLUSIONS
The
foundation upon which Respondent seeks to establish his claim to the disputed
domain name is that Complainant has abandoned its
common law mark OFFICIAL
AIRLINE GUIDES and its federally registered mark OFFICIAL AIRLINE GUIDE.
It
appears that Respondent has filed two Petitions for Cancellation with the
United States Patent and Trademark Office with respect
to Complainant’s
registrations 1314556 and 0546542.[1]
Thus,
at the outset the Panel is confronted with the question as to whether it should
defer to the pending proceeding in the United
States Patent and Trademark
Office.
This
is not a primary jurisdiction doctrine problem.[2] Nevertheless, the advantages of
administrative expertise and the uniform application of the law could justify
deference.
Moreover,
there are additional concerns. To
determine whether there is “abandonment,” first, it must be ascertained what
burden of proof is required. Next,
there must be considered the Lanham Act’s rebuttable presumption of
abandonment. Finally, what must the
trademark owner prove to rebut the charge of abandonment?[3]
The
courts have differed on whether the burden of proof for abandonment is
“preponderance of the evidence” or “clear and convincing
evidence,” a much
stricter standard. The former standard
is utilized by the Federal Circuit with respect to cancellation proceedings
before the Trademark Board, but the
majority of courts have required the latter
standard.[4]
The
courts also disagree on the effect of the lack of use for three years
presumption.[5] Some courts take the position that, when
triggered, the burden of proof shifts to the trademark owner to prove lack of
abandonment. Other courts have held
that the presumption only shifts the burden of going forward with the evidence,
the ultimate burden of proof
remaining with the party charging abandonment.[6]
With
respect to the proof required of the trademark owner to rebut the charges of
abandonment, the courts again differ. A
trademark owner, however, clearly may defend by demonstrating an intent to
resume the commercial use of the mark.[7]
The
Panel has concluded that it will decide this matter and not defer to the United
States Patent and Trademark Office. The
Panel also will apply the lesser standard of proof, i.e., “the preponderance of the evidence” in the interest of
consistency with the United States Patent and Trademark Office. Finally,
it
will require Complainant to demonstrate that it has not abandoned its marks, i.e., it has never abandoned its marks
and/or it has the intent to resume commercial use of its marks.
The
Panel does not believe that Respondent has met his lesser burden of proving
abandonment, even with the help of the three-year
presumption contained in 15
U.S.C. §1127.
Nevertheless,
assuming, arguendo, that the burden
has been carried by Respondent, there was no abandonment because of
Complainant’s overwhelming evidence that the
goodwill symbolized by the mark
did not dissipate during the period of alleged non-use.
Professor
McCarthy states[8] (and the
Panel concurs):
In the author’s opinion, it is error to
give greater weight to the non-user’s subjective intent than to the marketplace
perception
of customers. While both
aspects are relevant to the ultimate determination of whether an abandonment
has taken place, where the firm claims that
it had an intent to resume use and
has some evidence in support, the primary emphasis should be on the degree to
which customers
still recognize the mark, for it is this which will result in a
likelihood of confusion. Consumers know
nothing of the state of mind of the former trademark user. But they may well mistakenly think that a
new use of that mark by another is a renewed use by the former user. While the state of mind of both the former
user and the purchasing public are both important, in a close case, the state
of mind of
the public should prevail.”[9]
The
Panel, accordingly, has determined that Complainant’s marks were not abandoned.
Having
so decided, we next turn to the three requirements of Paragraph 4(a) of the
Policy.
Paragraph 15(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (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 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.
Identical and/or Confusingly Similar
The
Panel finds that the disputed domain name is identical to Complainant’s common
law mark OFFICIAL AIRLINE GUIDES and is nearly
identical to Complainant’s
federally registered mark OFFICIAL AIRLINE GUIDE. Complainant has been using its mark OFFICIAL AIRLINE GUIDE for
approximately 53 years and its product has long been known as the “bible”
of
the travel industry.[10]
Rights or Legitimate Interest
By
virtue of the Panel’s determination that Complainant’s marks were not
abandoned, Respondent has no rights or a legitimate interest
in the disputed
domain name.
In
any event, the Panel has further determined that Respondent has made no use of
the domain in connection with a bona fide offering
of goods or services. Respondent’s website currently states that
someday, maybe, he’d like to do something with the site. Respondent’s prior website contained
commentary regarding Complainant which was false and misleading. Since Respondent has been notified by
Complainant that Complainant believes Respondent is infringing Complainant’s
trademarks, Respondent’s
current website is nothing more than an ill-disguised
attempt to justify Respondent’s non-use of the domain name. Therefore, Respondent is not making a bona
fide offering of goods and services under Policy Paragraph 4(c)(i), or a
noncommercial
or fair use of the domain under Policy paragraph 4(c)(iii).[11]
The
Panel further has determined that Respondent’s offer to sell the domain name
for exorbitant amounts is evidence that Respondent
does not intend to make a
noncommercial or fair use of the domain name.[12]
Registration and Use in Bad Faith
The
Panel has determined that Respondent acquired the domain name in question for
the primary purpose of selling the domain name registration
to Complainant for
valuable consideration far in excess of Respondent’s out-of-pocket costs. Respondent initially offered to sell the
domain name to Complainant for $1.5 million.
He subsequently reduced his offer to sell to $750,000, a sum that
remains far in excess of Respondent’s out-of-pocket costs.[13]
Credibility
is difficult to ascertain where there is no confrontation or cross-examination. We must rely on reasonable inferences drawn
from the evidence.
Thus,
Respondent has stated that Respondent simply wants to create a place for former
employees of Complainant to stay in touch.
Respondent’s actions, however, demonstrate the falsity of this
contention. Complainant has offered to
consent to Respondent’s use of other domain names, which accurately reflect
Respondent’s target audience,
without confusing Complainant’s customers or
harming Complainant’s reputation. Most
recently, Complainant offered to consent to use of the domain name
<officialairlineguidesalumni.com>.
Respondent, although stating this is the group he is trying to reach,
has rejected Complainant’s offer.
DECISION
Based
on the above findings and conclusions, and pursuant to Rule 4(i), it is decided
that the domain name <officialairlineguides.com> registered by
Respondent Mark Nelson, be and the same is ordered, transferred to
Complainant OAG Worldwide, Inc.
IRVING H. PERLUSS, Panelist Presiding
Dated: April 22, 2002
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