DECISION

Experimental Aircraft Association (EAA) v. EAA.COM

Claim Number: FA0310000206309

PARTIES

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.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <eaa.com> registered with Tucows, Inc.

PANEL

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.

PROCEDURAL HISTORY

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.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

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.

FINDINGS

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.

DISCUSSION

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.

Identical and/or Confusingly Similar

The domain name <eaa.com> is identical to Complainant’s mark, EAA.  Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

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.

Registration and Use in Bad Faith

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.

DECISION

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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