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AeroTurbine, Inc. v. Aero Turbine, Inc. [2004] GENDND 1314 (27 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AeroTurbine, Inc. v. Aero Turbine, Inc.

Case No. D2004-0669

1. The Parties

The Complainant is AeroTurbine, Inc., Miami, Florida, of the United States of America, represented by Amanda Cutler, United States of America.

The Respondent is Aero Turbine, Inc., Stockton, California, of the United States of America, represented by Kirkpatrick & Lockhart, LLP, United States of America.

2. The Domain Name and Registrar

The disputed domain name <aeroturbine.aero> is registered with Domain Bank, Inc. This proceeding is the first UDRP decision by a WIPO Panel for a domain name containing the top-level domain “.aero”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2004. On August 26, 2004, the Center transmitted by email to Domain Bank, Inc. a request for registrar verification in connection with the domain name at issue. On August 30, 2004, Domain Bank, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 31, 2004. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced September 1, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2004. The Response was filed with the Center on September 22, 2004, Geneva time, but on September 21, 2004, at the location of the Respondent.

After clearing potential conflicts of interest, the Center appointed Frederick M. Abbott, David H. Bernstein and Jonathan Hudis as panelists in this matter on October 12, 2004. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant has registered the service mark “AEROTURBINE” on the Principal Register of the United States Patent and Trademark Office (“USPTO”), Reg. No. 2260554, dated July 13, 1999, in International Class (IC) 35 covering “wholesale and retail distributorship of aircraft, aircraft engines, and parts thereof”, and in IC 39 covering “rental and leasing of aircraft, aircraft engines, and parts thereof”, in each case asserting first use in commerce on November 21, 1997.¹ (Complaint, Paragraph 11 & Annex 3.)

Complainant is based in Miami, Florida, USA. Since November 1997, Complainant has used the “AEROTURBINE” mark in commerce in the United States in connection with selling and leasing aircraft, engines and associated components, and servicing engines and their component parts. In 2000, Complainant had annual revenues of $47 million. (Aero Turbine, Inc. v. Aeroturbine, Inc., Order, No. CV- S-01-0532 GEB/PAN, E.D. Cal., filed June 19, 2002, Complaint, Annex 5, atpp. 6-7.)

Complainant is the registrant of the domain names <aeroturbine.com>, <auroturbine.net> and <aeroturbine.org>. The first two of these domain names were secured as the result of proceedings under the Policy unrelated to Respondent. (Complaint, Paragraph 11, and Response, Section III.)

According to the Registrar’s verification response, Respondent is the current registrant of the disputed domain name, <aeroturbine.aero>. According to the Registrar, the record of registration for that name was created on June 26, 2002.

Respondent is a California corporation based in Stockton, California. Respondent is a small family-owned business which was founded in 1978, and which offers goods and services to the aircraft engine industry. The bulk of Respondent’s revenue derives from repair and overhaul operations on military aircraft, engines and parts. (Aero Turbine, Inc. v Aeroturbine, Inc., Order, No. CV- S-01-0532 GEB/PAN, E.D. Cal., atpp. 2-6.) A portion of Respondent’s revenues derives from the servicing of civilian aircraft engines and components. (Id.)

Respondent has used the term “Aero Turbine, Inc.” to identify its services in commerce since 1978. It has neither sought nor obtained federal trademark registration for the term “Aero Turbine, Inc.” (Id. at 6.)

In March 2001, Respondent filed suit in federal district court in the Eastern District of California seeking to enjoin Complainant from use of the AEROTURBINE mark. Respondent was unsuccessful in this action. On summary judgment, the district court held in June 2002, that the doctrine of laches precluded Respondent from enforcing its mark against Complainant’s use of AEROTURBINE, and allowed the parties each to continue use of its “mark”. The court found that the two parties were in sufficiently different lines of commerce that consumers were unlikely to be confused as to their identity. The Court of Appeals for the Ninth Circuit affirmed (Aero Turbine, Inc. v. Aeroturbine, Inc., No. 02-16465, filed August 7, 2003), but did so on different grounds, holding that, because Respondent’s mark “Aero Turbine” was descriptive and because Respondent had offered no evidence of secondary meaning, Respondent’s “mark” was not entitled to trademark protection irrespective of the merits of any laches defense by Complainant.

The Registration Agreement in effect between Respondent and Domain Bank, Inc. subjects Respondent to dispute resolution under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant asserts that it is the holder of a federal trademark registration for the term “AEROTURBINE”, and that such registration is incontestable under Section 15 of the Lanham Act. Complainant also asserts that its mark “has acquired distinction and notoriety and has become an integral identifying mark in association with Complainant’s business.”

Complainant alleges that the disputed domain name, <aeroturbine.aero>, is identical to its mark.

Complainant states that Respondent has no rights or legitimate interests in the disputed domain name because Respondent does not have trademark rights in the term “AEROTURBINE” or “AERO TURBINE”, and that this fact was established by the district court in Aero Turbine, Inc. v. AeroTurbine, Inc., supra, as affirmed by the Court of Appeals, supra.

Complainant argues that Respondent registered and used the disputed domain name in bad faith because it undertook registration shortly after the district court found that Respondent did not have rights in the mark “Aero Turbine”, with knowledge of Complainant’s federally registered mark, and Complainant’s ownership of similar top level domain names.

Complainant states that Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights in its mark was a direct and willful violation of its domain name registration agreement.

Complainant argues that, since Respondent has also registered the domain name <aero-turbine.aero>, which registration Complainant does not contest here, “Respondent will not suffer any adverse consequences if the Complainant’s prayer for relief below is granted”.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to it.

B. Respondent

Respondent asserts that its corporate and trade name “AERO TURBINE” is not confusingly similar to Complainant’s “AEROTURBINE” mark. Respondent states that the district court in Aero Turbine, Inc. v. AeroTurbine, Inc., authorized concurrent use by Respondent of “AERO TURBINE” and by Complainant of “AEROTURBINE” because of differences in businesses of the two parties. Respondent argues that the fact that the disputed domain name is alphabetically identical to Complainant’s mark does not end analysis under Paragraph 4(a)(i) of the Policy; rather a finding of confusing similarity is also required and, here, as found by the district court, consumers would not be confused by Respondent’s continued use of the disputed domain name.

Respondent contends that it has legitimate interests in the disputed domain name under Paragraph 4(c)(i) of the Policy because it used the disputed domain name since June 2002, in making a bona fide offer of goods and services prior to notice of this dispute.

Respondent contends that it has legitimate interests in the disputed domain name under Paragraph 4(c)(ii) of the Policy because it has been commonly known since 1978, by a name almost identical to the disputed domain name, even if has acquired no trademark or service mark rights.

Respondent observes that the court in the litigation between the parties authorized Respondent to continue use of “Aero Turbine”, contrary to Complainant’s assertion that the court determined that it had “no rights” in the term.

Respondent denies that it registered and used the disputed domain name in bad faith. It asserts that: (a) it has made good faith use of its own corporate and trade name; (b) Complainant could have, but failed to, register in the .aero registry for several months prior to Respondent’s registration; (c) Respondent did not register the disputed domain name with intent to sell it to Complainant and has not attempted to do so, nor has it attempted to divert or mislead consumers (and there is little chance that consumers will be confused); (d) registration of multiple variants of a corporate name in domain names is common practice and not evidence of bad faith, and (e) knowledge of Complainant’s rights in its mark is not evidence of bad faith because the court did not deprive Respondent of the right to use its name.

Respondent requests the Panel to deny Complainant’s request for transfer of the disputed domain name.

6. Discussion and Findings

Registration and use of a .aero top level domain identifier is “restricted to people, entities and government agencies which: (1) provide for and support the efficient, safe, and secure transport of people and cargo by air; and (2) facilitate or perform the necessary transactions to transport people and cargo by air.”² Eligibility of a party to register on the .aero registry is subject to challenge under the Charter Eligibility Dispute Resolution Policy (CEDRP).³ Although Complainant appended the CEDRP Rules to its Complaint, this dispute does not involve a challenge to eligibility under the CEDRP. Rather, the content of Complainant’s Complaint makes it clear that the Complainant is challenging Respondent’s alleged bad faith use and registration of a domain name that is identical or confusingly similar to its trademark, and in which Respondent allegedly lacks any rights or legitimate interest. Such disputes, even if involving domain names in the .aero gTLD, are subject to resolution under the Policy.⁴ Respondent has not challenged the applicability of the Policy to this dispute. The Panel is properly constituted under the Policy and has jurisdiction to decide this dispute.

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this dispute.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

In this case, the Respondent has filed a timely Response. The Panel is satisfied that the Respondent had adequate notice of the proceedings.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain name; and

(iii) respondent’s domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has registered the mark “AEROTURBINE” on the Principal Register at the USPTO and has used that term in commerce since November 1997 (see Factual Background, supra). Registration on the Principal Register confers a presumption of validity of the mark on behalf of Complainant.⁵ Respondent has not challenged Complainant’s rights in the AEROTURBINE mark as such. In prior federal court proceedings between Complainant and Respondent, the district court accepted that Complainant had rights in this descriptive mark.⁶ The Court of Appeals for the Ninth Circuit did not disturb the district court’s findings with respect to Complainant’s rights in the mark.⁷ For purposes of this proceeding, the Panel is satisfied that Complainant has established rights in the descriptive mark “AEROTURBINE”.⁸

Respondent has argued that the disputed domain name <aeroturbine.aero> is not identical or confusingly similar to Complainant’s AEROTURBINE mark. As discussed below, Complainant has failed to establish that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant has also failed to establish that Respondent acted in bad faith. Because Respondent prevails in this proceeding on these other grounds, the Panel need not address Respondent’s contention regarding comparison of the mark to the disputed domain name.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making 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 at issue.” (Policy, paragraph 4(c)).”

Respondent registered the disputed domain name on June 26, 2002, one week after an order by a federal district court was issued authorizing concurrent use by Complainant and Respondent of their AEROTURBINE and AERO TURBINE “marks”, respectively. Respondent filed an appeal against the district court decision, evidently still considering that its rights were superior to those of Complainant, notwithstanding the decision of the district court. For two years following the district court decision (and one year following the Court of Appeals decision), Complainant did not notify Respondent that it disputed Respondent’s right to use the term AEROTURBINE in the disputed domain name. Respondent has been in the business of offering goods and services to the military (and later commercial) aircraft sector since 1978, and it has continued to do so under the disputed domain name. Under these circumstances, Respondent has used the disputed domain name in connection with a bona fide offering of goods and services prior to notice of a dispute within the meaning of Paragraph 4(c)(i) of the Policy. Respondent had grounds for a good faith belief that it was entitled to use the term “AEROTURBINE” in a domain name based, inter alia, on the decision by the district court. On this basis, Respondent has a legitimate interest in the disputed domain name.

In any event, Complainant does not dispute that Respondent has been doing business under the name “AERO TURBINE” since 1978, or that Respondent’s customers have known it by, and continue to know it by, that name. Respondent is therefore commonly known by the domain name, even though it may have acquired no trademark or service mark rights in that name, within the meaning of Paragraph 4(c)(ii) of the Policy. Thus, regardless of the courts’ decisions concerning Respondent’s trademark rights, Respondent unquestionably has rights or legitimate interests in the disputed domain name under the Policy.

Complainant has failed to demonstrate that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant has failed to establish that Respondent has engaged in abusive domain name registration and use.

C. Registered and Used in Bad Faith

Because Complainant has failed to establish the second element necessary for a finding of abusive domain name registration and use, the Panel need not make a determination as to whether Respondent registered or used the disputed domain name in bad faith under Paragraph 4(b) of the Policy. The Panel finds, however, that Complainant has presented no evidence that Respondent registered the disputed name with the intention of selling or offering it for sale to Complainant or any third party. Complainant has not established that Respondent registered the name to prevent Complainant from doing so. Rather, Respondent registered the disputed domain name for its own business purposes. The fact that Respondent has registered two minor variations of the name does not establish bad faith intent in this context since multiple registrations by persons with legitimate interests in a term are a commonplace business practice. There is no evidence on the record of this proceeding that Respondent registered and used the disputed domain name to interfere with the business of Complainant. Complainant has not presented evidence that Respondent has attempted to use the disputed domain name to intentionally divert Internet users to its website for commercial gain by causing confusion as to source, sponsorship or affiliation of Complainant with Respondent’s business. The Panel has considered Complainant’s other allegations of bad faith on the part of Respondent and finds that those allegations lack merit.

The Panel notes that its decision in this matter is limited to the dispute itself, as reviewed under the specific criteria of the Policy and the expedited record before it. As a decision under the Policy, it is without prejudice to any further judicial proceedings between the parties.

7. Decision

For all the foregoing reasons, the relief requested in the Complaint is denied.

Frederick M. Abbott Presiding Panelist
David H. Bernstein Panelist	Jonathan Hudis Panelist

Dated: October 27, 2004

¹ Complainant has filed a Declaration of Use under Section 8 of the Lanham Act. Complainant alleges that its mark is incontestable under Section 15, although the Panel has been unable to find any evidence of a Section 15 filing on the USPTO website.

² .aero Charter, ICANN, TLD Sponsorship Agreement: Attachment 1 (.aero), posted November 20, 2001, available at http://www.icann.org/tlds/agreements/aero/sponsorship-agmt-att1-20nov01.htm.

³ See Challenges to Registrations in Violation of Charter, ICANN, TLD Sponsorship Agreement: Attachment 12, posted 13 October 2001, available at http://www.icann.org/tlds/agreements/sponsored/sponsorship-agmt-att12-13oct01.htm.

⁴ .aero Domain Management Policy, Version 5.2, 26 Apr. 2004, at paragraph 19, available at http://www.information.aero/policy/aerodmp.htm.

⁵ 15 USCS § 1057(b). See, e.g., Avery Dennison v. Sumpton, [1999] USCA9 436; 189 F.3d 868 (9^th Cir. 1999).

⁶ See Aero Turbine, Inc. v Aeroturbine, Inc., Order, No. CV- S-01-0532 GEB/PAN, E.D. Cal., filed June 19, 2002, Complaint, Annex 5.

⁷ The Court of Appeals determined that Respondent failed to establish secondary meaning for its descriptive term “AERO TURBINE” and, as a consequence, the district court should not have analyzed the dispute as between senior and junior holders of rights in a mark. Aero Turbine, Inc. v. Aeroturbine, Inc., No. 02-16465, filed August 7, 2003. The Court of Appeals did not make any relevant finding with respect to Complainant’s rights in the “AEROTURBINE” mark.

⁸ The Panel does not find it necessary to consider Complainant’s contention that the mark is incontestable.