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Textron, Inc. v. Serge Orlov [2004] GENDND 1361 (12 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Textron, Inc. v. Serge Orlov

Case No. D2004-0635

1. The Parties

The Complainant is Textron, Inc., Providence, Rhode Island, United States of America, represented by Holland & Knight, LLP, United States of America.

The Respondent is Serge Orlov, Vienna, Austria.

2. The Domain Name and Registrar

The disputed domain name <textron.org> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2004. On August 16, 2004, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On August 17, 2004, OnlineNic, Inc. d/b/a China-Channel.com 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 23, 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 on August 24, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was September 13, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2004.

The Center appointed Guillermo Carey as the sole panelist in this matter on September 24, 2004. The Panel finds that it was properly constituted. 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

The Complainant is Textron Inc., an international, global and multi-industry company founded on year 1923, which manufactures and provides services for aeronautical products, fastening systems, wire and cable installation systems, engineered products, hydrocarbon processing products, and industrial and finance operations.

The Complainant is one of United States’ top 200 companies, as ranked by Fortune Magazine (Complaint, Exhibit E and F), with approximately 43,000 employees in more than forty countries. The revenues of the Complainant are approximately US$10 billion, out of which 38 percent comes from outside the U.S. (Complaint, Exhibit H and J).

In accordance with information provided in the Complaint and as verified by this Panel directly from the Better Who Is database, the Respondent is Serge Orlov, an Austrian citizen, who registered the domain name <textron.org> on March 23, 2004. He has neither connection nor association with the Complainant.

The Complainant owns the trademark TEXTRON in the United States and over forty countries worldwide. In accordance with the certificate issued by the U.S. Patent and trademark Office (Complaint, Exhibit J), the TEXTRON mark is protected by the Complainant with valid and enforceable trademarks for a wide variety of products since 1978, under the registration numbers 1090806, 1090737, 1066630, 1090704 and 1074863. Furthermore, according to a certificate issued by the Patent Office of Austria, the Complainant registered the TEXTRON trademark in Austria, under Number 177 096, since 1998 (Complaint, Exhibit K).

According to what this Panel could verify in the Who Is of Network Solutions registrar, the Complainant is the proprietor of the domain name <textron.com>, registered on April 13, 1992.

On March 24, 2004, the Complainant sent by e-mail a letter to the Respondent, informing him of Textron’s exclusive rights on the trademark and requesting the Respondent to delete their registration of the domain name <textron.org> under the terms of the registrar agreement.

The Respondent, on the same date, replied refusing to delete this registration and thus, admitted to have registered the domain name for its “own use and parked”, offering to sell it to the Complainant for US$1,500.00 through an escrow service (Complaint, Exhibit P). This mail was signed by someone who supposedly acted on behalf of the Respondent, using the alias “Donald S”.

Subsequently, Textron requested the Respondent to provide the full identification of “Donald S”, and information regarding Serge Orlov, the registrant of the domain name, and his relationship with the Respondent. In response, “Donald S” refused to provide any information, offering again the sale of the disputed domain name (Complaint, Exhibit Q and R).

5. Parties’ Contentions

A. Complainant

The Complainant submits that Complainant has proven each of the three elements set out in Paragraph 4(a) of the Policy:

(i) The Complainant argues that the domain name registered by the Respondent is confusingly similar to the TEXTRON trademark, to which the Complainant holds exclusive trademarks rights.

(ii) The Complainant further alleges that the Respondent has no legitimate rights regarding the name Textron, as the Respondent does not owe any trademark registrations, and is not commonly known by the name Textron. Thus, the Complainant argues that TEXTRON is a commercial mark created by the Complainant, which refers specifically and exclusively to Textron, Inc., and its products. Finally, the Complainant states that the Respondent is not making and has not made any bona fide use of the domain name offering goods or services (Complaint, Exhibit S).

(iii) The Complainant submits that the Respondent both registered and is using the domain name in bad faith. In this regard, the Complainant states that the Respondent has had actual or constructive knowledge of Textron’s well known trademark rights and that he knew or should have known that his registration of the disputed domain name infringed upon the Complainant’s rights.

Additionally, the Complainant states that the Respondent warranted, in the agreement he entered into with the registrar OnlineNIC, that his registration of the disputed domain name would not infringe upon the rights of any third party. Therefore, the Respondent would have failed to conduct a trademark search regarding the availability of the Textron name and to determine whether its domain name breached someone else’s rights. In this regard, the Complainant argues that any search, even elementary, would have revealed that Textron has made commercial use of its trademark for over 55 years in the U.S and over five years in Austria.

The Complainant alleges that, even though the Respondent would have ignored the Complainant existence and reputation, the Respondent acknowledged the Complainant rights in the TEXTRON mark, through the notification letter sent by the Complainant on March 24, 2004 (Complaint, Exhibit N), in which the Complainant requested the Respondent to delete the registration of the disputed domain name, provided that it infringed its trademarks rights. Subsequently, the Respondent, rather than deleting his domain name, refused to delete it and he admitted that he had “parked” the domain name and offered to sell it to the Complainant for US$1,500, a price that exceeded the registration costs, as evidenced in Exhibit P. Therefore, the Complainant states that the refusal of the Respondent to delete the domain name after receiving actual notice of the infringement upon Textron rights, and his attempt to sell the domain name to the Complainant, constitutes bad faith.

Finally, the Complainant argues that the Respondent had deliberately and wrongfully concealed his identity, as the person acting on behalf of the Respondent used the alias “Donald S” in all the correspondence exchanged with the Complainant, who refused to reveal neither his true identity nor his relationship with the registrant of the domain name, Serge Orlov.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Paragraph 4(a) of the Policy states that the Complainant must prove each of the following:

(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark in which the complainant has rights; and

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

(iii) that the domain name has been registered and used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided plain and undisputed evidence indicating its ownership of the TEXTRON trademark rights in the U.S. and in Austria. TEXTRON was registered by the Complainant, among other countries around the world, on 1978 in the United States and on 1998 in Austria. Furthermore, the Complainant registered its domain name <textron.com> on 1992.

In accordance with information provided by the Complainant (Complaint, Exhibit A), and with the search made by this Panel in the Better Who Is database, the Respondent registered its domain name on March 23, 2004. Therefore, the Complainant’s rights in the trademark TEXTRON are prior to the Respondent’s registration of the disputed domain name.

Given that the disputed domain name is identical to the Complainants registered trademark and domain name, the confusion between the Respondent’s domain name and the Complainant’s rights to the TEXTRON trademark is obvious and irrefutable. See, for example, the Administrative Panel Decision in Microsoft Corporation v. Amit Mehrotra, WIPO Case No. D2000-0053 (“The domain name <microsoft.org> is nearly identical to the trademark registered and used by Complainant, MICROSOFT. The only difference between the <microsoft.org> domain name and the MICROSOFT trademark is the suffix ‘.org’ an irrelevant distinction which does not change the likelihood for confusion. The suffix ‘.org’ is meant to distinguish the domain name sites to which they attach as being non-profit organizations. In the same way, the suffix ‘.com’ is meant to distinguish commercial sites… the domain name <microsoft.org> is essentially identical to Complainant’s registered trademark for the purposes of this proceeding”).

This Panel has no hesitation in finding that the disputed domain name is essentially identical and confusingly similar with the Complainant’s registered trademark and domain name. Consequently, the Complainant has satisfied the requirements under Paragraph 4(a)(i).

B. Rights or Legitimate Interests

There is no evidence which shows that the Respondent has any rights or legitimate interests regarding the domain name <textron.org>, nor any evidence that indicates that the Respondent is commonly known by the domain name.

As verified by this Panel, the website of the disputed domain name is not currently in existence (Complaint, Exhibit S). Therefore, it cannot be proved that the Respondent has given a legitimate or fair use to its domain name offering any goods or services.

Moreover, the Complainant has neither authorized nor otherwise licensed the Respondent to use its trademark TEXTRON, nor authorized the Respondent to register any domain name including such trademark.

The Complainant is the owner of a distinctive and famous mark TEXTRON, with market leading operations in aircraft, fastening systems, industrial components, and finance worldwide.

There is undisputed evidence of the acknowledgement of the Respondent of the Complainant’s trademark rights (a notice letter was sent to the Respondent regarding its infringement upon the Complainant’s rights on March 24, 2004; Complaint, Exhibit N). Further, the Respondent refused to delete its domain name, attempting to sell it to the Complainant for US$1,500.

Therefore, the Complainant satisfies the requirements of Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Plain evidence was provided (Complaint, Exhibit N) indicating that the Complainant notified the Respondent on March 24, 2004, of the infringement in which he had incurred by registering the disputed domain name. The Respondent refused to delete its domain name, thus, the Respondent admitted that he had “parked” the domain name and offered to sell it to the Complainant for US$1,500 (Complaint, Exhibit P), concealing his true identity (Complaint, Exhibit Q and R).

Given the worldwide reputation, presence and distinctiveness of the Complainant’s trademark, and the fact that TEXTRON has no specific meaning other than a trademark of the Complainant, created from the words “Tex” and “Tron”(Complaint, Exhibit H), this Panel concludes that the Respondent registered the disputed domain name in bad faith attempting only to profit by selling it and to disrupt the Complainant’s business, creating a confusingly similar domain name.

Therefore, this Panel finds that the Respondent has registered and used the domain name in bad faith, and the Complainant has satisfied the third requirement under Paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <textron.org>, be transferred to the Complainant.

Guillermo Carey
Sole Panelist

Dated: October 12, 2004