DECISION

Container Research Corp. v. Dan Markovic

Claim Number: FA0409000328163

PARTIES

Complainant is Container Research Corp. (“Complainant”), represented by John T. Manion, P.O. Box 159 Glen Riddle, PA 19037.  Respondent is Dan Markovic  (“Respondent”), 563 Nisbet Court, Mississauga, Ontario, L5R1Z4 Canada.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <aerodek.com>, registered with Stargate.com, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Paul M. DeCicco as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 15, 2004; the Forum received a hard copy of the Complaint on September 20, 2004.

On September 16, 2004, Stargate.com, Inc. confirmed by e-mail to the Forum that the domain name <aerodek.com> is registered with Stargate.com, Inc. and that the Respondent is the current registrant of the name.  Stargate.com, Inc. has verified that Respondent is bound by the Stargate.com, 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 23, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 13, 2004 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@aerodek.com by e-mail.

A timely Response was received and determined to be complete on October 12, 2004. The Response was formally deficient as it was delivered in letter format and Respondent failed to comply with ICANN Rule ¶ 5 (b)(viii) by not including language that certifies that all the information contained in the Response was to the best of Respondent’s knowledge complete and accurate.  Therefore, the Panel is under no obligation to accept the deficient Response.  See Schott Glas v. Necschott, D2001-0127 (WIPO Mar. 14, 2001). On the other hand, finding the Response to be inadmissible in the instant matter because of formal deficiencies would be onerous and not in the interest of justice given that Respondent is without counsel, is relatively unsophisticated, and the formality might have been cured had Respondent been aware of the Rule 5 requirement. See Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“Ruling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process."). Therefore, the Panel will consider the Response.

 

On October 19, 2004 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contents as follows:

AERODEK is a registered trademark of Container Research Corporation (CRC). CRC registered its trademark with the U.S. Patent and Trademark Office on June 11, 2002 for the stylized version of the word “Aerodek,” Reg. No. 2,578,263 and August 27, 2002 for the block lettering version of the word “Aerodek,” Reg. No. 2,612,350. CRC started using the name AERODEK in December 2001.  The name appeared officially on the CRC web page in 2002. The name was developed by CRC as a trade name for a metal scaffolding system specifically designed for use in aircraft maintenance.

In August 2003, Respondent registered the domain name <aerodek.com>. Respondent has no rights to the domain name <aerodek.com>.  Respondent’s registration was more than one year after CRC began using the trade name AERODEK on its website and one year after the registration of the Trademark with the U.S. Patent and Trademark Office.  Respondent’s web page associated with the domain name was nothing more than a shell with an indeterminate purpose.  When contacted by telephone and email in November 2003 Respondent did not specify the business purpose of his company nor how he decided on the name “Aerodek.”

On August 30, 2004, according to the Stargate.com, Inc “Who is” page Respondent renewed his registration of the domain name despite having knowledge of the registered trademark and that he no longer had a web page associated with the domain name.  Respondent’s purpose of renewing the domain name was to deny Complainant from acquiring the domain name or to attempt to sell the domain name at an extraordinary price.

                       

Respondent made no use of the domain name in connection with a bona fide offering of goods or services prior to the notice of dispute.  The web page associated with the domain name <aerodek.com> had no known purpose and was nothing more than a shell. The statistics taken from the web page in December 2003 indicate only 466 page views since September, 2003.  Most, if not all, were CRC employees, representatives, or contractors attempting to identify a purpose of the web page and to formulate a response.  As of the date of this Complaint the web page is non-functioning.  Respondent, whether in emails or in telephone conversations, was not clear of his company’s intended services or products.  The web page had a notice that a “Plan of Action” meeting on October 1, 2003, well after the registration of the domain, indicating they still had not determined a purpose.  Complainant cannot find a bona fide offering of goods or services under the name Aerodek by Respondent or his company.

It is highly unlikely that Respondent, or his company could ever have been known in any industry by the name Aerodek. Upon contact in November 2003 by CRC, Respondent admitted that the company he formed was only in business since late September 2003. According to the web page, when it functioned, two employees were hired on September 22, 2003 and reportedly had a plan of action meeting on October 1, 2003. 

 

Respondent did not make a legitimate non-commercial or fair use of the domain name.  Respondent placed a value of $3,500.00 on the <aerodek.com> domain name.  Respondent’s intent, presumably, was to make money with his business. Respondent’s original out of pocket expenses could have been no more than $10.00USD. Respondent is not making a legitimate noncommercial or fair use of the domain name. 

Respondent had registered the <aerodek.com> domain name in bad faith.  On August 30, 2004 Respondent renewed the registration for the domain name despite knowing of the trademark registration and that his web page <aerodek.com> was no longer in use.  Complainant contends Respondent’s purpose for renewing the domain registration was to deny Complainant the domain name or charge Complainant or a competitor consideration in excess of the out of pocket costs directly associated with the domain name.  The original cost for the registration through “Stargateinc.com” was under $10.00USD.  Complainant contacted Respondent before any legitimate costs could be added to the basis of the domain name.  The web page when operating was nothing more than a shell not containing any real content or graphics.  The product or services to be offered by Respondent’s company were not identifiable by the web page or in conversations.  Respondent’s costs at the time of the original contact could be no more than a single year registration.  Respondent’s original registration could be not more than $10.00.  Respondent’s total cost at the date of the Complaint could be no more than $20.00, the original filing and the renewal fee. CRC offered $1,500.00 which was rejected without consideration. Respondent, however, demanded $3,500.00 and would not negotiate down from that amount.  The circumstances, renewal when a dispute is known and having no legitimate use for the domain and demanding an unreasonable profit on expenses, indicates a bad faith registration.                

Respondent’s demand for $3,500.00 when the cost incurred for the domain name could have been no more than $10.00 is a circumstance that indicates Respondent purchased the domain name for the purpose of reselling to CRC or one of its competitors. The circumstances of Respondent’s demand for an exorbitant profit for no investment of capital indicates Respondent was truly intent on simply selling the domain name to CRC or its competitors.  The renewal of the registration without any objectively ascertainable reason except denying CRC the ability to register the name or the sale of the domain to CRC indicates Respondent’s intent to not let the domain name go without making an inordinately high profit.

Respondent renewed the registration for the <aerodek.com> domain name despite no longer operating the site nor making any offer to transfer the domain to CRC for a reasonable price. Respondent’s renewal was nothing more than an attempt to deny CRC from acquiring the domain or force an extortionist’s price for the domain.  Respondent has not contacted CRC or renewed any negotiations since Complainant’s last contact in late 2003.

B. Respondent

Respondent contends as follows:

Respondent registered the at-issue domain name without knowledge of Complainant’s patent rights in the domain name and may use the domain name in any way so long as it does not infringe Complainant’s patent rights.

Respondent does not have a registered business of any value with respect to the website.

Complainant has had ample time to register the domain name prior to Respondent’s registration thereof.

Respondent registered the name for personal and aesthetic reasons in order to develop programming skills while a college student. Respondent is a college student pursuing a technical degree and uses the domain name to reference a website to test programming skills. The website was not meant to be commercial nor to attract traffic from the general public.

Respondent never intended to sell the domain name. Complainant contacted Respondent in an intimidating manner. Complainant made an offer of zero dollars as a means to get Respondent to suggest a dollar amount that he would accept to transfer the domain name. Respondent offered a number to stop Complainant from further threats.  Respondent does not wish to transfer the domain name and has no intentions to transfer it to Complainant’s competition (whomever that may be) or anyone else.

FINDINGS

· Complainant has registered trademark rights in the mark AERODEK.

· Complainant’s use of the mark in commerce predates the use of Respondent’s domain name.

· Respondent was unconcerned that Complainant had rights in the trademark AERODEK at the time he first registered the at-issue domain name.

· Complainant contacted Respondent in an attempt to get him to transfer the domain name by offering Respondent $1,500 to complete the transfer.

· Respondent made a counter-offered to transfer the domain name for $3,500. The amount was in excess of his out-of-pocket investment in the domain name.

· Complainant allowed the $3,500 offer to lapse. The offer and demands were made in the context of an offer of compromise.

· Respondent re-registered the at-issue domain name in August of 2004.

· Respondent used the domain name for a non-commercial website and for educational purposes to the exclusion of Complainant.

· The mark AERODEK is not immediately recognized as being descriptive of a product or service.

· Respondent offers no substantive explanation as to how Respondent came to select “Aerodek” to be used as a domain name.

DISCUSSION

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

Complainant has established rights in the AERODEK mark through registration with the U.S. Patent and Trademark Office (Reg. Nos. 2,578,263 and 2,612,350 registered on June 11, 2002 and August 27, 2002, respectively).  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002). Respondent has made no attempt to refute that Complainant has rights in such mark. See also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002).

The domain name fully incorporates the mark and merely adds the generic top-level domain “.com.”  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000). Respondent’s <aerodek.com> domain name is therefore identical to Complainant’s mark.

Rights or Legitimate Interests

Complainant contends Respondent is not commonly known by the <aerodek.com> domain name and therefore, pursuant to Policy ¶ 4(c)(ii), Respondent lacks rights and legitimate interests in the domain name.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000). Respondent does not refute that is not commonly know as Aerodek. 

Respondent claims that the <aerodek.com> domain name was registered so Respondent could improve his programming skills, i.e. for educational purposes not commercial purposes.  Assuming this is true, Respondent implies that he is using the domain name for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) and therefore has rights and legitimate interests in the domain name.  See Lockheed Martin Corp. v. Etheridge, D2000-0906 (WIPO Sept. 24, 2000); see also Baja Marine Corp. v. Wheeler Tech., Inc., FA 96954 (Nat. Arb. Forum May 17, 2001).

The Panel agrees. There is no evidence that Respondent is using the domain name for any commercial purpose.  There is no indication from the record that Respondent used the website to sell any goods or service, never mind attempt to compete with Complainant. Printouts of Respondent’s website provided by Complainant support Respondent’s claim that the website was used for education purposes. The Panel therefore finds that Respondent had rights or interests in the at-issue domain name pursuant to Policy ¶ 4 (c)(iii).

Registration and Use in Bad Faith

Complainant claims that Respondent attempted to sell the <aerodek.com> domain name registration for more than Respondent’s out-of-pocket costs and therefore registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(i).  See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001). However, in the instant case Complainant initiated contact with Respondent and demanded that Respondent transfer the domain name for $1,500. Complainant thereby engaged Respondent in an attempt to have the at-issue domain name transferred and to settle its dispute with Respondent. Respondent replied with a counter-offer of $3,500 ostensible to end the dialog with Complainant.

Complainant cannot prod Respondent into offering a transfer price and then invoke Policy ¶4(b)(i) to show Respondent’s bad faith.  See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002); see also Puky GmbH v. Ignatius Agnello, D2001-1345 (WIPO Jan. 3, 2002). Additionally, the parties appear to have been engaging in settlement discussions at the time of the exchange. Offers of compromise should be excluded from consideration as evidence of bad faith pursuant for the same rational which grounds Federal Rule of Civil Procedure 408. See generally Motorola, Inc. v. NewGate Internet, Inc., WIPO D00-0079, pp. 5-10 (Apr. 20, 2000) (dissenting to the majority on the basis of FED. R. EVID. 408); Milwaukee Radio Alliance, L.L.C. v. WLZR-FM LAZER 103, WIPO D00-0209, p. 4 (June 5, 2000); Netvault Ltd. v. SV Computers and Walia, WIPO D00-0095 pp. 7-9 (July 19, 2000) (dissenting).

Complainant also asserts that after notifying Respondent of Complainant’s rights in the mark Respondent re-registered the <aerodek.com> domain name. Complainant contends that Respondent re-registered the domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent had actual knowledge of Complainant’s rights in the mark when the domain name was re-registered.  See Houlberg Dev. v. Adnet Int’l, FA 95698 (Nat. Arb. Forum Oct. 27, 2000). Whether or not re-registration of a domain name in light of knowledge acquired after the original registration of another’s claim of right in a domain name constitutes bad faith has been discussed in numerous decisions. This Panel believes the better rule is to look only to the initial registration when considering a Respondent’s knowledge of Complainant’s trademark rights. See Aetna Inc. v. Jacoby Partners 1999-2, L.L.C., FA 125816 (Nat. Arb. Forum Nov. 22, 2002); see also Hudson v. Ted Machi & Assocs., FA 133759 (Nat. Arb. Forum Jan. 21, 2003).

Finally, in support of its claim that the domain name was registered and used in bad-faith, Complainant asserts that Respondent’s <aerodek.com> domain name does not resolve to a developed website and therefore Respondent has passively held the domain name.  Passive holding of a domain name identical to another’s mark may be evidence that the registrant registered and used the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000); see also Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000). But as discussed elsewhere herein, Complainant proffers evidence that the domain did resolve to a website. Furthermore, a domain name may be “in use” without resolving to a website. For example, domain names may be used to identify domain name servers (DNS), to reference data stores, as well as having other uses besides referencing a website.

Respondent asserts that he is merely using the <aerodek.com> domain name for educational purposes and not for commercial gain.  Respondent contends that he did not register or use the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001); see also MatchMaker Int'l Dev. Corp. v. Kaiser Dev. Corp., FA 146933 (Nat. Arb. Forum May 9, 2003).  Respondent does not elaborate on how he selected <aerodek.com>.

 At first look, Aerodek appears to be a fanciful name. When used as a search engine term, “aerodek” returns few references. Neither the mark’s sound nor spelling readily suggests a descriptive meaning unless and until we are informed that the mark references Complainant’s proprietary commercial scaffolding deck used to service aircraft. For these reasons the mark does not appear to be one that a registrant would have created independently out of whole cloth. Further, Respondent only denies that he was aware of “Complainant’s patent rights in AERODEK,” but does not assert that he was unaware of the name itself.

The sparse Response begs the question: of all the possibilities why did Respondent pick Aerodek for use as his domain name? It appears that any name at all would have served Respondent’s admitted purpose of using the domain name for educational pursuits. Nevertheless, Respondent picked Complainant’s mark for his domain name.

While it would have been simple for Respondent to shed light on what inspired him to choose the at-issue domain name, he has not done so. In his one page letter Response, Respondent appears to dance around important questions regarding the genesis of the at-issue domain name. He only mentions that the domain was registered for “personal and aesthetic reasons.”

Once a prima fascia case of bad faith registration is made out as appears to be the case here, the burden shifts to Respondent to refute the claim. (citations omitted). While Respondent may have a reasonable good faith explanation for choosing the at-issue domain name, the Panel cannot speculate or invent a reason on Respondent’s behalf. The Panel is thus moved by the implication that the domain name was registered because of Complainant’s mark, rather than in spite of it.

The fact that Complainant’s registered trademark is somewhat fanciful, that it is unlikely that one would pick the domain name without prior knowledge of Complainant’s mark, that there is no readily apparent benign motive to register the particular domain name, all coupled with Respondent’s lack of candor in explaining why he picked Complainant’s mark as a domain name implies that Respondent registered the domain name in bad faith and is using it in bad faith to the exclusion of Complainant.

Respondent’s failure to attempt to credibly explain his rational for registering the at-issue domain name, when that question would be reasonably addressed if Respondent’s actions were benign, implies a bad faith intent on the part of Respondent regarding the original registration and use of the domain name.  However, we find no credible evidence that the domain name is being used in bad faith. As such the Panel finds Respondent registered the domain name in bad faith, but has not used the domain name in bad faith.

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Paul M. DeCicco, Panelist
Dated: November 2, 2004

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