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Orbital Engine Company (Australia) Pty Ltd v. Ramazan Goitemir [2004] GENDND 1500 (8 November 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Orbital Engine Company (Australia) Pty Ltd v. Ramazan Goitemir

Case No. D2004-0709

1. The Parties

The Complainant is Orbital Engine Company (Australia) Pty Ltd, Balcatta, Western Australia, Australia, represented by Tom P. Baskovich, Australia.

The Respondent is Ramazan Goitemir, Istanbul, Mecidikoy, Turkey.

2. The Domain Name and Registrar

The disputed domain name <orbitalengine.biz> is registered with 007Names, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2004. On September 3, 2004, the Center transmitted by email to 007Names, Inc., a request for registrar verification in connection with the domain name at issue. On September 8, 2004, 007Names, 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 September 14, 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 September 21, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2004.

The Center appointed Dawn Osborne as the sole panelist in this matter on October 25, 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 an Australian based company originally established to develop and commercialise the Orbital^TM Engine. The Complainant has, from about 1983 onwards, sought and obtained trademark registrations for the word “Orbital” in relation to engines and engine related parts and engine engineering services in several countries around the world including Australia, the US, Great Britain, Germany, France and Italy.

The Respondent registered the Domain Name on July 16, 2004.

5. Parties’ Contentions

5.1. Complainant

The submissions made in the Complaint can be summarized as follows:

The Complainant (“Orbital”) is an Australian based company, and was incorporated as Orbital Engine Company Proprietary Ltd (now Orbital Engine Company (Australia) Pty Ltd) in 1973. Orbital was originally established to develop and commercialise the Orbital^TM Engine. In 1991, Orbital was listed on the New York Stock Exchange. Over the intervening years, Orbital has developed, in addition its original Orbital^TM Engine, over 200 engine related inventions for which patent applications and patents have been registered around the world.

Orbital has entered into technology license agreement with many of the leading engine and vehicle manufacturing companies around the world, including General Motors Corporation (USA) and Ford Motor Company (USA).

Orbital’s patented technologies, commonly referred to as Orbital Combustion Technology^TM, are currently in production in the marine and motorcycle markets internationally.

In addition to the licensing arrangements, Orbital is an engineering service provider and development partner for engine related development to the global engine and vehicle market.

A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The Complainant has, from about 1983 onwards, sought and obtained trademark registrations for the word “Orbital” in relation to engines and engine related parts and engine engineering services in several countries around the world including Australia, the US, Great Britain, Germany, France and Italy. In addition, trademark registrations for the word “Orbital” in combination with a logo have also been obtained. In addition to the trademark registrations in the countries noted above, the Complainant has also attained, through long established usage, a reputation in many other countries with its ORBITAL trademark relating to engine and engine technologies. Furthermore, Orbital is the registered holder of <orbital.biz>, <orbeng.biz>, and <orbeng.com> (the latter being short for “Orbital Engine”) domain name registrations and is commonly known as the “Orbital Engine” company.

In contrast to the Respondent, the Complainant has established long and successful relationships around the world with all of the major engine and vehicle manufactures, has products in the market, and is known for engine related products and services under the ORBITAL trademark.

Therefore, the Complainant firmly believes that the Respondent’s continued use of the Domain Name in question is creating a likelihood of confusion with the Complainant’s own ORBITAL trademark, its own company name – commonly shortened to Orbital Engine Company, and its own “www.orbital.biz” and “www.orbeng.com” websites, as to the source, sponsorship, affiliation, or endorsement of the site or of a product of service on the site.

B. The Respondent has no rights or legitimate interests in respect of the domain name

(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))

The website associated with Respondent’s domain name is clearly of a commercial nature, wherein the Respondent is soliciting partners, licensees or other interested parties to enter into commercial discussions regarding the new engine concept being promoted under the Domain Name. The Respondent’s website further makes reference to “Orbital Engine Group” at the bottom of the webpage, this clearly being a commercial branding strategy. This only adds to the potential deception and confusion as the affiliates, subsidiaries and parent corporations of the Complainant, would understandably also be referred to as the Orbital Engine Group of companies. As mentioned previously, the Complainant believes that the Respondent does not have legitimate right to promote engine developments under the ORBITAL trademark.

To the best of the Complainant’s knowledge, there is no evidence:

- of the Respondent’s 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;

- that the Respondent (as an individual, business, or other organization) has been commonly known by the domain name (it appears the that Respondent predominately operates under the “Bass Inter Group” company name and has only recently been promoting the “Orbital Engine Group”);

- that the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

C. The domain name was registered and is being used in bad faith

(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))

It is the Complainant’s belief that by using the subject Domain Name (with or without the further references to the “Orbital Engine Group”), the Respondent is intentionally attempting to attract for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Respondent was obviously aware of the existence and nature of the Complainant as, virtually immediately after the Respondent registered the subject Domain Name, an approach was made to the Complainant by way of an e-mail dated July 12, 2004, soliciting Orbital’s interest in the new engine development. A copy of the e-mail as received by Orbital is attached as Annex 4 to Complaint. In pre-Complaint discussions, wherein the Complainant pointed out the conflict with the Domain Name and sought to resolve the matter amicably, the Respondent replied by stating “… your employees should have taken care in advance about purchasing the domain name that interests you”.

Furthermore, upon typing in the subject Domain Name, the user is directed to a webpage which contains material describing a new engine development. The engine development appears to be of a new nature, as opposed to a conventional reciprocating or rotary engine: it being described by the inventor as being “based on a whole new engineering solution that has no analogies in the world” (a quote from the material available at the “www.orbitalengine.biz” website on August 31, 2004). Surprisingly then, for an engine that has “no analogies in the world”, the invention is being promoted as an “Orbital Engine”.

To the best of the Complainant’s knowledge, and considering that Complainant has been engaged in the engine development industry for over 30 years, and worked with most of the major engine developers around the world, there is no such thing as an “orbital engine” unless one is referring to the engines that have been developed by the Complainant itself. As a relative newcomer to the engine development market, and as a relatively new Domain Name (first registered approximately in July 2004), it would have been, and still is, a simple choice for the Respondent to choose an alternate Domain Name and brand for the new engine development.

5.2. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Domain Name consist of the Complainant’s registered mark ORBITAL and the generic word “engine”, reflecting the very products and business with which the Complainant is concerned and its ORBITAL mark is registered. The addition of the word “engine” does not serve to distinguish the Domain Name from the Complainant’s mark, but indeed compounds the likelihood of confusion between the Domain Name and the Complainant’s trade mark. Accordingly, the panelist finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has alleged and provided evidence supporting its claim that Respondent lacks legitimate interests in the domain name. The Respondent has not filed a Response providing any information about its activities and therefore does not appear to have any rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:

“by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.”

The Domain Name has been used to link to a website offering competing engine products to those of the Complainant and offered under a similar trading name to the Complainant “Orbital Engine Group”. An e-mail of July 12, 2004, from the Respondent to the Complainant indicates that the Respondent was aware of the Complainant’s existence prior to the registration of the Domain Name. Accordingly, it appears that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website, by creating confusion as to the source, sponsorship, affiliation or endorsement of its products or services. The Panel, therefore, finds that bad faith has been demonstrated under paragraph 4(b)(iv) 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, <orbitalengine.biz> be cancelled, as requested by the Complainant.

Dawn Osborne
Sole Panelist

Dated: November 8, 2004