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AvCraft Aviation, L.L.C. v. Gary Kohlschmidt [2004] GENDND 824 (3 June 2004)

1. The Parties

The Complainant is AvCraft Aviation, L.L.C., Leesburg, Virginia, United States of America, represented by Reed Smith LLP, United States of America.

The Respondent is Gary Kohlschmidt, Tyler, Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <avcraftaviation.com> (the “Domain Name”) is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2004. On March 19, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On March 24, 2004, Network Solutions, LLC 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. The Center verified that 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 March 25, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was set for April 14, 2004. On April 1, 2004, counsel for the Complainant sought suspension of the proceedings for 30 days to allow the parties time to reach a settlement. On April 2, the Center notified the parties that the proceedings would be suspended until May 2, 2004. On April 30, 2004, counsel for the Complainant wrote to the Center to request that the Complaint be reinstated. The letter from the Complainant’s counsel stated that “[t]he parties have reached a settlement but have not been able to effect the transfer of the domain name technologically.” The Complainant’s counsel’s letter enclosed a Domain Name Assignment agreement that was signed by the Respondent. On May 3, 2004, the Center notified the parties that the proceedings had been re-instituted, and the new deadline for submitting a response would be May 12, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2004.

The Center appointed Michelle Brownlee as the sole panelist in this matter on May 26, 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

Complainant and its related companies provide aviation services, including refurbishment, maintenance, engineering, fuel, charter and aircraft management services. Complainant owns a U.S. trademark registration and two pending applications for AVCRAFT in connection with such services claiming a first use with respect to some services dating back to May 10, 2000. Complainant has been using its company name, AvCraft Aviation L.L.C. since August 27, 1999, and Complainant claims common law trademark rights in the mark AVCRAFT AVIATION.

Respondent was an employee of Complainant when Respondent registered the Domain Name in his own name. Respondent used Complainant’s funds to acquire and renew the Domain Name. The website associated with the Domain Name displays information about the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Respondent’s registration of the Domain Name is identical to its common law trademark and confusingly similar to its registered trademark AVCRAFT. The Complainant further contends that the Respondent has no legitimate reason to register the Domain Name in his own name, and that Respondent registered the Domain Name in bad faith to disrupt the Complainant’s business in order to gain leverage in a dispute he was having with the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:

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

(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.

A. Identical or Confusingly Similar

The Domain Name is identical to Complainant’s trade name and common law trademark AVCRAFT AVIATION. The Domain Name can also bee seen as confusingly similar to the Complainant’s registered trademark AVCRAFT, since it pairs a generic word for the Complainant’s services (“aviation”) together with the Complainant’s trademark. Other panels have found confusing similarity under similar circumstances. See, e.g., Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (<christiandiorcosmetics.com> and <christiandiorfashions.com> confusingly similar to CHRISTIAN DIOR); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032 (<leasinglexus.com> and <lexuselite.com> confusingly similar to LEXUS). Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides that a respondent can demonstrate a legitimate interest in a domain name by demonstrating one of the following facts:

(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name; or

(iii) the respondent is 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 at issue.

Respondent has not provided any evidence of rights or legitimate interests in the domain name. The fact that the Respondent was an employee of the Complainant at the time he registered the domain name does not change this conclusion. See, e.g., Ruby’s Diner, Inc. v. Joseph W. Popow, WIPO Case No. D2001-0868 (“An employee or former employee is not a licensee, and thus has no authorization to use a company’s trademark or a confusingly similar variation thereof without permission”).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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.

This list of bad faith factors is not exclusive. Other circumstances can demonstrate bad faith. See Playboy Enterprises International Inc. v. SAND WebNames - For Sale, WIPO Case No. D2001-0094; General Electric Company v. Fisher Zvieli, a/k/a Zvieli Fisher, WIPO Case No. D2000-0377.

The facts presented in this case do not fall squarely within the enumerated factors in Paragraph 4(b). There is no evidence that the Respondent sought monetary compensation in excess of out-of-pocket expenses related to the domain name, so factor (i) does not apply (although an analogous concept does apply, as discussed below). There is no evidence that the Respondent has engaged in a pattern of conduct of preventing the Complainant or other trademark owners from using trademarks in domain names, so factor (ii) does not apply. There is no evidence that the Respondent is a competitor of the Complainant, so factor (iii) does not apply. The Complainant also does not argue that the Respondent has tried to attract traffic to his website for his own commercial gain. To the contrary, the Respondent’s website appears to be content designed by the Complainant. Thus, factor (iv) doesn’t really apply either.

Nevertheless, I find that the Respondent has registered and used the Domain Name in bad faith. Respondent’s registration and use of the Domain Name for purposes of gaining bargaining power in a dispute with his former employer is not a good faith use of the Domain Name. Although there is no allegation that the Respondent sought payment from his former employer, the use of the Domain Name registration as a means to strong-arm the Complainant into negotiating his employment-related grievances is akin to trying to extract an exorbitant price for the Domain Name, and therefore should be viewed as bad faith. See, e.g., BellSouth Intellectual Property Corporation v. Jaclyn aka Jaclyn Thoms, WIPO Case No. Case No. D2001-1409 (bad faith found where respondent sought to obtain free advertising from complainant).

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 be transferred to the Complainant. As an alternate ground for ordering transfer of the Domain Name to the Complainant, the Panel notes that the Complainant has submitted evidence that the

dispute was settled, and the Domain Name should be transferred in connection with the termination of the proceeding according to paragraph 17 of the Rules. See, e.g., United Advertising Publications, Inc. v. Net Marketing, WIPO Case No. D2000-0058.

Michelle Brownlee
Sole Panelist

Dated: June 3, 2004