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Cobham Plc v. Neog Inc [2005] GENDND 1465 (9 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cobham Plc v. Neog Inc

Case No. D2005-0503

1. The Parties

The Complainant is Flight Refuelling Ltd, Dorset, United Kingdom of Great Britain and Northern Ireland (“Complainant”), represented by Andy Sweetman, United Kingdom of Great Britain and Northern Island.

The Respondent is NEOG INC, Istanbul, Turkey (“Respondent”).

2. The Domain Names and Registrar

The domain name in dispute is <alancobham.com> (the “domain name”).

The registrar with whom the domain name is registered is OnlineNIC, Inc. d/b/a China-Channel.com (the “registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2005. On the same day, the Center transmitted by email to OnlineNIC, Inc. d/b/a China-Channel.com a request for registrar verification with the domain name at issue. On May 10, 2005, OnlineNIC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts. 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 June 24, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was July 14, 2005. The Respondent did not submit a Response. Accordingly, the Center notified the Respondent’s default on July 18, 2005.

The Center appointed Michael C. Pryles as the Sole Panelist in this matter on July 26, 2005. 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 is one of the Cobham group of companies. The trademark “COBHAM” was registered to Cobham Plc on January 18, 1995. The trademark is associated with civil and defence engineering, primarily in the aerospace sector.

Apart from the name and address details mentioned above, no information is known about Respondent.

5. Parties’ Contentions

A. Complainant

Complainant alleges that:

(i) the domain name is confusingly similar to a trademark or service mark in which Complainant has rights;

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

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

In support of this, Complainant alleges that:

- there are various companies in the Cobham group whose names contain (or have contained) the word “Cobham”;

- Alan Cobham is the founder of the Cobham group of companies and his biography appears on the “www.cobham.com” website;

- one of the Cobham group of companies was formerly named “Alan Cobham Engineering” and still refers to that former name on the front page of its website;

- Respondent has no rights or legitimate interests in, and its business has no relevance to, the domain name; and

- Respondent probably registered the domain name to “cybersquat” or disrupt Complainant’s business.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and findings

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, Complainant must prove that the domain name is identical or confusingly similar to Complainant’s trademark.

The domain name is <alancobham.com>. Complainant’s trademark is “COBHAM”. Obviously, the two are not identical.

However, the only difference is the word “Alan”, and Alan Cobham is intimately connected with Complainant’s business. For example:

- Alan Cobham was the founder of some of the Cobham group of companies, including Complainant;

- one of the companies was formally named Alan Cobham Engineering;

- that company still refers to its former company name on the front page of its website;

- Complainant’s “www.cobham.com” website contains a biography of Alan Cobham.

In light of this the Panel is satisfied that any Internet user would mistakenly consider the domain name to be affiliated with Complainant’s trademark. The Panel therefore finds that the two are confusingly similar.

Paragraph 4(a)(i) of the Policy also requires Complainant to prove that it has rights in the COBHAM trademark. It has done so by providing a Registration Certificate.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent does not have any rights or legitimate interests in the domain name.

Complainant argues, and the Panel accepts, that public records indicate that NEOG Inc does not have any trademarks, service marks or any other trading name or product with any similarity to the name “Alan Cobham”.

Respondent has not responded to Complainant’s contentions. According to paragraph 14(b) of the Rules, the Panel is entitled to draw a negative inference from Respondent’s silence. The Panel does so.

For these reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, Complainant must prove that the domain name was registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by the Panel to be evidence of the bad faith registration and use of a domain name. They are:

(i) circumstances indicating that the domain name was registered or acquired 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 onto a competitor of that Complainant, for valuable consideration in excess of the domain name registrant’s out-of-pocket costs directly related to the domain name;

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

(iii) the domain name was registered primarily for the purpose of disrupting the business of a competitor; and

(iv) by using the domain name, the domain name registrant intentionally attempted to attract for financial gain, Internet users to the registrant’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 registrant’s website or location or of a product or service on the registrant’s website or location.

The Panel finds that the instant case does not fall within any of the above categories. However, as stated in the Policy itself (paragraph 4 b) uses the wording “in particular, but without limitation”) and several earlier WIPO UDRP decisions, these examples are not exclusive and other circumstances may exist that demonstrate the registration and use of a domain name in bad faith. The Panel finds the following circumstances to be relevant:

- the word “Alan” is closely linked to the COBHAM trademark. Alan Cobham is the namesake of the COBHAM trademark, the founder of the Cobham group of companies and an essential aspect of the history and marketing of at least some members of the Cobham group of companies;

- the words Alan Cobham have no apparent relation or relevance to Respondent’s business;

- there is no conceivable way in which Respondent could use the domain name in good faith; and

- Respondent has provided no evidence of any actual or contemplated good faith use of the domain name.

The Panel finds the above circumstances sufficient to establish that the domain name has been registered in bad faith. However, as there is no website that corresponds to the domain name, is it being used in bad faith? Various WIPO Panels have considered this issue. See, for example, Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131, and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In Telstra Corporation Limited v. Nuclear Marshmallows, the panel found that:

“the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”.

In the circumstances of this case, the Panel is satisfied that Respondent is acting in bad faith. The domain name is unconnected with the business of Respondent, and intimately connected with that of Complainant. The Panel cannot conceive of a situation in which Respondent could use the name in good faith, and Respondent has not suggested that there are any. The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

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

Michael C Pryles
Sole Panelist

Dated: August 9, 2005