Flightcom Corporation v. Bibas&Schaci
[Indexed as: Flightcom v. Bibas]
[Indexed as: Flightcom.com]
National Arbitration Forum
Administrative Panel Decision
File No.: FA94740
Commenced 9 May, 2000
Judgement: 15 June, 2000
Arbitrator: Karl V. Fink
Domain name-Domain name resolution policy-Cybersquatting-Bad faith-Diversion
of business-Identical-Confusingly similar-Rights and legitimate interests-Requirements
for domain name transfer.
Complainant is the registered owner of the mark "Flightcom" and a
vendor of aviation communication equipment. Complainant registered
the mark in April 1993 and first used it in October 1998. Respondent
is the registered owner of the domain name Flightcom.com. and the proprietor
of a travel agency. Disputed domain name was registered to the Respondent
in April 1996. Immediately after registration of disputed domain
name Respondent commenced use of it on Respondent's web site. Respondent
was unaware that the "Flightcom" name was being used by anyone else at
the time Respondent registered the domain name. Respondent continues
preparations to build its travel agency business under the web site with
the disputed domain name.
Held: Domain Name not Transferred.
Domain name is identical or confusingly similar to mark of the Complainant.
However Respondent has proven its rights or legitimate interests
in the domain name. Respondent used the domain name in connection
with the bona fide offering of goods and services. Respondent has
also demonstrated legitimate, fair use of the domain name without intent
to divert Complainant's consumers or tarnish the trademark. Moreover,
Complainant has not proven that Respondent registered and used the domain
name in bad faith. Respondent has not been shown to have registered
the domain name for the purposes of resale to the owner of the mark or
a competitor for profit. There is also no evidence to show that Respondent
intended to create likelihood of confusion with Complainant's trademark
for commercial gain.
Policies referred to:
Uniform Domain Name Resolution Policy Adopted August 6, 1999
Statutes referred to:
Rules for Uniform Domain Name Dispute Resolution Policy
Cases referred to:
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The above entitled matter came on for an administrative hearing on
June 15, 2000 before the undersigned on the Complaint of Flightcom Corporation,
hereinafter "Complainant", against Bibas&Schachi, hereafter "Respondent".
Upon the written submitted record, the following DECISION is made:
PROCEDURAL FINDINGS
Domain Name: Flightcom.com
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: Bibas&Schachi
Date of Domain Name Registration: April 3, 1996
Date Complaint Filed: May 5, 2000
Due Date for a Response: May 30, 2000 Respondent did submit a response.
Date of Commencement of Administrative Proceeding in Accordance with
Rule 2(a)l and Rule 4(c)[1]: May 9, 2000
Trademark or Service mark upon which this Complaint is based: Flightcom
Relief Requested by Complainant: Transfer of the Domain Name to Complainant.
There was a supplemental submission by Complainant dated June 8, 2000
and a response thereto dated June 13, 2000. Both have been considered.
After reviewing the Complaint, and determining it to be in administrative
compliance, the National Arbitration Forum (The Forum) forwarded the Complaint
to the Respondent on May 9, 2000 in compliance with Rule 2(a), and the
administrative proceeding was commenced pursuant to Rule 4(c). In compliance
with Rule 4(d), The Forum immediately notified the above Registrar, Network
Solutions, Inc., the Internet Corporation for Assigned Names and Numbers
(ICANN), and the Complainant that the administrative proceeding had commenced.
On April 3, 1996, Respondent registered the domain name "Flightcom.com"
with Network Solutions, the entity that is the Registrar of the domain
name. By registering its domain name with Network Solutions, Respondent
agreed to resolve any dispute regarding its domain name through ICANN's
Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform
Domain Name Dispute Resolution Policy.
The undersigned certifies that he has acted independently and has no
known conflict of interest to serve as the Arbitrator in this proceeding.
Having been duly selected, and being impartial, the undersigned makes the
following findings and conclusions:
FINDINGS OF FACT
1. Flightcom Corporation is the registered owner of the mark "Flightcom".
The date of first use of this mark was October 1988 and the registration
date was April 27, 1993. Use of the mark on product and as a corporate
name has been open and continuous since October 1988. The products include
headsets, intercoms and related accessories in aviation applications. Flightcom
is an Oregon corporation with a strong reputation in national and international
markets.
2. Respondent is using a domain name that is identical to Flightcom's
registered mark. Respondent's use of the disputed domain name has caused
instances of confusion among Flightcom customers, dealers and distributors.
3. Respondent is the registered owner of the domain name Flightcom.com,
which was registered to Respondent by Network Solutions on April 3, 1996.
Immediately after registration of its domain name, Respondent commenced
use of the domain name Flightcom.com on Respondent's website in connection
with Respondent's travel agency business and used the domain name until
it was put on hold in March 1997 in response to Complainant's intervention
with the Registrar.
4. Respondent selected its domain name because it was suggestive of
travel services (FLIGHT) which are available on line (COM).
5. Respondent filed a business certificate July 25, 1997 with the clerk's
office of Nassau County, New York showing registration of Respondent doing
business under the name Flightcom.
6. Respondent's travel agency services are totally different from Complainant's
sale of aviation communication equipment.
7. Respondent states that it has continued to make preparation for enhancing
and building its travel agency business at its website pending resolution
of this dispute.
8. Respondent owns the French Trademark Registration No: 97665228 for
Flightcom, for travel agency services. This was applied for after Respondent
was notified by Complainant to cease use of the mark.
9. Respondent was not aware of Complainant or any one else with the
Flightcom name at the time it registered the domain name and therefore
such registration was not for the purpose of disrupting anyone's business.
CONCLUSIONS
To obtain relief under paragraph 4(a)of the Policy, the Complainant
must prove each of the following:
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;
and
2. The Respondent has no right or legitimate interest in the domain
name; and
3. The domain name has been registered and used in bad faith.
Similarity Between Registrant's Domain Name and Complainant's Trade
or Service Mark.
The domain name registered by Respondent is confusingly similar to
or identical to the trademark owned by Complainant. The addition of the
generic domain name identifier ".com" and the deletion of the term "Corporation"
does not avoid a likelihood of confusion.
Respondent's Rights or Legitimate Interest in the Domain Name.
Under paragraph 4(c) of the Policy, evidence of a registrant's rights
or legitimate interest in the domain name includes:
1. Demonstrable preparations to use the domain name in connection with
a bona fide offering of goods or services prior to the dispute;
2. An indication that the registrant has been commonly known by the
domain name even if it has acquired no trademark rights; or
3. Legitimate noncommercial or fair use of the domain name without
intent to divert consumers or to tarnish the trademark.
Respondent has proven its legitimate rights or interest in the domain
name.
Respondent used the domain name before the dispute in connection with
its business until it was put on hold.
Respondent's Bad Faith Registration and Use of the Domain Name.
Under paragraph 4(b) of the Policy, evidence of Respondent's bad faith
registration and use includes:
1. Circumstances indicating the domain name was registered for the
purpose of resale to the trade or service mark owner or a competitor for
profit;
2. A pattern of conduct showing an attempt to prevent others from obtaining
domain names corresponding to their trademarks;
3. Registration of the domain name for the purpose of disrupting the
business of a competitor; or
4. Using the domain name to attract, for commercial gain, Internet
users to Respondent's web site or other on-line location by creating a
likelihood of confusion with the trademark owner's mark.
Complainant has not proven that Respondent registered and used the domain
name in bad faith.
Under ICANN's Uniform Domain Name Dispute Resolution Policy Complainant
has not proven that the domain name should be transferred to Complainant.
DECISION
Based upon the above findings and conclusions, and pursuant to Rule
4(i), it is decided as follows:
COMPLAINANT'S REQUEST THAT THE DOMAIN NAME "Flightcom.com" BE TRANSFERRED
IS DENIED.
Dated: June 15, 2000 Honorable Karl V. Fink, Arbitrator
[1] Any reference to "Rule" or "Rules" are to
ICANN's Rules for Uniform Domain Name Dispute Resolution Policy and Uniform
Domain Name Dispute Resolution Policy as supplemented by the National Arbitration
Forum's Supplemental Rules to ICANN's Uniform Domain Resolution Policy.
Domain
Name Not Transferred
