1st Jun 2009

 

National Arbitration Forum

 

DECISION

Aeroxchange Ltd. v. AEROEXCHANGE.com c/o WHois IDentity Shield

Claim Number: FA0902001249747

 

PARTIES

Complainant is Aeroxchange Ltd. (“Complainant”), represented by Jason E. Mueller, of Locke Lord Bissell & Liddell LLP, Texas, USA. Respondent is AEROEXCHANGE.COM c/o Whois IDentity Shield (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law, New Jersey, USA.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <aeroexchange.com>, registered with Nameview, Inc.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 Diane Cabell, Bruce Meyerson, as Panelists and David S. Safran, Chair.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 26, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 27, 2009.

The National Arbitration Forum attempted to verify that the <aeroexchange.com> domain name was registered with Nameview, Inc. and that Respondent was the current registrant of the domain name.  Nameview, Inc., however, did not respond to multiple contact attempts from the National Arbitration Forum.  The National Arbitration Forum then contacted ICANN regarding Nameview, Inc.’s lack of response to the verification request, and notified ICANN that it would be proceeding without verification.  The National Arbitration Forum commenced the case on March 26, 2009.

 

On March 26, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 15, 2009 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@aeroexchange.com by e-mail.

On April 8, 2009, the National Arbitration Forum granted Respondent’s April 7, 2009 Request for Extension of Time to Respond to Complaint with Complainant’s Consent, thereby setting a deadline of April 25, 2009 by which Respondent could file a Response to the Complaint.

On April 27, 2009, the National Arbitration Forum granted Respondent’s April 24, 2009 Request for Extension of Time to Respond to Complaint with Complainant’s Consent, thereby setting a deadline of May 7, 2009 by which Respondent could file a Response to the Complaint.

A timely Response was received and determined to be complete on May 7, 2009.

On May 20, 2009, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Diane Cabell, Bruce Meyerson, as Panelists and David S. Safran, Chair.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that Respondent’s domain name <aeroexchange.com> is phonetically identical to and confusingly similar to the Complainant’s marks and domain <aeroxchange.com>, which was registered well before Respondent’s <aeroexchange.com> domain. Complainant also contends that Respondent has not been using the domain in connection with a “bona fide” offering of goods or services because Respondent has been using the <aeroexchange.com> domain to mislead consumers and potential consumers of Aeroxchange to a commercial website which is not affiliated with, nor otherwise sponsored or approved by Aeroxchange and which provides direct links to third-party websites, a number of which offer aviation products directly competitive with Aeroxchange’s Aviation Products or the products of Aeroxchange’s customers. Complainant asserts that Respondent’s registration and use of the <aeroexchange.com> domain has been with constructive and, Aeroxchange believes, actual notice of Aeroxchange’s exclusive right to use the Aviation Marks. Specifically, the <aeroxchange.com> domain was registered since November 1999, a full two years before Respondent registered <aeroexchange.com>, and Complainant used its “AEROXCHANGE” mark in commerce in the United States, and applied for a U.S. Federal Registration for the “AEROXCHANGE” mark, prior to the date Respondent registered the <aeroexchange.com> domain.

B. Respondent

Respondent contends that the <aeroexchange.com> domain is used in a descriptive sense. Respondent also contends that there is no evidence Respondent registered the <aeroexchange.com> domain with Complainant’s trademark in mind because Respondent registered the domain, after it expired and was deleted, becoming available for re-registration. Respondent registered the <aeroexchange.com> domain solely because it incorporated a descriptive term, and there is no evidence it was registered to profit from Complainant’s mark; furthermore, Respondent had no knowledge of Complainant when it registered the Disputed Domain, nor was there a basis for such knowledge since Complainant’s trademark was not registered until December 24, 2002, more than a year after the November 13, 2001 registration date of the <aeroexchange.com> domain and at a time that Complainant was not very well known. It is also asserted by Respondent that the domain<aeroexchange.com> was registered by it solely due to its descriptive nature as evidenced by numerous other descriptive domains that Respondent has registered.

FINDINGS

Complainant owns AEROXCHANGE, U.S. Reg. No. 2,665,318, registered December 4, 2002, and which is now incontestable under 15 U.S.C. § 1065. Complainant has failed to establish that it had common law rights in its mark so that its rights and constructive notice thereof commenced with issuance of its AEROXCHANGE registration subsequent to registration of the domain <aeroexchange.com> by Respondent.

 

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

 

Since the Panel finds that Complainant failed to meet its burden of proving that the domain name was registered in bad faith, this element is not addressed.

 

Rights or Legitimate Interests

 

Since the Panel finds that Complainant failed to meet its burden of proving that the domain name was registered in bad faith, this element is not addressed.

 

Registration and Use in Bad Faith

 

The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).

 

Respondent argues that it had no knowledge of Complainant at the time of the disputed domain name’s registration, and that Respondent only meant to target the generic value of the terms in the disputed domain name. The Panel finds that Complainant has failed to establish that Respondent registered the disputed domain name in bad faith since Complainant has not demonstrated that it had common law rights at the time that Respondent registered the domain <aeroexchange.com>, and since Complaint has not demonstrated that Respondent registered the domain with knowledge of Complainant or its AEROXCHANGE mark.  See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (failing to find common law rights where the complainant provided little evidence showing the extent of its use of the mark over the three years that the complainant claimed to have been using the mark); see also Witteles v. Domain Guy, FA 616302 (Nat. Arb. Forum Feb. 27, 2006) (finding that the complainant failed to prove common law rights because it “did not provide any evidence of secondary meaning or continuing use…”).

 

DECISION

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

Accordingly, it is Ordered that the <aeroexchange.com> domain name be retained by Respondent.

 

___________________________________________________

David S. Safran, Chair

Diane Caball and Bruce Meyerson, Panelists
Dated: June 1, 2009

National Arbitration ForuM