19th Jun 2007
National Arbitration Forum
JetDirect Aviation, LLC v. Vertical Axis, Inc c/o Domain Adminstrator
Claim Number: FA0704000953970
Complainant is JetDirect Aviation, LLC (“Complainant”), represented by M. Kelly Tillery, of Pepper Hamilton LLP, 3000 Two Logan Square, Eighteenth and Arch Streets, Philadelphia, PA 19103-2799. Respondent is Vertical Axis, Inc c/o Domain Adminstrator (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is jetdirect.com>, registered with Nameview, Inc.
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.
Honorable Nelson A. Diaz, Prof. David E. Sorkin and James A. Carmody, Esq. (Chair) as panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 3, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 4, 2007.
On May 8, 2007, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the jetdirect.com> domain name is registered with Nameview, Inc. and that Respondent is the current registrant of the name. Nameview, Inc. has verified that Respondent is bound by the Nameview, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 10, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 30, 2007 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on May 30, 2007.
Both parties timely filed Additional Submissions.
On June 6, 2007, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Nelson A. Diaz, Prof. David E. Sorkin, and James A. Carmody, Esq. (Chair) as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s jetdirect.com>, the domain name at issue, is confusingly similar to Complainant’s JETDIRECT mark which enjoys a USPTO registration.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and has used the domain name at issue in bad faith.
B. Respondent makes the following assertions:
1. Complainant has no protectable rights in its claimed JETDIRECT mark superior to Respondent for the purposes of this proceeding because the mark was not in use prior to Respondent’s Registration of the domain name at issue.
2. Respondent has rights and legitimate interests in the domain name at issue and is rightfully using the same in commerce.
3. Respondent did not register the domain name at issue in bad faith and has not used it in bad faith.
4. Complainant is guilty of “reverse domain name hijacking.”
C. Additional Submissions
Complainant’s Additional Statement concerns itself with Respondent’s second and third assertions. Respondent’s Additional Submission responds to Complainant’s Additional Submission.
Complainant is a major player in the jet charter market and is one of the largest private aviation companies in the U.S. Claiming a first date of use of its mark JETDIRECT in commerce as January 1, 2003, Complainant applied for registration of this service mark on September 25, 2002. Complainant registered jetdirect.net> on September 24, 2002. On July 12, 2005, the USPTO granted registration of JETDIRECT as Reg. No. 2,968,132 for air transportation services. Complainant alleges having spent substantial sums in marketing to establish good will in connection with the mark. No claim is made that JETDIRECT was a common law trademark of Complainant prior to January 1, 2003.
According to Complainant, Respondent or a third-party agent registered the domain name at issue on October 16, 2006 and uses it with links to sites directly competitive with Complainant.
Respondent has presented “Whois” registration evidence showing that its registration of the domain name at issue was March 24, 2001, almost two years prior to Complainant’s claimed first date of use of its JETDIRECT mark in commerce. In its Additional Submission, Complainant fails to dispute the initial registration date claimed by Respondent but cites an article which suggests that 31% of Whois records are inaccurate. The Panel notes again that Complainant registered jetdirect.net>, instead of the domain name at issue, on the day prior to its USPTO application and more than three months prior to the date of first claimed use in commerce of the JETDIRECT mark.
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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) 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
Respondent registered the jetdirect.com> domain name at issue on March 24, 2001, over a year before Complainant claims it first used the JETDIRECT mark in commerce. In the view of a majority of the Panel, Complainant’s rights in the mark must predate a respondent’s domain name registration in order to establish rights in the relevant mark. Complainant has failed to establish rights in the mark that predate Respondent’s registration of the disputed domain name pursuant to Policy ¶ 4(a)(i). See OCZ Tech. Group, Inc. v. Megazine Publ’ns, FA 244094 (Nat. Arb. Forum Apr. 29, 2004) (finding that numerous panels have previously interpreted the UDRP to require the complainant’s trademark to predate a respondent’s domain name registration in order to satisfy Policy ¶ 4(a)(i)); see also Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (finding that any enforceable interest that Complainant may have in its common law mark did not predate Respondent’s domain name registration, therefore finding that Policy ¶ 4(a)(i) had not been satisfied).
Accordingly, a majority of the Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(i). The remaining member of the Panel (Panelist Sorkin) would find the Complainant’s registered mark sufficient to satisfy ¶ 4(a)(i) but would deny relief based upon ¶ 4(a)(iii), on the grounds that the disputed domain name could not possibly have been registered in bad faith because Complainant’s mark did not even exist at the time. See, e.g., Proto Software, Inc. v. Vertical Axis, Inc., D2006-0905 (WIPO Oct. 10, 2006). The Panel therefore is unanimous in its conclusion that the Complaint fails.
Complainant having failed to satisfy the first element of the Policy, it is not necessary for the Panel to make findings on the remaining two elements. The Panel makes no findings with respect to “reverse domain name hijacking” in this case.
Accordingly, the Panel concludes that relief shall be DENIED.
James A. Carmody, Esq. (Chair)
Honorable Nelson A. Diaz
Prof. David E. Sorkin
Dated: June 19, 2007
National Arbitration Forum