ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
This is a domain name dispute under the ICANN Uniform Domain Name Dispute Resolution Policy (the "UDRP"). The domain registration at issue in this panel decision is para-flite.com. The Complainant is Para-Flite, Inc. whose place of business is based in Pennsauken, New Jersey, USA. The Respondent is Glen Little, with a place of business at Tuscola, Illinois, USA.
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on June 29, 2000. The hardcopy of the Complaint Form was received on July 3, 2000. Confirmation of payment was received on June 30, 2000. The Choice of Jurisdiction was received on July 4, 2000.
Upon receiving all the required information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
The inquiry leads the Clerk of eResolution to the following conclusions: the Registrar is Network Solutions inc, the Whois database contains all the required contact information, the contested Domain Name resolves to an inactive Web page and the Complaint is administratively compliant.
An e-mail was sent to the Registrar by eResolution Clerk's Office to obtain a copy of the Registration Agreement on June 30, 2000. The requested information was received July 6, 2000.
The Clerk's Office proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.
The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on July 6, 2000. That date is the commencement date of the administrative proceeding.
On July 6, 2000, the Clerk's office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
All the emails were returned 'undeliverable'. The faxes to the respondent's representative and to the technical contact were successful.
The complaint, official notification and all the annexes were sent via UPS to the respondent. According to the UPS tracking system, all were delivered.
The Respondent did not submit a response, neither via the eResolution Internet site nor a signed version.
Between July 27, 2000, and August 1, 2000 the Clerk's Office contacted two other panelists, and requested that they act as panelist in this case. Neither of them was available at this time.
On August 1, 2000, the Clerk's Office contacted Mr. Merton Thompson, and requested that he act as panelist in this case.
On August 3, 2000, Mr. Merton Thompson accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On August 3, 2000, the Clerk's Office forwarded a user name and a password to Mr. Merton Thompson, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On August 3, 2000, the parties were notified that Mr. Merton Thompson had been appointed and that a decision was to be, save exceptional circumstances, handed down on August 16, 2000.
3. Factual Background
The Complainant Para-Flite, Inc. is a manufacturer of parachutes and is the owner United States Trademark Reg. No. 1,307,943 P PARA-FLITE and design (per the description on the trademark registration, the mark consists of the words "Para-Flite", the letter "P" and the fanciful representation of a parachute). Complainant describes itself as a leader in the design, development and manufacture of ram-air gliding parachutes for military and sporting parachute use. Complainant's trademark has been in use since 1969 and its registration has become incontestable under U.S. trademark law through the fulfillment of statutory requirements.
The Respondent Glen Little, starting in 1987, operated a business known as Illini Para-Flite, Inc., since changed to Illini Prairie-Flight, Inc. in response to the demands of Complainant. Each business relate/d to sales, service and instruction for powered parachute style aircraft. Respondent registered the para-flite.com domain name on October 1, 1999, and began using the domain in connection with his business sometime thereafter.
Some time prior to March 17, 2000, Complainant contacted Respondent regarding the use of its Illini Para-Flite trade name and para-flite.com domain name. In a written reply dated March 17, 2000, Respondent offered to change its name to Illini Prairie-Flight. Inc. and to cease use of the para-flite.com domain name in return for a release of any and all alleged claims. This offer was apparently conditionally accepted by the Complainant in its letter of March 24, 2000 (this letter was not filed with the pleadings in this proceeding). In response to the March 24 letter, Respondent wrote on March 31, 2000, that, in relevant part: it conditionally agrees to change its trade name; it had discontinued all use of the Para-Flite trade/domain name; it had obtained the domain name prairieflight.com and intended to use that domain in connection with its business; and, it would not assign the para-flite.com domain name, but would entertain an offer to purchase.
4. Parties' Contentions
Complainant contends that the domain at issue, para-flite.com, is identical to its registered trademark and submitted copies of the U.S. registration certificate as evidence.
To support its allegation of illegitimacy, Complainant relies on its incontestable trademark registration and the provisions of Sec. 33(b) of the Lanham Act, which states:
To the extent that the right to use the registered mark has become incontestable under section 15, the registration shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the mark in commerce. Such conclusive evidence shall relate to use of the mark on or in connection with the goods or services specified in the affidavit filed under the provisions of section 15.
The pleadings do not include the Sec. 15 affidavit that is referenced in the statute excerpt above, but this panel shall interpret the Complainant's trademark rights as being co-extensive with the goods listed on its registration, namely, parachutes. Complainant states, " by law, Complainant Para-Flite, and only Para-Flite is permitted to use or authorize the use of the PARA-FLITE mark in the United States in connection with parachutes." Complainant attached a printout of the Respondent's former web site and alleged that Respondent is marketing parachutes. Based on its stated rights under U.S. trademark law and allegations regarding the Respondent's web site, the Complainant concludes, "Respondent patently has no rights or legitimate interests in the contested para-flite.com domain name."
Although the Respondent did not submit a response in this proceeding, he did take exception to the Complainant's allegation that he was in the business of marketing parachutes. In Respondent's letter of March 31, 2000 (submitted with Complainant's pleadings), Respondent stated through his counsel, "[we] do not now, and will not in the future engage in the business of manufacturing or selling parachutes . . .[we] have in the past and will continue to sell powered parachutes as units . . . [we] are in the business of selling powered parachutes as aircraft."
To support its claim of bad faith, the Complainant offers the following reasoning. First, Complainant points to a statement from Respondent's web site - "We'll help you in any way we can regardless of brand or type of aircraft"- and argues that it strains credulity to believe that Respondent would be unaware of the trademark of one of the leading parachute marketers given that Respondent offers services "regardless of brand or type of aircraft." Complainant asks that bad faith be inferred because Respondent selected para-flite.com, a name it argues the Respondent must be aware of, as a domain address and not illinipara-flite.com, Respondent's trade name. Complainant argues that these circumstances indicate that Respondent adopted the para-flite.com domain name in bad faith, with the intent to trade-off of the goodwill of the PARA-FLITE trademark.
Finally, Complainant argues that Respondent's refusal to transfer the domain name at issue without consideration constitutes bad faith in that it shows an intent: to sell the domain for valuable consideration; to prevent Complainant from using the domain name; and, to disrupt the business of Complainant, who is in competition with Respondent.
5. Discussion and Findings
Under the UDRP paragraph 4(a) the Complainant bears the burden of proving that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the 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.
Therefore the question before this panel is whether the Complainant has met its burden with respect to the three elements.
(i) The panel finds that Complainant has met its burden with respect to the first element. Although the Complainant only submitted its design mark registration as evidence, the panel finds that the domain at issue is confusingly similar to Complainant's trademark as the dominant impression given by the design mark is the phrase "PARA-FLITE" and that registration is valid and subsisting. Therefore, Complainant has met its burden as to this element.
(ii) The panel finds that Complainant has failed to meet its burden with respect to establishing that the Respondent has no rights or legitimate interests in the domain names at issue. It is apparent from the evidence submitted that Respondent used the domain at issue in connection with a business relating to powered parachute style aircraft. This is a bona fide, legitimate business that Respondent has operated for many years. This panel is bound by the UDRP paragraph 4(c) that states in relevant part:
Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 or service mark at issue. (emphasis added)
The panel finds that the evidence submitted and Complainant's own admissions demonstrate that the Respondent used the domain name at issue in connection with a bona fide offering of goods and services before notice of this dispute and was known by the name Illini Para-Flite. Accordingly, under Paragraph 4(a)(ii) of the UDRP the panel finds the Complainant has not met its burden with respect to this element.
The panel notes that the issues raised by Complainant may present questions cognizable under trademark law. Under the relevant U.S. trademark law, even innocent use of a trademark constitutes an actionable infringement and Complainant's registration serves as constructive notice of its trademark rights to all. However, the UDRP is not intended to resolve issues of trademark law absent evidence of illegitimacy and bad faith.
(iii) The panel finds that the Complainant has failed to meet its burden in establishing that the domains at issue were registered and are being used in bad faith. The UDRP lists the following circumstances as evidence of a registration and use in bad faith in paragraph 4(b):
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
(i) The panel finds that the evidence submitted does not support the conclusion that the domain at issue was acquired for the purpose of sale to Complainant or a competitor of Complainant and the panel finds that no evidence was submitted that consideration in excess of documentable out-of-pocket costs was demanded.
(ii) The panel finds that the evidence does not support the conclusion that Respondent registered the domain names at issue to prevent the Complainant from reflecting its mark in a corresponding domain name or that Respondent engaged in a pattern of such conduct. The panel finds that the evidence submitted does not show that domain registrations of Respondent constitute a pattern of conduct intended to block trademark owner's access to domain names that correspond to their marks.
(iii) The panel finds that the evidence submitted does not support the conclusion that Respondent registered the domain name at issue to disrupt the business of a competitor. While the businesses of the parties are somewhat closely related and may indeed be competitive, the panel finds that the actions of the Respondent when notified of Complainant's trademark position indicate a respect for trademark rights and good faith response to Complainant's concerns. Such behavior is not consistent with an intention to disrupt the business of a competitor.
(iv) The panel finds that the evidence does not show that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's mark. While the Complainant states in its pleadings that there have been incidents of misdirected emails as a result of the confusing similarity between the domain at issue and Complainant's trademark, the evidence does not support the conclusion the domain was acquired with bad faith intent to profit from Complainant's trademark.
As the Complainant has failed to prove any of the listed indicia of bad faith or any other compelling evidence of bad faith, the panel finds that the Complainant has not met its burden with respect to this element.
For the foregoing reasons, the panel concludes that the Complainant has not met its burden of proof under the UDRP paragraph 4 (a). Accordingly, the panel finds the domain name para-flite.com should not be transferred to Complainant.
August 16, 2000
(s) Merton E. Thompson