WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Vector Aerospace Corporation v. Daniel Mullen

Case No: D2002-0878

The Complainant is Vector Aerospace Corporation, a company incorporated under the laws of Canada, with principal place of business at St. John’s, Newfoundland.

The Respondent is Daniel Mullen, Hamburg, Germany.

The domain name at issue is <vectoraerospace.com> (hereinafter the "domain name"). The registrar is eNom, Inc., Redmond, Washington, United States of America (the "Registrar").

On September 19, 2002, the Complainant filed by e-mail a Complaint (the "Complaint") with the WIPO Arbitration and Mediation Center (the "Center"). The Center received a hard copy of the Complaint on September 23, 2002.

On September 23, 2002, the Center requested the Registrar to verify the domain name in dispute. The Registrar confirmed on September 25, 2002, that it is the registrar of the domain name, that the registrant of the domain name is Vector Aerospace Corporation c/o Daniel Mullen, Hamburg, Germany, that the Policy is applicable to the domain name and that the domain name registration is in "lock" status.

The Center proceeded to verify whether the Complaint satisfies 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 World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), including the payment of the requisite fees. On September 26, 2002, the Center concluded that the Complaint satisfies all of these formal requirements.

On September 26, 2002, the Center sent a copy of the Complaint to the Respondent. The Center indicated this date as the formal date for the commencement of the administrative proceeding and October 16, 2002, as the last day for Respondent to file a Response.

On October 17, 2002, the Center notified the Respondent of the receipt of the Response and stressed that the Response due date was on October 16, 2002.

On October 17, 2002, the Center informed the Parties that an administrative panel (the "Panel") would be appointed.

On October 23, 2002, the undersigned accepted to serve as Panelist. The Panel finds it was properly constituted in compliance with the Rules and the Supplemental Rules and the Panelist issued a Statement of Acceptance and Declaration of Impartiality and Independence. The Panel received the file on October 28, 2002.

On November 6, 2002, the Center asked the Respondent to transmit the missing annexes to the Complainant.

In order to clarify the transmission date of the Response, on November 8, 2002, the Center asked the Respondent to submit a record of his e-mail transmission including the date of transmission to prove that the Respondent has met the deadline set by the Center to file the Response.

On November 12, 2002, the Center received by fax the requested documents from the Respondent and forwarded them to the Panel. As discussed below (see par. 6) the Panel finds that the Respondent has shown that the Response was timely filed.

The Complainant is a company incorporated under the laws of Canada and is the owner of registered trademarks for "VECTOR AEROSPACE" as a word and as a design in Canada, the United States and the U.K. These trademarks are registered in association with airplane engine repair and overhaul services, aviation and industrial turbine engine repair and overhaul services and airplane and helicopter repair and overhaul services. Copies of these trademarks are attached to the Complaint (Annex 4). The United States registration indicates June 25, 1998, as the date of first use in commerce.

On April 26, 1998, the Respondent filed an application to register the domain name. On May 4, 1998, the domain name was registered. First, the Respondent was holding the domain name under the organization name MSNetworks. Since August 26, 2002, the Respondent is holding the domain name under the organization name Vector Aerospace Corporation.

Complainant contends:

- that the Domain Name is identical to its trademark "VECTOR AEROSPACE" and that it used this trademark since April 24, 1998, to advertise its services as shown by an article published on April 25, 1998, which refers to Complainant (Annex 5);

- that the Respondent has no rights or legitimate interest in the domain name because the Respondent is not and has not been commonly known by this name nor did he conduct business under this name. Moreover the Complainant submits that the Respondent has never displayed any credible evidence of the use of, or of demonstrable preparations to use, the domain name in connection with any bona fide offering of goods or services; rather, in 1998, Respondent began using the domain name as a portal to third party web sites offering online casino and pornographic goods and services, and today he is using it as a mere placeholder;

- that the Respondent has no license or authorization from the Complainant to use the trademark. Between Respondent and Complainant there is no business or other relationship;

- that the Respondent registered the domain name in bad faith, because he registered the domain name within days of the Complainant’s press release advertising the availability of and offering of services under its newly incorporated name Vector Aerospace Corporation and that the Respondent was in Canada at that time and had thus knowledge of the press release;

- that the Respondent offered to transfer the domain name for a price far in excess of out-of-pockets costs indicate the use of the domain name in bad faith.

Respondent contends:

- that he was in Canada at time of incorporation of the Complainant, but did not have any knowledge of the Complainant’s press release advertising the availability of and offering of services under its newly incorporated name, Vector Aerospace Corporation;

- that Respondent has rights and legitimate interests in respect of the domain name because since June 19, 2002, Vectror Aeorspace Corporation is incorporated in Delaware, before that having operated "as a trading name for Microscience Corporation";

- that Respondent’s business was selling paper airplane kits, which taught children concepts of aerodynamics. As of February 1, 2002, Respondent "officially" launched its consulting practice under the domain name. Since February 1, 2002, Respondent claims to provide advice on hourly or daily basis to the investment industry under the domain name;

- that, at the beginning, for the purpose of his preliminary business, the Respondent was running a simple web site, which was text based, with no pictures. Respondent denies the placing of pornographic material. For at least nine months the Respondent was running a clearly designed web site and therefore making fair use of the domain name;

- that the Respondent did not register the domain name in order to sell it to a third party. In particular, the Respondent states that his e-mail from January 29, 1999, responding to the Complainant’s offer of US$500, was a "nonsense e-mail" for the addressee to explain to his superiors. Responding to an offer of US$200 by the Complainant through an online broker, the Respondent alleges that he asked a price for the domain name of US$22,000 just "to reply to an unsolicited offer in such a way as to turn away a potential purchaser";

- that although the Respondent was in the last two years engaged in two WIPO arbitration cases, the Panel should not conclude from this fact that the Respondent is misusing domain names;

- that the Respondent did not register the domain name primarily to disrupt the Complainant’s business nor did the Respondent have the intention to attract for commercial gain Internet users by creating a likelihood confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location;

- and that Respondent is not in the business of transferring domain names for profit.

The Response was received by the Center almost 7 hours (Geneva time) after expiration of the deadline. According to paragraph 2(f)(iii) of the Rules, a communication shall be deemed to have been made via the Internet, on the date that the communication was transmitted, provided that the date of transmission is verifiable. Pursuant to the wording of this provision, the decisive factor to determine whether or not a Response was filed within deadline is date at the place from where the Respondent transmitted the Response. It is sufficient that the Respondent sends the Response within the deadline. Not relevant for this question is the time and date at the place of the addressee, always provided that the date of transmission is verifiable. The Respondent submitted to the Panel a printout of his e-mail out box listing the e-mails in question. According to the printout, the Response was sent to the Center on October 16, 2002, at 11.54 p.m. and 11.56 p.m. Therefore, the Respondent submitted evidence that the date of transmission was within the deadline and the time difference was likely to be caused by the fact that the Respondent and the Center were in different time zones. Therefore, the Panel finds that the Respondent is not in default and that the Response is to be considered for the decision.

To have the disputed domain name transferred to it, Complainant must prove each of the following (Policy, paragraph 4(a)):

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

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

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

The Panel finds that the disputed domain name <vectoraerospace.com> is identical to Complainant’s trademark "VECTOR AEROSPACE". The Policy does not require that Complainant’s trademark be filed prior to the domain name; however, this fact may be relevant to the assessment of the legitimate rights or interests and of bad faith (Digital Vision, Ltd v. Advanced Chemill Systems, WIPO Case No. D2001-0827; Mpower Communications Corp. v. Park Lodge Hotel, WIPO Case No. D2000-0078).

The Complainant alleges that the Respondent owned the domain name for over four years and never used the domain name for any bona fide offering of goods or services nor made a legitimate use of it. The Panel finds that the Complainant provided prima facie evidence for its allegation: according to a printout as of February 12, 2002, the Respondent used the Domain as a "shell" portal web site, purporting to direct online users to other sites relating to "vectoraerospace" (Annex 12 Complaint). On August 16, 2002, the web site was still under construction and existed merely as a placeholder (Annex 13 Complaint). The use of a domain name to direct users to other, unconnected web sites does not constitute a legitimate interest in the domain name (Altavista Company v. Andrew Krotov, WIPO Case No. D2000-1091), nor is there a demonstrative right or legitimate interest in a domain name where it is merely passively held by the Respondent (American Home Production Corporation v. Ben Malgioglio, WIPO Case No. D2000-1602).

The Respondent has not shown legitimate rights or interests in the domain name: his allegation that he used the domain name to sell "paper airplane kits" is not supported by any evidence and is simply not credible. Moreover, Respondent claims that he "officially" launched a consulting business as of February 1, 2002, and is since then advising on hourly or daily basis to investment industry under the domain name. However, the Respondent did not provide any credible evidence to support his allegations that he started his consulting business as of February 1, 2002. The Respondent filed only a print out of his web site placed under the domain name as of October 15, 2002. This printout does not prove his allegation that he started his business on February 1, 2002.

Even if the Respondent could prove that he has been running his consulting business since February 1, 2002, his activity would not qualify as a bona fides offering of services and demonstrate his legitimate interests in the domain name. The e-mail correspondence between Complainant’s representatives and the Respondent on February 13, 2002, indicates that the Respondent was aware of the dispute arising in connection with the domain name. In this e-mail to the Complainant’s representative T. Lewis, the Respondent predicted that the Complainant’s chances of success in a possible "resolution process" were not good and that the Respondent was (still) willing to listen to an offer (Annex 29 Response). This leads to the conclusion that the Respondent was evaluating the risks of a possible dispute at that time. The Complainant’s representative T. Lewis replied that he transferred the case to his legal counsel (Annex 29 Response). On May 31, 2002, the Complainant’s legal representative notified the Respondent that he was representing the Complainant and that the Complainant was considering legal action (Annex 13 Response). Therefore, the Panel believes that the Respondent had already notice and was fully aware of the dispute at the time he started his consulting business.

In addition, the Panel has not seen any evidence for demonstrable preparations to use the domain name in connection with the Respondent’s alleged consulting business before February 2002. Regarding preparations to use the domain name with respect to the consulting business after February 2002, the allegations of the Respondent are not plausible: on June 19, 2002, the Respondent filed an application for the incorporation of a company, Vector Aerospace Corporation, under the law of Delaware (Annex 14 Response). The Respondent then transferred the domain name to Vector Aerospace Corporation a month before the Complaint was filed. As mentioned above, by this time the Respondent was fully aware of the dispute with the Complainant. For over four years the Respondent did not use the domain name with legitimate interests and then, after notice of the dispute, the Respondent started an activity with respect to the domain name. However, the Respondent’s activities after notice of the dispute do not qualify as legitimate use of the domain name in connection with a bona fide offering of goods or services.

On the basis of these considerations, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name.

The Respondent indicated several times to the Complainant that he would transfer the domain name only for a price in excess of the registration and transfer costs. First, on January 29, 1999, the Respondent rejected the Complainant’s offer stating that the Complainant’s offer did not sufficiently reflect the market value of the Complainant. The Respondent was well informed about the Complainant’s stock market value ("TSE Information") and the e-mail shows that the Respondent would only accept offers reflecting the Complainant’s market value. Second, the Respondent has offered the domain name for sale with Afternic.com, an online domain broker, and set an asking price of US$22,000 (Annex 19 Complaint). Third, on February 13, 2002, the Respondent was still willing to listen to an offer (Annex 29 Response) and indicated in his e-mail the next day that a price of US$9,000 plus costs represented the "state of the market" (Annex 20 Complaint). The Respondent’s allegations in this context ("nonsense e-mail for the addressee" of January 29, 1999, and "to reply to an unsolicited offer in such a way as to turn away a potential purchaser") are not plausible. The Panel infers that the Respondent intended to sell the domain name for valuable consideration far in excess of the out-of-pocket costs. The Respondent’s behaviour for over three years indicates that he acquired the domain name for the purpose of selling it to the Complainant.

Further, the Panel considers the Respondent’s pattern of registering other domain names, which are identical or confusingly similar to famous and/or well-known marks. The Respondent registered other domain names of well-known marks such as "Norisbank" and "AOL". In this respect he has been engaged in the last two years in WIPO arbitration cases (American Online Inc. v. Daniel Mullen dba MSN and MSN Networks, WIPO Case No. D2000-1605; Norisbank Aktiengesellschaft v. MSN, WIPO Case No. D2000-1307). In both cases the Respondent had to transfer the domain names in question.

In the light of the above findings the following circumstance is relevant with respect to the requisite element of bad faith: the Complainant was incorporated on April 23, 2002. The first press release was published on April 25, 2002, and one day later, on April 26, 2002, the Respondent submitted his application to register the domain name. This cannot be a coincidence, considering that Respondent admits that he was at that time in Canada. Under the present circumstances, the Complainant has made a prima facie case that Respondent was aware of the publication of Complainant’s incorporation in several newspapers.

Although each of the above circumstances alone might be inconclusive, when viewed together and combined with the fact that the application for the domain name has been filed one day after the press release announcing Complainant’s incorporation, the preponderance of the evidence leads to the conclusion that the Respondent has not acted in good faith with respect to the domain name.

For all of the foregoing reasons, this Panel decides that the domain name <vectoraerospace.com> registered by Respondent is identical to the trademark "VECTOR AEROSPACE" owned by the Complainant, that the Respondent does not have rights or legitimate interests in respect of this domain name, and that the Respondent registered and used the domain name in bad faith. Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <vectoraerospace.com> be transferred to the Complainant.