orbitalsciences.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Orbital Sciences Corporation v. Finseth International

Case No. D2007-1482

1. The Parties

Complainant is Orbital Sciences Corporation of Dulles, Virginia, United States of America, represented by Dow Lohnes, PLLC, United States of America.

Respondent is Finseth International, Hermosa Beach, California, United States of America, represented by Lewis & Hand, LLP, United States of America.

2. The Domain Name and Registrar

The disputed domain name <orbitalsciences.com> (the “Domain Name”) is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2007. On October 12, 2007, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On October 12, 2007, Tucows transmitted by email to the Center its verification response confirming that the Respondent is Finseth International and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 23, 2007, naming the Respondent as Finseth International of Hermosa Beach, California. The Center verified that the Complaint together with the amendment to the Complaint satisfied 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 WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced October 30, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response November 19, 2007. The Response was filed with the Center on November 17, 2007.

The Center appointed Lawrence K. Nodine, David E. Sorkin and David H. Bernstein as panelists in this matter on December 13, 2007. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant Orbital Sciences Corporation is a developer and manufacturer of smaller, affordable space and rocket systems and provides a complete set of products from satellites to launch vehicles and target rockets. Complainant is also involved in several related businesses, including space engineering services and advanced transportation management systems. Complainant promotes its products and services locally through conventional advertising, and also nationally and internationally via its Internet website at “www.orbital.com”.

Complainant has used Orbital Sciences Corporation as its primary business name since 1982. Complainant has been the Registrant of the domain name <orbital.com> since March 1992.

Complainant owns United States Registration No. 2,264,116 for the mark ORBITAL and Design, registered July 27, 1999. The application was filed on August 29, 1997 and claims first use as of August 1, 1997.

Respondent registered the Domain Name on November 6, 1998.

At the time the Domain Name was registered, Respondent’s principal, Jim Finseth, was a Project Manager of Satellite Propulsion at Boeing Satellite Systems. Prior to that, Mr. Finseth had worked as a propulsion engineer for companies such as Lockheed Martin Missiles and Space, Sverdrup Technology, and McDonnell Douglas, dating back to 1985.

5. Parties’ Contentions

A. Complainant

With respect to paragraph 4(a)(i) of the Policy, Complainant states that:

Complainant has common law rights in the marks ORBITAL SCIENCES and ORBITAL SCIENCES CORPORATION, which it has used in connection with its business and services since 1982;

Since at least as early as March 1992, Complainant has been the registrant of the domain name <orbital.com> in connection with its company website, which is accessed by visitors throughout the world;

Respondent’s Domain Name is confusingly similar to Complainant’s ORBITAL SCIENCES, ORBITAL SCIENCES CORPORATION and ORBITAL marks (the “ORBITAL Marks”), because it is virtually identical to the ORBITAL Marks;

The only differences between Complainant’s ORBITAL SCIENCES mark and the Domain Name are the addition of the “.com” generic top-level domain and the deletion of a space;

The only differences between Complainant’s ORBITAL SCIENCES CORPORATION mark and the Domain Name are the two changes noted above and deletion of the term “corporation”;

Complainant owns the federal registered mark ORBITAL; and

The Domain Name is confusingly similar to Complainant’s registered ORBITAL mark because the only differences between the Domain Name and the ORBITAL mark are the addition of the “.com” generic top-level domain and the term “sciences” to the Complainant’s mark.

With respect to paragraph 4(a)(ii) of the Policy, Complainant states that:

Respondent has never been authorized by Complainant to use any of the ORBITAL Marks, including as part of the Domain Name;

Respondent cannot show that he used or demonstrably prepared to use the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute;

Respondent has used the Domain Name to direct visitors to third party commercial websites and, for a period of time, to other third party websites whose domain names are identical or confusingly similar to famous trademarks or service marks, none of which had anything to do with Respondent’s use of the Domain Name. These uses do not constitute a bona fide offering of goods or services by Respondent and therefore cannot establish Respondent’s rights or legitimate interests in the Domain Name;

Respondent is not commonly known by the Domain Name and has not acquired trademark or service mark rights in the Domain Name;

Respondent is not making a legitimate non-commercial or fair use of the Domain Name, without intent to misleadingly divert consumers for commercial gain; and

Respondent’s use of the Domain Name to display advertisements and direct visitors to third party commercial websites, for which activity Respondent presumably receives compensation, does not establish a legitimate interest in the Domain Name.

With respect to paragraph 4(a)(iii) of the Policy, Complainant states that:

Respondent’s conduct constitutes bad faith under the Policy because Respondent uses the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the “www.orbitalsciences.com” website by creating a likelihood of confusion with Complainant’s ORBITAL Marks as to the source, sponsorship, affiliation, or endorsement of its website;

Respondent has no legitimate business connection with the Domain Name; the only evident reason that Respondent uses the Domain Name is to increase traffic to Respondent’s website by creating confusion with Complainant’s famous ORBITAL Marks;

Respondent’s use of the Domain Name to display commercial banner advertisements that lead visitors to one or more third party commercial websites, for which activity Respondent presumably receives compensation, constitutes bad faith under the Policy; and

Respondent’s website contains text referring to an adult website and graphics that are sexual in nature. The intent to divert visitors to a website containing materials that are sexual or pornographic in nature precludes a finding of good faith under the Policy.

B. Respondent

With respect to paragraph 4(a)(i) of the Policy, Respondent states that:

Complainant has failed to establish that it possesses common law trademark rights in the ORBITAL SCIENCES and ORBITAL SCIENCES CORPORATION marks because “orbital sciences” is a descriptive and technical term referring to a scientific discipline;

Complainant does not possess a registered trademark for the term “orbital sciences”;

Complainant obtained its registration for the trademark ORBITAL and Design after Respondent registered the Domain Name;

Complainant has not alleged that it possessed common law rights to its purported ORBITAL SCIENCES mark at the time that Respondent registered the Domain Name in November 1998, and has failed to submit any evidence of such rights;

The Domain Name is not identical or confusingly similar to the single word ORBITAL. The addition of the word “sciences” to the word “orbital” transforms its meaning, rendering the two terms completely different; and

The Domain Name is not confusingly similar to a mark in which Complainant had rights at the time of registration.

With respect to paragraph 4(a)(ii) of the Policy, Respondent states that:

Respondent registered the Domain Name for its association with Mr. Finseth’s professional occupation and because Mr. Finseth thought that it would be a good name to have for a scientific, informational website. Respondent has not had the time or motivation to develop a scientific website, but has used the website as a showcase for Mr. Finseth’s off-beat sense of humor, and as the equivalent of a personal MySpace page. Such use, alone, is evidence of his legitimate rights; and

Registration and use of a descriptive or generic dictionary word domain name is presumptively legitimate. Specifically, registration of the Domain Name is presumptively legitimate given Respondent’s study of “orbital sciences” and that term’s widespread usage in the field of aerospace engineering;

With respect to paragraph 4(a)(iii) of the Policy, Respondent states that:

Respondent registered the <orbitalsciences.com> Domain Name in 1998, nearly a year before Complainant acquired a trademark registration for the ORBITAL design mark;

Respondent was not aware of Complainant’s pending trademark application for ORBITAL at the time it registered the Domain Name;

Respondent used the Domain Name as its own personal Web page to make jokes and to express political views, often at the same time. The Web page serves no commercial purpose;

Respondent did not register the Domain Name with the intent to sell it to Complainant or Complainant’s competitors. Respondent has never attempted or offered to sell the Domain Name to Complainant;

Respondent did not register the Domain Name to disrupt Complainant’s business. The parties have co-existed for nine-and-a-half years, without any incidence of confusion;

Respondent is not under a set time frame to develop his Domain Name into a more serious website as originally contemplated;

Respondent’s use of the website is not pornographic in nature;

The current use of the website exhibits no bad faith intent towards Complainant;

Due to the generic nature of the Domain Name for topics relating to scientific experiments in space engineering, Respondent believed that it was available for such use.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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.

A. Identical or Confusingly Similar

Complainant owns a federal registration for the ORBITAL and Design mark. There is no disclaimer in the registration of the word “orbital”, which means that the U.S. Patent and Trademark Office does not consider the word “orbital” to be descriptive for Complainant’s services. The Domain Name incorporates the textual component of the registered mark in its entirety, and merely adds the dictionary term “sciences” and a generic top-level domain (“gTLD”), here “.com”.

The Panel finds that the Domain Name <orbitalsciences.com> is confusingly similar to a trademark or service mark in which the Complainant has rights. The dominant feature of the domain name is Complainant’s registered ORBITAL mark. The mere addition of the non-distinctive, descriptive or generic term “sciences” does not change the overall impression of the mark. See, American Express Co. v. Fang Suhendro a/k/a American Express Indonesia, NAF Case No. FA129120 (holding that respondent’s <americanexpressrewards.com> domain name is confusingly similar to complainant’s AMERICAN EXPRESS mark because it merely adds the generic term “rewards” to the end of complainant’s mark; the addition of “rewards” does not add any distinctive features because it could easily be associated with complainant’s business, and complainant’s AMERICAN EXPRESS mark is still the dominant feature of the disputed domain name). Similarly, the gTLD should be disregarded when considering whether the Domain Name is confusing similarity to Complainant’s trademark. See, e.g., Forward Association, Inc., v. Enterprises Unlimited, NAF Case No. FA95491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address.”). Accordingly, the Panel finds that <orbitalsciences.com> is confusingly similar to Complainant’s ORBITAL mark.¹ See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.

In light of this holding, the Panel need not consider whether Complainant also has common law rights in the trademarks ORBITAL SCIENCES and ORBITAL SCIENCES CORPORATION.

B. Rights or Legitimate Interests

A complainant is required to make out a prima facie case that a respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, respondent carries the burden of rebutting this showing. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See, Morgan Freeman v. Mighty LLC, WIPO Case No. D2005-0263; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.

Complainant has established that it has not licensed or otherwise authorized Respondent to use its mark. Respondent responds that it has a legitimate interest in the Domain Name because Mr. Finseth has worked in the “orbital sciences” field for almost twenty years and that, through his “Finseth International” entity, he registered the Domain Name in order to create a “scientific, informational Web site”. Respondent further argues that it has a presumptively legitimate interest in the Domain Name because it is comprised of generic words.

Despite Respondent’s assertions, it has not created a website with any relationship whatsoever to the orbital sciences field (despite nearly a decade of holding the Domain Name), nor has it shown any demonstrable preparations to do so. Accordingly, Respondent cannot rely on paragraph 4(c)(i) of the Policy which deems a use legitimate if a respondent is using, or has made “demonstrable preparations to use, the domain name . . . in connection with a bona fide offering of goods or services.” World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306.

Nor can Respondent prevail by asserting that the term “orbital sciences” is generic or merely descriptive. Assuming for purposes of argument that “orbital sciences” is generic or descriptive of a particular scientific field, Respondent’s website does not relate to the “orbital sciences” field and thus cannot qualify as a legitimate interest. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.2.²

Therefore, the Panel finds that Complainant satisfied its prima facie showing and Respondent, to whom the burden of production has shifted, has not rebutted that with evidence of a legitimate interest in the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires Complainant to prove registration and use in bad faith. Although Respondent’s actions are not necessarily indicative of good faith use, Complainant has not succeeded in proving that Respondent’s registration and use was affirmatively in bad faith.

Respondent was likely aware of Complainant’s rights at the time it registered the Domain Name. Respondent’s principal was in the aerospace industry for roughly a decade when Respondent registered the Domain Name, making it difficult to believe he had not at that time heard of Complainant. Mere knowledge, however, is not determinative of bad faith. Rather, the issue is whether Respondent had bad faith intentions when it registered the Domain Name. If, for example, it registered the Domain Name with the hope of selling it to Complainant at a profit, that would be indicative of bad faith; if, instead, Respondent registered the Domain Name for the purpose of posting non-commercial commentary relevant to the orbital sciences field, that would not be indicative of bad faith.

Because the bad faith factor turns on Respondent’s subjective intentions, it is difficult for the Panel to determine what Respondent truly intended at the time of registration. The Panel can, however, rely on circumstantial evidence to try to discern Respondent’s intentions, and can draw appropriate inferences based on all of the evidence in the record, including the ways in which Respondent has used the Domain Name since registration.

In considering whether Complainant has shown that Respondent registered and used the Domain Name in bad faith, the Panel has thus considered Respondent’s use of the Domain Name during the nine years since it registered the Domain Name. As Respondent characterizes it, it has used the Domain Name to resolve to a website that serves as a kind of personal “My Space” type webpage, at which Respondent posts his musings and jokes. Some of those musings and jokes may be in bad taste, but Respondent’s use of the website for these postings, especially given the non-commercial nature of the website, does not appear to constitute the kind of bad faith, abusive cybersquatting contemplated by the Policy. Further, the Panel finds that none of the classic indications of bad faith use are present in this case – Respondent has not offered to sell the Domain Name; Respondent has not attempted to conceal its identity nor prevent itself from being located; and Respondent has not intentionally attempted to attract, for commercial gain, Internet users to the “www.orbitalsciences.com” website by creating a likelihood of confusion with Complainant’s ORBITAL Marks as to the source, sponsorship, affiliation, or endorsement of its website. Policy paragraph 4(b)(iv). The only advertisements on the website are for third parties associated with the operation of his website, not for companies selling products or services in competition with Complainant. The fact that the Domain Name has been used for a non-commercial website throughout this period tends to support Respondent’s contention that Complainant has failed to prove bad faith.

That is not to say that evidence of non-commercial use will always defeat a claim of bad faith. If a disputed domain name resolves to a website with pornographic or other offensive content, that may well be indicative of bad faith unless there is a persuasive explanation for why that content is relevant to the particular domain name. Compare, Patricia Ford and Online Creations Inc. v. Damir Kruzicevic, WIPO Case No. D2001-0059 (bad faith to use famous model’s name in domain name for website containing pornographic content not related to complainant) with Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654 (bad faith not shown where website contained pornographic content, domain name was a common woman’s name, and the corresponding trademark was not particularly well known). That is not, however, the case here. Despite Complainant’s assertion to the contrary, there is no evidence in the record that the site has been used for pornographic content. The dancing women on the site are clothed and the statement that the website is “an adult site” seems to reflect only Respondent’s sense of humor (such as it is) since the site goes on to explain that “over 2 years old is an adult.” Similarly, although Respondent’s musings may be a bit strange, they do not rise to the level of offensive content that could tarnish Complainant’s trademark or reputation.

The Panel is also not convinced that Respondent has engaged in bad faith passive use. Complainant’s ORBITAL SCIENCES mark is not so well-known a mark that the holding of the registration for a decade (with or without use) should constitute Telstra-like bad faith passive use. See, Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) (“[I]naction ([e.g.,] passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith.”).

For these reasons, the Panel finds that Complainant has failed to sustain its burden of proving that Respondent registered and used the Domain Name in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dated: January 16, 2008

¹ Contrary to Respondent’s assertion, the fact that the domain name was registered prior to Complainant’s trademark does not prevent a finding of confusing similarity, but is only relevant to an assessment of bad faith. See, AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527 (October 2, 2003).

² Although the WIPO Overview of WIPO Panel Views on Selected UDRP Questionsis not binding precedent, it embodies a consensus of positions set forth in the opinions of several WIPO UDRP panelists during the first five years of the administration of the UDRP. See, Fresh Intellectual Properties, Inc. v. 800Network.com, Inc.,WIPO Case No. D2005-0061. As such, it is prudent for panelists to follow such a consensus in order to promote consistency among UDRP decisions. See, Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014.