The Complainant is Avio S.p.a., Italy, represented by Studio Torta S.r.l., Italy.
The Respondent is William Obeid, New York, United States of America, represented by Alston & Bird LLP, Atlanta, Georgia, United States of America.
2. The Domain Name and Registrar
The disputed domain name <avio.com> is registered with Register.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2008. On February 29, 2008 the Center transmitted by email to Register.com, Inc. a request for registrar verification in connection with the domain name at issue. On February 29, 2008 Register.com, Inc. transmitted by e-mail to the Center its verification response stating that the Respondent listed in the Complaint was not the registrant of the Disputed Domain Name. The Registrar noted that the registrant had activated a privacy protection service which is a service that Register.com, Inc. provides to customers who wish to keep their contact information private. The Registrar provided the Center with the real registrant information. In response to a notification by the Center that the registrant information had been changed, the Complainant filed an Amended Complaint on March 4, 2008. The Center verified that the Amended 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 on March 12, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2008 The Response was filed with the Center on March 28, 2008.
The Center appointed Alistair Payne as the sole panelist in this matter on April 8, 2008. The Panel finds that it was properly constituted. 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.
On April 11, 2008, the Center was notified by the Complainant’s authorized representative that the Parties were attempting to settle the dispute.
On April, 14, 2008, the Panel, by way of Procedural Order No. 1, suspended the proceedings for one month pending receipt of confirmation from the Complainant that an acquisition or settlement has been effected. As the Complainant failed to provide a confirmation to the Center by May 14, 2008 the Panel proceeded to issue this decision.
4. Factual Background
The Complainant is an Italian company established in 1908 which operates in the aerospace business. The Complainant owns an Italian registered word trade mark for AVIO which was filed on July 8, 2003. The trade mark was registered in relation to the goods and services included in the international classes 7, 9, 12, 37 and 42.
The Respondent is an individual who founded Avio, Inc. which was officially incorporated under the laws of Delaware, United States, on March 22, 2000. Avio’s business focused on the development of mobile communication products. In 2000 the Respondent purchased the Disputed Domain Name from a third-party for US$ 5,000 and it was being used from 2000 until 2002 to promote Avio, Inc.’s business. On March 5, 2001, Avio, Inc. filed two United States word mark applications for AVIO in relation to international classes 9 and 38.
The Complainant is seeking the transfer of the Disputed Domain Name.
5. Parties’ Contentions
A. Complainant
The Complainant argues that the Disputed Domain Name is identical to its Italian registered word mark and to its company name.
The Complainant contends that the Respondent has no rights or legitimate interests on the Disputed Domain Name. The Complainant asserts that the Respondent is not affiliated or connected with the Complainant and that it has not been authorized by the Complainant to use the AVIO trade mark.
Moreover, the Complainant maintains that it is unlikely that the Respondent was unaware of the Complainant’s trade mark rights, in particular because the word “avio” is a coined word which does not belong to the Italian or English vocabulary. Therefore, in the Complainant’s view the Disputed Domain Name was registered in bad faith. The Complainant also submits that the Disputed Domain Name has been used in bad faith. In particular, the Complainant alleges that the Respondent has never used the Disputed Domain Name and it has offered to sell it to the Complainant for more than the costs involved in registration.
B. Respondent
The Respondent concedes that the Disputed Domain Name is identical to the Complainant’s trade mark, but he also contends that he has rights in the Disputed Domain Name because Avio, Inc. owns two United States trade mark registrations for AVIO which have been registered in relation to wireless communication services and for computer hardware and software. Both applications were filed on March 5, 2001.
The Respondent notes that he had no knowledge of the Complainant’s business at the time he selected the word “avio” as a name and trade mark for his company’s business. Moreover, the Respondent alleges that at that time he believed that he had coined a new term which had no meaning in any language. It was not until much later on that the Respondent discovered that in Italian the word “avio” can be roughly translated into English as the prefix “air-”.
The Respondent contends that he developed and launched a website for his company’s business at the Disputed Domain Name in September 2000 and that, as a result, he both registered and used the Disputed Domain Name in good faith.
The Respondent also notes that Complainant has engaged in reverse domain name hijacking, since Complainant did not conduct a reasonable investigation that would have revealed the Respondent’s rights in the Disputed Domain Name.
6. Discussion and Findings
If the Complainant is to succeed, it must prove each of the three elements referred to in Paragraph 4(a) of the Policy, namely that:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in Paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant owns an Italian registered word mark for AVIO, filed on July 18, 2003, which is identical to the Disputed Domain Name.
The Complainant has also alleged that it has been trading under the “avio” name or mark for the last 100 years, but has provided little evidence of such use.
The Panel notes that the Disputed Domain Name was registered before the Complainant applied for its Italian trade mark. However, in the Panel’s view, the circumstance that the Complainant’s trade mark registration postdates the Disputed Domain Name’s registration is not relevant under Paragraph 4 (a)(i) of the Policy. Indeed, the Policy does not require that the trade mark be registered prior to the Disputed Domain Name. (see Digital Vision, Ltd. v. Advanced Chemill Systems,
WIPO Case No. D2001-0827 and AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527). This circumstance may only be relevant to the assessment of bad faith pursuant to Paragraph 4(a)(iii) of the Policy, which is considered below.
In light of the above, the Panel accepts that the Disputed Domain Name is identical to the Complainant’s Italian registered trade mark.
As such, the Complainant has satisfied Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent argues that he has rights and legitimate interests in the Disputed Domain Name because, as founder of Avio, Inc. he owns two United States trademark registrations for AVIO.
The Complainant maintains that the Respondent has no rights or legitimate interests in the Disputed Domain Name because the Disputed Domain Name does not resolve to a current website and the word “avio” is a coined word and was used by the Complainant prior to registration of the Disputed Domain Name and that any use by the Respondent infringes its rights.
The Respondent rebuts this argument on the basis that it had no knowledge of the Complainant’s business in Italy and that his company Avio, Inc. independently used and registered the AVIO mark and the Disputed Domain Name in the United States of America prior to commencement of this proceeding. However the Respondent’s business dissolved and use of the website ceased in 2002 although the Respondent maintains that he plans on using the Disputed Domain Name in the future.
Although the Respondent is the personal registrant of the Disputed Domain Name and Avio, Inc. is the owner of the registered trade marks for AVIO in the United States, the Panel accepts the Respondent’s evidence that he owned the company and business and acquired the Disputed Domain Name for the purposes of developing a website and on-line presence for the company and effectively licensed the use of the Disputed Domain Name to the company. As there is evidence that the Disputed Domain Name was used in connection with a bona fide offering of goods and services by the company owned by the Respondent even though this company is no longer in business, the Respondent has fulfilled the requirements of Paragraph 4(c)(i) of the Policy and accordingly is deemed to have rights and legitimate interests in the domain name.
C. Registered and Used in Bad Faith
The Panel considers that, at the time of the Disputed Domain Name’s registration, it was highly unlikely that the Respondent was aware of the Complainant’s trademark rights. The Panel notes that the business in which the Respondent and his company were involved was entirely different from the Complainant’s activity and that there is no reason to infer bad faith based on competitor activity. Further, as noted above, the Complainant’s trade mark was registered only in Italy and only in 2003, after Avio, Inc. had filed two United States trade mark applications for AVIO (and the Respondent already purchased and used, through the above mentioned company, the Disputed Domain Name). Moreover, the Complainant has not provided any evidence to suggest that it or its trade mark was known in the United States of America at the time of the Disputed Domain Name’s registration.
Concerning the Respondent’s attempt to sell the Disputed Domain Name to the Complainant, the Panel finds that such circumstance cannot be deemed evidence of bad faith. Indeed, even taking into account this circumstance, the Panel is unwilling to infer that the Respondent registered the Disputed Domain Name primarily for the purpose of selling it. The Panel notes that the Respondent’s proposal was made in 2005 and hence five years after the Disputed Domain Name’s registration and after that the domain name at issue was used by the Respondent to promote the Avio, Inc.’s business.
The Panel is therefore satisfied that the Disputed Domain Name has been neither registered nor used in bad faith by the Respondent. The Complainant has, therefore, not met the requirements of Paragraph 4(a)(iii) of the Policy.
D. Reverse domain name hijacking
A finding of Reverse Domain Name Hijacking may be made if “the Complainant knew or should have known at the time that it filed the Complaint that it could not prove that the domain name was registered in bad faith”, see Futureworld Consultancy (Pty) Limited. v. Online advice, WIPO Case No. D2003-0297.
Reverse domain name hijacking is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name”. The onus of proving bad faith is on the Respondent, and mere lack of success of the Complaint is not of itself sufficient to constitute reverse domain name hijacking, see Deutsche Post AG v. NJDomains, WIPO Case No. D2006-0001.
In all the circumstances the Panel does not believe that the Complaint was made in bad faith and on the balance of probabilities, therefore, the Panel does not believe that this was a case of reverse domain name hijacking.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Alistair Payne Sole Panelist
Dated: May 16, 2008
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