WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Moog Inc. v. Bubparin Promsodra / Registration Private, Domains By Proxy, LLC

Case No. D2017-0487

1. The Parties

The Complainant is Moog Inc. of East Aurora, New York, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Bubparin Promsodra of Bangkok, Thailand / Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States.

2. The Domain Name and Registrar

The disputed domain name <moog-crossbow.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2017. On March 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 9, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 20, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on March 22, 2017.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2017.

The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on May 8, 2017. 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.

4. Factual Background

The Complainant is a worldwide designer, manufacturer, and integrator of precision control components and systems which control military and commercial aircraft, satellites and space vehicles, launch vehicles, missiles, automated industrial machinery, wind turbines, marine and medical equipment. The Complainant has become a global leader in control solutions and is present in 27 countries worldwide, employing nearly 11,000 people. Its shares are publicly traded on the New York Stock Exchange and in 2016 the Complainant reported sales of USD 2.41 billion.

The Complainant is the owner of trade mark registrations across various jurisdictions, which include a registration of the word mark MOOG in the United States (No. 0893181 registered as of June 23, 1970), two international registrations of the word mark MOOG (including No. 402981 registered as of November 23, 1973) in around twenty countries, as well as a United States registration of the word mark CROSSBOW (No. 2342844 registered as of April 18, 2000) as well as an international registration of the word mark CROSSBOW (No. 1291931 registered as of January 17, 2016) in the countries of the European Union, hereafter together referred to as the “Trade Marks”.

In June 2011, the Complainant announced its acquisition of Crossbow Technology, Inc., a designer and manufacturer of acceleration sensors that are integrated into inertial navigation and guidance systems. The acquisition led to the forming of Moog Crossbow, a wholly owned subsidiary of the Complainant.

The Domain Name was registered by Crossbow Technology Inc. on June 1, 2011, and, after the initial registration lapsed, by the Respondent on July 13, 2016. The Domain Name does not resolve to an active website.

On December 6, 13, and 20, 2016, the Complainant sent cease-and-desist letters to the Respondent at the address noted in the WhoIs, a privacy service shielding the name and contact details of the underlying registrant.

5. Parties’ Contentions

A. Complainant

According to the Complainant, the Domain Name must be considered confusingly similar to each of the Trade Marks, as it captures and combines the Trade Marks in their entirety, while merely adding a hyphen which does not diminish the confusing similarity between the Domain Name and the Trade Marks. The Complainant states that the Respondent is not sponsored by or affiliated with the Complainant in any way and that it has not given the Respondent permission to use the Trade Marks in any manner, including in domain names. The Complainant also submits that there is no evidence that the Respondent is commonly known by the Domain Name, including the relevant WhoIs information. Together, the Complainant submits, these facts evidence a lack of rights or legitimate interests. The Complainant brings forward that the Domain Name resolves to an empty page featuring no substantive content or links which underlines this lack of rights or legitimate interests.

The Complainant submits that the Trade Marks are known internationally, and that it has marketed and sold its goods and services using the MOOG trade mark since 1950 and that its being the global leader in control solutions operating in 27 countries worldwide, with reported revenue of USD 2.41 billion in 2016, demonstrates the Complainant’s fame. Therefore, according to the Complainant, when the Respondent took control of the Domain Name, the Respondent knew, or at least should have known, of the existence of the Trade Marks and that registration of domain names containing well-known trademarks constitutes bad faith per se.

The Complainant contends that the Domain Name, which captures and combines the Trade Marks in their entirety, while merely adding a hyphen, can only be taken as intending to cause confusion among Internet users as to the source of the Domain Name, and thus must be considered as having been registered and used in bad faith pursuant to Policy, paragraph 4(b)(iv), with no good faith use possible. According to the Complainant, the Respondent did not react to the cease-and-desist letters which it sent in December 2016, which is a factor which, together with the other points brought forward, should lead to a finding of bad faith registration and use of the Domain Name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has shown that it has registered rights in the Trade Marks. The Domain Name is confusingly similar to the Trade Marks as it incorporates both the MOOG and CROSSBOW marks in their entirety. The addition of a hyphen between the marks MOOG and CROSSBOW does not avoid the confusing similarity between the Domain Name and the Trade Marks (see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9). The generic Top-Level Domain (“gTLD”) “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 2.0, paragraph 1.2).

Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has to make out at least a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name (WIPO Overview 2.0, paragraph 2.1). Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Marks as part of the Domain Name, is not commonly known by the Domain Name and has not acquired trade mark rights in the Domain Name. The Respondent’s use of the Domain Name in the present case does not amount to a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.

In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was or should have been aware of the Trade Marks, since:

- the Respondent’s registration of the Domain Name occurred 46 years after the registration of the earliest of the Trade Marks;

- the mark MOOG, which is incorporated in its entirety in the Domain Name, does not appear to be a dictionary word, nor a name of which it is likely that a registrant would spontaneously or accidentally think of;

- the Domain Name, consisting of a combination of the marks MOOG and CROSSBOW with a hyphen in between, was originally registered by Crossbow Technology Inc. just before the announcement of its merger with the Complainant in 2011;

- a simple trade mark register search, or even an Internet search, prior to registration of the Domain Name in its name would have informed the Respondent of the existence of the Trade Marks.

Under these circumstances, the Panel concludes that the Domain Name has been registered in bad faith.

With regard to bad faith use, the fact that the Domain Name at this stage does not appear to resolve to an active website does not imply a lack of bad faith. As set out in the WIPO Overview 2.0, paragraph 3.2, the consensus view is that the apparent lack of so-called active use (e.g., to resolve to a website) of a domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and HUGO BOSS Trade Mark Management GmbH & Co. KG, HUGO BOSS AG v. Dzianis Zakharenka, WIPO Case No. D2015-0640). In accordance with this UDRP jurisprudence, a UDRP panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith.

In this case, the Panel finds that the following circumstances together are found to be indicative of bad faith use of the Domain Name:

- the probability that the Respondent was aware or should have been aware of the Complainant’s rights in the Trade Marks;

- the non-dictionary nature of the mark MOOG incorporated in the Domain Name, such that the Respondent cannot claim to have “accidentally” registered a domain name that happens to correspond to the Trade Marks;

- the lack of a formal Response of the Respondent;

- the lack of a response of the Respondent to the cease-and-desist letters sent by the Complainant in December 2016;

- the hiding by the Respondent of its identity through the use of a proxy domain registrar.

Therefore, the Panel concludes that the Domain Name has been registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <moog-crossbow.com> be transferred to the Complainant.

Wolter Wefers Bettink
Sole Panelist
Date: May 12, 2017