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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Robert Segelbaum v. Steve Elisberg
Case No. D2001-0077
1. The Parties
The Complainant is Robert Segelbaum, an individual residing in the state of New York.
The Respondent is Steve Elisberg, an individual residing in Colorado.
2. The Domain Name and Registrar
The domain name at issue is <airhitch.com> (the Domain Name). The registrar with which the Domain name is registered is Network Solutions, Inc. (the Registrar or NSI), located in Herndon, Virginia, USA.
The Registrar provided contact details showing the Respondent Steve Elisberg as the administrative, technical and billing contact with respect to the Domain Name.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complainant’s Complaint in hardcopy on January 19, 2001. On January 23, 2001, the Center sent the Complainant an Acknowledgment of Receipt of the Complaint.
On February 6, 2001, the Center sent to the Registrar, NSI, a Request for Registrar Verification. On February 8, 2001, the Registrar transmitted to the Center via e-mail a Registrar Verification Response confirming that the Domain Name is registered with NSI and that the Respondent is the current registrant of the Domain Name.
The Center completed a Formalities Compliance Review on February 27, 2001, and verified that the Complaint satisfied the formal requirements of the ICANN Uniform Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Dispute Resolution Policy (the Uniform Rules), and the Supplemental Rules for Uniform Domain Dispute Resolution Policy (the WIPO Supplemental Rules). Complainant made the required payment to the Center. Upon independent review, the Administrative Panel also finds that the Complaint satisfies the formal requirements of the Policy, the Uniform Rules, and the Supplemental Rules.
On February 27, 2001, the Center transmitted to the parties, with copies to NSI and ICANN, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of March 18, 2001 by which the Respondent could file a Response to the Complaint. This Notification was sent to the Respondent. After receiving the Respondent’s Response, the Center notified the parties that it would proceed to appoint the Administrative Panel.
In view of the parties’ selection of a single-member panel, the Center invited Dana Haviland to serve as the sole panelist. On April 5, 2001, after having received a Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties via e-mail a Notification of Appointment of Administrative Panel and Projected Decision Date, appointing the aforementioned panel. The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.
The Panelist requested additional information from the parties, which was submitted by Complainant on May 2 and May 15, 2001, and by Respondent on May 1, 2001, and has been considered herein.
4. Factual Background
Complainant Robert Segelbaum, an arranger of commercial air transportation, has registered trademarks in the United States and Canada for the mark AIRHITCH, dating from 1984. Complaint para. 12.1. Complainant registered the domain name <airhitch.org> in August 1994.
In August 1996, the Respondent registered the Domain Name <airhitch.com>. Complaint Annex 1.
5. Parties’ Contentions
The Complainant contends that the Domain Name registered by the Respondent is identical to Complainant’s Airhitch trademark. Complaint para. 12.1. Complainant contends that he has used that name for over fifteen years in connection with his business as an arranger for commercial air transport. Id..
Complainant further contends that the Respondent has no rights or legitimate interests in the Domain Name. Complainant alleges that Respondent leased the Domain Name in 1999 to a third party "who has been using it to transact business with the public"; that the Domain Name currently points to a page advertising the services of Air Courier Association, "a company having no connection with the Airhitch operation"; and that Respondent is a member of the board of directors of Air Courier Association. Complaint para. 12.3-12.4.
Finally, Complainant contends that the Respondent has registered and is using the Domain Name in bad faith. As evidence of bad faith, Complainant alleges that he contacted the Respondent on September 29, 2000, attaching copies of his United States trademark registration, and asked that Respondent return the Domain Name to Complainant, but received no response. Complaint para. 12.4, Annex 12(a). Complainant further notes that the party to whom Respondent has "delegated control of" the Domain Name has refused to transfer it back to the Respondent without "’some money’ in return." Complaint para. 12.5. Complainant estimates that "approximately 100,000 potential visits" to his Airhitch website are diverted annually by Respondent’s use of the Domain Name, creating "costly and wasteful confusion". Complaint, para. 12.6, Annex 6.
Respondent contends that his corporation, Air Courier Association, has a contract with a company called Whole Earth Travel, whereunder he claims the right to use the Airhitch trademark, and states that he believes that Whole Earth Travel, not Complainant, is "the owner of Airhitch." He states that he has never done business with Complainant, and that he "does a large annual dollar volume of business reselling the goods of Whole Earth Travel who claim they are Airhitch." Response, para. 12.3. Respondent states that Air Courier Association has used the name <airhitch.com> on the Internet since 1997. Response, para. 12.4. Respondent states that he has not delegated control of the domain name to another party but that the Domain Name "is being used by Air Courier Association in its business dealing with Whole Earth Travel and has never been for sale to another party." Response, para. 12.5. The Respondent further states that he has not diverted potential visitors of <airhitch.com> to <aircourier.com>. Response, para. 12.6.
The Respondent contends that he has rights to and legitimate interests in the domain name, because he "had a bona fide offering of Airhitch services prior of this notice of dispute." Response para. 12.3. In support of this allegation, he submits copies of an April 17, 1998 contract between Air Courier Association and Whole Earth Travel, pursuant to which his company is "a reseller of the goods of Whole Earth travel, which are Airhitch travel vouchers," and copies of various advertisements of Airhitch services by Air Courier Association in a magazine, travel guide, and website. Response, Annexes 1-4.
Respondent denies that he registered the domain name in bad faith. He states that he has never offered the Domain Name for sale or prevented the holder of the trademark from reflecting the mark in a corresponding domain name. Respondent further states that he is not disrupting the business of a competitor. He states that he believes the owner of Airhitch is the individual who is the president of Whole Earth Travel and not Respondent. Response para. b. Respondent alleges that he called the yellow pages number for Airhitch on March 9, 2001 and the person who answered said "Whole Earth Travel." Response, Annex 5.
In response to questions from the Panelist, the Complainant states that in the past he had been a consultant to Whole Earth Travel and in January 1996 became a shareholder in that company pursuant to a shareholder agreement. He further acknowledges that: "A revocable license, or permission, for use the name and trademark was granted to WET as part of the aforementioned shareholder’s agreement." Complainant states that the license was revoked by an email of January 15, 2001, confirmed by a letter from his attorney on January 25, 2001, alleging that the Airhitch name was being damaged by Whole Earth Travel’s failure to pay trade debts and complaining of its failure to repay a substantial loan from Complainant.
6. Discussion and Findings
Under the terms of the Policy, the Complainant must prove three distinct elements in order to prevail on a claim for transfer of a domain name. These elements are set forth in Paragraph (a) of the Policy:
- that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
- that the Respondent has no rights or legitimate interests in respect of the domain name; and
- that the domain name has been registered and is being used in bad faith.
a) Identity or confusing similarity of domain name and trademark
The evidence shows that the Domain Name <airhitch.com> registered by the Respondent is identical or confusingly similar to the Complainant’s mark, proof of which is shown at Annex 4 of the Complaint.
b) No legitimate interest in domain name
A party may demonstrate its rights or legitimate interest in a domain name under paragraph 4(c) of the Policy in any of the following ways:
(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 bonafide 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.
Respondent has submitted evidence to show use of the Domain Name in connection with a bonafide offering of goods and services prior to notice of the dispute, but Respondent’s right to use the Airhitch mark in connection with its business activities has not been conclusively established. Although the Complainant has admitted to licensing the Airhitch trademark to Whole Earth Travel, the Domain Name utilizing the trademark was registered by Respondent Elisberg. The contract between Whole Earth Travel and Air Courier Association submitted by Respondent requires the former’s prior approval for Air Courier’s use of the Airhitch name, and Respondent has not submitted any written evidence of approval for use of the Airhitch name in the Domain Name by Air Courier Travel or by Respondent himself. The Panelist need not reach the issue of whether Respondent has sufficiently shown a right or legitimate interest in the Domain Name, however, because the Complainant has failed to satisfy the bad faith registration and use requirement of the claim, as discussed below.
c) Bad faith registration and use of the domain name
Paragraph 4(b) of the Policy sets forth four examples of bad faith, which are not exclusive, but which "shall be evidence of 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 website 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 website or location or of a product or service on your website or location.
The evidence is insufficient to show bad faith registration and use of the Domain Name by the Respondent under any of the four examples given in the Policy, and Complainant’s allegation with respect to Respondent’s failure to reply to Complainant’s September 2000 notice does not alone establish bad faith. More importantly, Complainant’s admission that the Airhitch trademark was in fact licensed to the entity from which Respondent claims a right to the Domain Name for a period covering Respondent’s registration and use of the Domain Name tends to negate any inference of bad faith.
The evidence suggests that there is an underlying business dispute with respect to the use of the Airhitch mark by Complainant’s licensee Whole Earth Travel, and that this dispute over the Domain Name is related to that dispute. Resolution of such business disputes is beyond the scope of this domain name proceeding, which is intended only to provide a remedy for bad faith registration and use of a domain name. Whether Respondent himself has ever had any contractual right to use the Airhitch mark in the Domain Name and whether that right, if any, has now ended by virtue of Complainant’s alleged termination of a license to the party from whom Respondent claims contract rights are legitimate issues of law and fact, but are not resolved herein, because the evidence does not establish Respondent’s bad faith registration or use of the Domain Name.
It is the decision of the Panel that the Complainant has not satisfied its burden of proving bad faith registration and use, an essential element of a Complaint under Paragraph 4(a) of the Policy, and that the Complainant’s claim for transfer of the Domain Name is therefore denied.
Dated: June 21, 2001