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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Skyjack Inc. v. Slava Yevdayev

Case No. D2006-1189

 

1. The Parties

The Complainant is Skyjack Inc., Guelph, Ontario, Canada, represented by Blake, Cassels & Graydon, LLP, Canada.

The Respondent is Slava Yevdayev, Hadera, Israel, represented by Joseph Zaltzman & Co. Law Offices, Ramat Gan, Israel.

 

2. The Domain Name and Registrar

The disputed domain name <skyjack.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 September 14, 2006. On September 18, 2006, the Center transmitted by e-mail to Tucows a request for registrar verification in connection with the domain name at issue. On September 18, 2006, Tucows transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Respondent. The Center verified that 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 September 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2006. The Response was filed with the Center on October 16, 2006.

The Center appointed Douglas M. Isenberg, Mayer Gabay and Daniel R. Bereskin, QC as panelists in this matter on November 3, 2006. 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.

The Center received additional communications from the Complainant dated November 3, 2006, which the Center transmitted to the Panel on November 6, 2006. The Center received additional communications from the Respondent dated November 9, 2006, which the Center transmitted to the Panel on November 10, 2006.

 

4. Procedural Issue

Although neither the Rules nor the Supplemental Rules expressly permits a party to submit an unsolicited supplemental filing, panels under the Policy “have discretion to accept an unsolicited supplemental filing from either party.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.2, “http://arbiter.wipo.int/domains/search/overview/index.html” (visited November 14, 2006). In this case, the Panel declines to accept the supplemental filings of either party, given that neither party sought the Panel’s advance permission to submit these documents and that it is not apparent that the documents are either helpful or necessary in reaching a decision in this case.

 

5. Factual Background

Complainant states that it is “a world leader in the design and manufacture of mobile elevating work platforms, also known as aerial lift platforms.” Complainant states that it had estimated sales of more than 16,000 units of its products at the end of 2005, generating worldwide revenue greater than Canadian $200 million.

Complainant states that it is the owner of trademark registrations for the word SKYJACK in “numerous jurisdictions around the world,” including Israel. In support of this statement, Complainant provides a table providing details about a number of trademarks, some (but not all) of which consist of or include the word “skyjack”, and some (but not all) of which list registration numbers. Among the listed trademarks is registration number 102,803 for SKYJACK in Israel, which is listed in the table as having been registered on April 15, 1997 (the “SKYJACK Trademark”). The Panel’s search of the Israeli trademark office’s database at “http://patentim.justice.gov.il/db1.htm” confirms this registration.¹

Respondent states that he is “an Internet business developer and a long time Internet entrepreneur” and that he “manages projects in the fields of Internet, e-commerce, and computers, and has significant knowledge and experience in those fields.”

The Domain Name was created on March 6, 2000.

 

6. Parties’ Contentions

A. Complainant

Complainant contends, in relevant part as follows:

- The trademark SKYJACK “is a coined name, not an ordinary word in English or, to the Complainant’s knowledge, any other language.”

- “The Domain Name is associated with a website that provides links to retailers or various products, including products similar to those offered for sale by the Complainant and its competitors.” In support of this contention, Complainant has provided a printout of the home page of the website associated with the Domain Name, which includes links labeled “Scissor Lift,” “Parts,” “Lift Kits” and “Racks” – as well as such apparently unrelated links as “Online Banking,” “Dating,” “Mortgage” and “Poker.”

- “When an Internet user clicks on the ‘scissor lift’ link, the user is directed to another page containing links to various manufacturers and distributors of scissor lifts, including competitors of the Complainant.” In support of this contention, Complainant has provided a web page printout with various “Sponsored Links,” the four most prominent of which have the following headlines: “Lift Table & Scissor Lift,” “Fleettrade.com,” “Scissor Lift auctions” and “Pneumatic Scissors Lifts.”

- “[I]n these circumstances, the operation of a website which only directs Internet traffic to other, unrelated websites, does not represent a use of the Domain Name in connection with a bona fide offering of goods or services.”

- “The Respondent is not known by the Domain Name and has no connection to the Complainant or… any rights to or in” the trademark SKYJACK.

- “Respondent is using the Domain Name for commercial gain by attracting Internet users to its own, or third party sites, offering various goods or services, and such use i[s] calculated to mislead consumers.”

- “The Respondent was fully aware of the Complainant’s prior rights in the” trademark SKYAJCK because of the links on the Complainant’s website.

- After Complainant contacted Respondent in January 2005, Respondent rejected Complainant’s offer to purchase a transfer of the Domain Name for $3,500.00, calling Complainant’s proposal “unreasonable.” “The Complainant submits that the amounts sought represent more than the reasonable out-of-pocket costs incurred by the Respondent and is, accordingly, evidence of bad faith on the part of the Respondent.”

B. Respondent

Respondent states, in relevant part as follows:

- “Complainant evidently has set to intimidate and unfairly deprive the Respondent of a name that he has owned and used for nearly 7 years.”

- The Domain Name “was originally registered” for a search-engine project (which was “temporarily stopped” sometime after the beginning of 2001) “because it is a generic, common, short, simple and easy word to remember.”

- Respondent “did not know nor hear of Complainant’s existence” until he was contacted by a representative of Complainant in February 2005.

- Representatives of Complainant “did not dispute the Respondent rights in the Disputed Domain Name <skyjack.com>, and explicitly requested to purchase the Disputed Domain Name from the Respondent, thus in fact admitting the Respondent legitimate rights and ‘ownership’ in the Disputed Domain Name.”

- “Complainant initiated contact with the Respondent (and not the other way around), requesting to purchase the Disputed Domain Name from him.”

- “Complainant’s “inaction over such a sustained period” following first contact with Respondent “points to a certain lack of vigilance in protecting the Complainant alleged rights in any trademark and should result in a complete denial of the requested remedy.”

- “The Complainant cannot really have rights over the word ‘skyjack’ as it is a common word in the English language.” Furthermore, Complainant’s list of trademarks “should be considered no more than mere personal assertions, whereas no evidence in the form of official documents or third party declaration were furnished to support such assertions.”

- “The Complainant has not managed to acquire any pretended reputation in Israel, does not engage in any kind of business in Israel, and has never sold its products in Israel.”

- “The Respondent considers the Disputed Domain Name, per se, mainly as a platform for his Internet projects and computer business, and while indeed he has future plans for it, he has no intentions for any commercial gain, misleadingly to divert consumers or to tarnish any trademark of the Complainant.”

- Respondent used the Domain Name for seven years for “soon-to-be-projects, e-mail services under the same name <webmaster@skyjack.com>, and as a Domain Parking website for a Domainsponsor.”

- Content on the website associated with the Domain Name “is solely controlled and generated by the DomainSponsor and the Respondent has no control over it.”

- “There are many uses to which the Respondent could put the Disputed Domain Name to without infringing upon the alleged rights of the Complainant.”

- “The Complainant and the Respondent are not in any way competitors and it is most likely that any of the Respondent future Internet projects set in the Disputed Domain Name website will not constitute any kind of confusion.”

 

7. Discussion and Findings

Pursuant to 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; and

(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. Paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The Panel finds disingenuous and false the Complainant’s statement that the SKYJACK Trademark “is a coined name, not an ordinary word in English or, to the Complainant’s knowledge, any other language.” Rather, the word “skyjack” is an ordinary word in English that refers to the hostile act of taking control of an aircraft. Nevertheless, the Panel does not agree with Respondent that Complainant “cannot really have rights over the word ‘skyjack’ as it is a common word in the English language.” Indeed, countless common words in the English language can also be used as trademarks (for example: APPLE for personal computers; DELTA for airline services; or AMAZON for online sales services).

The Panel is disturbed by Complainant’s failure to provide any meaningful evidence to support its statement that it owns numerous trademark registrations for the word “skyjack”. The table offered as an exhibit is, by itself, insufficient and could have prompted the Panel to deny the claim based on Complainant’s failure to properly demonstrate its rights in the mark SKYJACK. However, in light of the substantial time, effort and expense apparently incurred by the parties in this dispute already, the Panel elected to perform the simple task of verifying at least one of the trademark registrations listed by Complainant in the table – Israeli registration number 102,803 – to confirm Complainant’s rights.²

As to whether the Domain Name is identical or confusingly similar to Complainant’s SKYJACK Trademark, the relevant comparison to be made is with the second-level portion of the Domain Name only (i.e., “skyjack”), as it is well-established that the top-level domain (i.e., “.com”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Case No. FA0008000095491 (“[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”).

Without the need for any discussion, it is obvious that the second-level domain “skyjack” is identical to Complainant’s SKYJACK Trademark and, accordingly, the Panel is convinced that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1, “http://arbiter.wipo.int/domains/search/overview/index.html” (visited November 15, 2006).

In this case, Complainant has made out an initial prima facie case that Respondent lacks rights or legitimate interests in the Domain Name via Complainant’s certified statements in the Complaint that “the operation of a website which only directs Internet traffic to other, unrelated websites, does not represent a use of the Domain Name in connection with a bona fide offering of goods or services”; that “Respondent is not known by the Domain Name and has no connection to the Complainant or any rights to or in” the trademark SKYJACK; and that “Respondent is using the Domain Name for commercial gain by attracting Internet users to its own, or third party sites, offering various goods or services, and such use i[s] calculated to mislead consumers.”

Paragraph 4(c) of the Policy states that a respondent can prove its rights or legitimate interests in a domain name by demonstrating, among other things, the following circumstances:

(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 bona fide 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 appears to argue that his actions satisfy either paragraph 4(c)(i) or 4(c)(iii) of the Policy.

With respect to paragraph 4(c)(iii), it is illogical to accept as true Respondent’s statement that he “has no intentions for any commercial gain” in light of the undisputed commercial links that appeared on the website associated with the Domain Name, which Respondent admitted were provided by DomainSponsor, a well-known provider of services that “apparently pays money to affiliated websites when they are apt to derive Internet traffic to third parties’ websites, by using ‘Pay Per Click as the primary means of generating revenue’.” Wal-Mart Stores, Inc. v. Modern Limited – Cayman Web Development, Domain Administrator, WIPO Case No. D2005-0322.

Respondent’s contention that DomainSponsor, not Respondent, is responsible for the links that appeared on the website “does not save the conduct or render it legitimate. Because it was in Respondent’s control to decide whether to allow the domain name to resolve to a parked website containing advertisements, the Panel cannot accept Respondent’s claim that this use should be ignored because it was performed by [another entity] and thus was beyond the control or intent of the Respondent.” Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006.

With respect to paragraph 4(c)(i), the Panel finds that the extensive and prominent use of links that, without dispute, are related to Complainant’s competitors is not a bona fide use of the Domain Name. That some of the links may relate to the dictionary meaning of the word “skyjack” rather than to the SKYJACK Trademark cannot render use of the Domain Name legitimate under the Policy. See The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340 (refusing to find rights or legitimate interests in the respondent’s use of the domain name <knot.com> where a website using the domain name contained links and advertising about marriage, the same topic that is covered at the complainant’s website using the domain name <theknot.com>).

Therefore, the Panel is satisfied that the Complainant has proven the second element required by the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by, among other things, evaluating four (non-exhaustive) factors set forth in Paragraph 4(b) of the Policy:

(i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or

(ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or

(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.

Complainant appears to argue that bad faith exists pursuant to paragraph 4(b)(i) or 4(b)(iv) of the Policy.

With respect to paragraph 4(b)(i), the Panel cannot accept that Respondent registered the Domain Name “primarily for the purpose of selling” it to Complainant, given that (1) nearly five years elapsed between the time Respondent registered the Domain Name and the time Respondent discussed selling the Domain Name to Complainant, and (2) the discussions relating to a sale of the Domain Name were initiated by Complainant. Accordingly, Complainant has failed to show bad faith as defined by paragraph 4(b)(i).

However, with respect to paragraph 4(b)(iv), “[t]he same facts that support an inference that Respondent lacks rights or a legitimate interest in the Domain Name also support an inference that Respondent registered and is using this specific Domain Name to intentionally attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source sponsorship or affiliation of Respondent’s website.” The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.

As stated above, based on Respondent’s own statements, Respondent clearly was using the Domain Name for commercial gain, given its relationship with DomainSponsor, which created a monetized parking or landing page associated with the Domain Name. Such web pages have become an “increasingly popular way for domain name registrants to profit from their activity with little effort.” Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850. Such uses do not necessarily create bad faith. For example, “where the links on such a page are not competitive with or disruptive to a relevant trademark owner, or confusing to visitors, such activity may not violate the Policy.” Id. Here, however, Respondent’s web page contains links to goods and services that are competitive with Complainant and may cause Internet users seeking Complainant’s products to be misled.

“Respondent defends its conduct by arguing that it was not aware of Complainant’s rights when registering the domain name. Even if true, on the facts of this case, that contention is not sufficient to avoid a finding of bad faith… [E]ven if Respondent did not actually know of Complainant’s mark, it cannot avoid a finding of bad faith registration if it shielded its eyes with wi[l]lful blindness.” Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006. “[T]the fact that the domain name was used for a web page that contained commercial hypertext links to other entities including links to Complainant’s competitors and/or their products shows that Respondent should have been aware of Complainant’s rights.” Id.

Therefore, the Panel is satisfied that the Complainant has proven the third element required by the Policy.

 

8. Laches

The Panel rejects Respondent’s defense that Complainant’s action under the Policy is barred by Complainant’s failure to act more quickly. As decisions under the Policy make clear, regardless of what one may think of such delays, the defense of laches has no application under the Policy. See, e.g., Those Characters From Cleveland Inc. v. User51235 (38so92lf@whois-privacy.net), WIPO Case No. D2006-0950 (delay of 10 years does not bar claim under Policy); and Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560 (same).

 

9. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <skyjack.com> be transferred to the Complainant.

Douglas M. Isenberg Presiding Panelist
Mayer Gabay Panelist	Daniel R. Bereskin, QC Panelist

Dated: November 16, 2006

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¹ “The panel may… undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5, “http://arbiter.wipo.int/domains/search/overview/index.html” (visited November 15, 2006).

² Id.