WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ExecuJet Holdings Ltd. v. Air Alpha America, Inc.
Case No. D2002-0669
1. The Parties
The Complainant is ExecutJet Holdings Ltd., Bahnhofstrasse 23, Zug, Switzerland, represented by Mr. Ryk Meiring, Spoor & Fisher, PO Box 454, Pretoria 0001, South Africa.
The Respondent is Air Alpha America Inc, 50 Thompson Ave, East Haven, CT 06512, USA, represented by Ted Glasman, 95 Five Fields, Madison CT, 06443, USA.
2. The Domain Name and Registrar
The Domain Name at issue is . The Registrar is Network Solutions, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by e-mail on July 18, 2002, and a hardcopy was received by the Center on July 24, 2002. The Center acknowledged the receipt of the Complaint on July 19, 2002.
On the same day, the Center sent to Network Solutions a request for verification of registration data. On July 24, 2002, Network Solutions confirmed that it is the Registrar, that Ted Glassman is the Registrant of the domain name , and also its administrative contact.
The Center verified that the Complaint satisfies the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules") and that payment was properly made. The Panel is satisfied this is the case.
On July 30, 2002, the Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the administrative proceedings commenced. On August 19, 2002, the Center received a Response by e-mail, and it acknowledged the receipt on August 20, 2002.
On September 2, 2002, the Center notified the Parties that an Administrative Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
On September 13, 2002, the Panelist issued an Administrative Procedural Order to the Complainant and to the Respondent, following which the Complainant submitted additional statements and evidence and the Respondent submitted comments to these statements.
4. Factual Background
A. Complainant
The Complainant is, according to its submissions, the holding company of a charter air service that has established commercial operations under the name and trading style of "ExecuJet" in South Africa (since 1991), Scandinavia (since 1997), the Middle East (since 1999), Australia (since 2000), and in Switzerland (since 2001), and operates in 23 countries around the world.
The Complainant is the owner of the Swiss service mark registration ExecuJet in classes 12, 35, 36, 37, and 39, with the priority date of January 3, 2001, and of the Benelux registration ExecuJet & Device in class 39, with priority date of June 7, 2001. It has also pending applications for the latter mark in South Africa, Australia and some other countries and a pending application for a Community Trade Mark registration, all filed in the year 2001.
B. Respondent
The Respondent registered on August 21, 1997, the domain name without having used it until today.
5. Parties� Contentions
A. Complainant
The Complainant submits that (1) the domain name is identical to a trademark or service mark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.
The Complainant furthermore submits that between 1996 and 1998, its operational entity in Scandinavia had formed a contractual relationship with the Respondent�s Danish subsidiary, which was terminated in 1998, and that in August 1998, it became aware that the Respondent had registered the domain name .
B. Respondent
The Respondent submits that it has rights and legitimate interests in respect of the domain name and that the domain name was not registered and is not being used in bad faith. It furthermore submits that the marketing manager of the Complainant�s subsidiary in Scandinavia had been contacted regarding the domain name but had not responded; that Ted Glassman, the administrative contact of the Respondent, had before the year 2000, incorporated two corporations "Execujet Inc." and ExecuJet com. Inc", of which he is the sole shareholder; and that it has made plans to open a site under the domain name address in October 2002. On request of the Panelist the Respondent declined to submit details of its business plans as being considered to be confidential.
6. Discussion and Findings
Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the "Policy") lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:
1) The domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith.
1) Identity or confusing similarity with a mark in which the Complainant has rights
The domain name is clearly confusingly similar to the registered trademark "ExecuJet" in which the Complainant has rights in Switzerland (the generic top level domain indicator ".com", cannot be taken into consideration when judging identity or confusing similarity). It is also confusingly similar to the registration ExecuJet & device in South Africa, of which the dominating part is the word ExecuJet. For the Policy to apply it is not necessary that the Complainant has rights in a mark in the United States, of which the Respondent is a resident.
2) Legitimate rights or interests in respect of the domain name
The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent's use of the domain name, and it is not commonly known under that domain name.
However, the representative of the Respondent submits that he has established corporations under the name Execujet Inc. and Execujet com. Inc, and that he intends to use the domain name for a website as from October 2002. The Respondent did not submit any evidence to support these statements and it does not claim to have established the corporations prior to the registration of the domain name . At the same time the Respondent does not contest the fact that there existed a business relationship between it and the operative unit of the Complainant in Scandinavia at the time of its registration of that domain name. It only submits that the Scandinavian operative unit of the Respondent did not contest the registration, whilst the Complainant submits that its marketing manager had requested the transfer of the domain name in or about August 1998.
On the face of the submissions of the parties the Panelist tends to conclude that the Respondent had no right or legitimate interest in the domain name when it registered it. However, that question need not to be decided since the Panelist is satisfied that the Complainant failed to prove that the Respondent registered the domain name in bad faith.
3) Registration and use in bad faith
Under the Policy, the Complainant must prove that the Respondent has registered and is using the domain name in bad faith. At first glance the very fact that the Respondent had a business relationship with an affiliate of the Complainant at the time of registration of the domain name and that it did not use the name for 5 years might be signs of bad faith, especially as the Respondent does not deliver any evidence for its claimed intention to open a site in October 2002.
In examining these issues, the Panelist notes that Complainant has proven that it holds trademark rights as of January 2001. Furthermore, Complainant has submitted in its Complaint that it commenced operations in the name and trading style of ExecuJet in 1991, and that it established commercial operations in that year in South Africa and in 1997, in Scandinavia (where the business relationship with the Respondent was established).
In its Order of September 9, 2002, the Panelist requested from Complainant further statements and documents in respect of Complainant's rights, particularly for the period prior to 1997. Upon consideration of the additional written statement filed by Complainant in response to the Panel Order, the Panel finds that Complainant has proven rights to a trademark approximately as of 2001.
This finding does not necessarily dispose of the matter. For the purposes of the Policy, a domain name registration can have been undertaken in bad faith even if the trade marks rights at which such bad faith was directed arose after the registration of the domain name. This might be the case where a registrant speculated on an impending merger between companies that would create a new name combining in whole or in part the names of the merger partners. Another example concerns the situation where a registrant based its registration of the domain name on its insider knowledge of the intentions of a (former) business partner or employer in relation to the latter's development of a new trademark. From the intent of the Policy, it is clearly irrelevant whether a registrant intended to abuse an existing trademark right or one which that registrant specifically knew would arise.
The Panel finds, however, that the relatively limited record presented here provides insufficient indications to support this type of finding in the present case. As the case stands in this forum, questions remain with regard to such issues as the history and nature of the parties' relationship and the Complainant's trademark rights.
Since for the Complaint to succeed under the Policy the Respondent must not only have used, but also have registered the domain name in bad faith, the Panelist's above finding that insufficient evidence has been presented of bad faith registration removes the need to address the question of use in bad faith at the time of filing of the Complaint.
7. Decision
The Panel decides that the Complainant has failed to prove that the Respondent has registered the domain name in bad faith.
The Panelist therefore rejects the request to transfer the domain name to the Complainant.
Dr. Gerd F. Kunze
Sole Panelist
Dated: October 7, 2002
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