The domain name AviationTrader.com consists of two dictionary words, “aviation” and “trader” that together form the “aviation trader” construct: A seller of airplanes, for example.
Registered in 2012, the domain was hit with a UDRP filed by Sandhills Global, Inc. on the basis of the AVIATION TRADER mark registered in 2022 in Australia and New Zealand.
In other words, the mark was registered a full decade after the domain!
Said the sole Forum panelist:
“For the above reasons, Complainant has failed to show it is the owner of the registered marks or has otherwise been authorized to assert them, nor that it owns any common-law rights in the marks that pre-date the Disputed Domain Name’s registration. Complainant also claims not to know when the Disputed Domain Name was registered, even though that date (July 18, 2012) is listed in the WhoIs listing that Complainant itself provided as an attached appendix.”
The decision was made to order the domain name AviationTrader.com remain with the Respondent, whose request for a finding of Reverse Domain Name Hijacking was oddly denied.
The domain transfer was denied.
Sandhills Global, Inc. v. Domain Admin
Claim Number: FA2304002042374
PARTIES
Complainant is Sandhills Global, Inc. (“Complainant)”, represented by Kseniya Ruzanova, Nebraska, USA. Respondent is Domain Admin (“Respondent)”, represented by Adam Taylor of Adlex Solicitors, United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is aviationtrader.com, registered with Godaddy.Com, Llc.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Michael A. Albert as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on April 28, 2023; Forum received payment on April 28, 2023.
On May 1, 2023, Godaddy.Com, Llc confirmed by e-mail to Forum that the aviationtrader.com domain name is registered with Godaddy.Com, Llc and that Respondent is the current registrant of the name. Godaddy.Com, Llc has verified that Respondent is bound by the Godaddy.Com, Llc registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy)”.
On May 4, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@aviationtrader.com. Also on May 4, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on May 26, 2023.
On May 31, 2023, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Michael A. Albert as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel)” finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules)” “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, Sandhills Global, Inc., is an information-processing company. Complainant has rights in the AVIATION TRADER mark through its registration of the mark in Australia (e.g. Reg. No. 2,241,486, registered on January 10, 2022) and New Zealand (e.g. Reg. No. 1,200,059, registered on January 10, 2022). Respondent’s aviationtrader.com domain name is identical or confusingly similar to Complainant’s AVIATION TRADER mark as it incorporates the mark in its entirety while adding the “.com” generic top-level domain (“gTLD)”.
Respondent lacks rights and legitimate interests in the aviationtrader.com domain name. Respondent is not commonly known by the Disputed Domain Name, nor has Complainant authorized or licensed Respondent to use its AVIATION TRADER mark in the Disputed Domain Name. Respondent does not use the Disputed Domain Name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead hosts pay-per-click links.
Respondent registered and uses the aviationtrader.com domain name in bad faith. Respondent diverts users to its pay-per-click advertisements. Additionally, Respondent hides its identity through a privacy service. Furthermore, Respondent registered the Disputed Domain Name with constructive and/or actual knowledge of Complainant’s rights in the AVIATION TRADER mark.
B. Respondent
Respondent, Domain Admin, buys, sells, and monetizes generic and common domain names.
Complainant failed to establish common law rights in the mark. The AVIATION TRADER registered mark is owned by “Sandhills Pacific Pty Ltd”, not Complainant Sandhills Global, Inc. Complainant describes Sandhills Pacific” as its subsidiary, but provides no proof of this relationship.
Respondent’s use of the aviationtrader.com domain name is not to mislead or divert consumers. Additionally, buying and selling domain names is a bona fide use.
Respondent was not aware of Complainant’s rights in the mark. Additionally, Respondent did not try to conceal its identity.
FINDINGS
For reasons discussed below, the Panel finds that Complainant has not met each of the requirements of the ICANN policy.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Identical and/or Confusingly Similar
Complainant has failed to establish common law rights in the term AVIATION TRADER because it has not provided any evidence in support of its bare assertions. See, e.g., section 1.3 of WIPO Overview 3.0 stating that complainants are required to produce evidence showing that the claimed mark has become a distinctive identifier of the complainant’s goods and/or services. (See https://www.wipo.int/amc/en/domains/search/overview3.0/.)
With regard to registered rights, the Complainant relies on two recent figurative trademarks, but these are both owned by “Sandhills Pacific Pty Ltd.,” not by Complainant. Presumably this is the “Sandhills Pacific” which Complainant describes as its subsidiary, but Complainant has provided no proof of this relationship, let alone any evidence of authorization from the trademark owner to file this case. Nor has Complainant explained why the trademark owner was not named as a second complainant.
For the above reasons, Complainant has failed to show it is the owner of the registered marks or has otherwise been authorized to assert them, nor that it owns any common-law rights in the marks that pre-date the Disputed Domain Name’s registration. Complainant also claims not to know when the Disputed Domain Name was registered, even though that date (July 18, 2012) is listed in the WhoIs listing that Complainant itself provided as an attached appendix.
Rights or Legitimate Interests
Since Complainant fails to meet the first element, this Panel need not need reach the other two elements. Nevertheless, it is worth noting that evidence of those two elements is weak at best, as there is little or no evidence, beyond circumstantial insinuations, that Respondent knew of Complainant, which knowledge Respondent expressly denies having had at the time the Disputed Domain Name was registered.
Registration and Use in Bad Faith
The Panel need not reach this question here as the Complaint fails to meet the first and second elements, as discussed above. Again, however, evidence of bad faith is minimal and circumstantial, at best.
Reverse Domain-Name Hijacking
Respondent states that Complainant “gave the misleading impression that it owned an international portfolio of registered trade marks for AVIATION TRADER.” In fact, however, Complainant does provide ample evidence of the existence of a portfolio of registered marks for AVIATION TRADER, in the name of an entity which Complainant plausibly alleges to be its subsidiary. Although, as noted above, Complainant fails to establish the corporate relationship and authorization necessary to establish itself as the owner of the marks in question (or as an entity authorized to assert them), that fact alone, without further evidence of deliberate misrepresentation or fraud, does not rise to the level of warranting a finding that this proceeding was brought with the bad-faith purpose of depriving Respondent of a registered domain-name. Respondent’s remaining grounds for a finding of Reverse Domain Name Hijacking are that Complainant “misleadingly claimed that it was unable to contact the Respondent when the reality was that it never attempted to do so by the means provided” and that Complainant’s allegations were vague or misleading. Neither of these contentions, without further concrete evidence of impropriety in Complainant’s filing, rises to the level of suggesting Reverse Domain Name Hijacking.
DECISION
Complainant having failed to establish the three elements required under the Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the aviationtrader.com domain name REMAIN WITH Respondent.
Michael A. Albert, Panelist
Dated: June 15, 2023
