The Central West Virginia Regional Airport Authority filed a UDRP to usurp the domain FlyCRW.com from its registrant; in the filing, they claimed that the FLYCRW mark is senior to the domain name.
This allegation was false, as the Forum (NAF) panelist noted. In fact, the domain was registered in 2019, two years before the Complainant’s application for the mark’s registration. The panelist also noted no demonstrated use of the mark by the Complainant prior to that date.
For twisting the facts, the Complainant was found guilty of engaging in Reverse Domain Name Hijacking, on top of a refusal to the domain’s transfer.
Central West Virginia Regional Airport Authority v. David Six
Claim Number: FA2402002082771
PARTIES
Complainant is Central West Virginia Regional Airport Authority (“Complainant”), represented by Varun Shekhar of Babst Calland Clements & Zomnir, PC, District of Columbia, USA. Respondent is David Six (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is flycrw.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.
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on February 7, 2024. Forum received payment on February 7, 2024.
On February 7, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the flycrw.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 February 9, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 29, 2024 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@flycrw.com. Also on February 9, 2024, 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.
On February 29, 2024, the parties jointly requested a stay of the Administrative Proceeding until April 15, 2024, pursuant to Forum’s Supplemental Rule 6(b)(i). That day Forum granted the stay. On April 15, 2024, Complainant filed with Forum a Request to Remove the Stay. Forum lifted the stay next day, setting a deadline of April 17, 2024 by which Respondent could file a Response to the Complaint.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On April 18, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist. 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.
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, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, the Central West Virginia Regional Airport Authority, is a political subdivision of the State of West Virginia that owns and operates West Virginia International Yeager Airport (“Yeager Airport”) through which it renders it services. Complainant is the owner of the well-known and valuable service mark FLYCRW that it uses in connection with its airport services and related website at “www.yeagerairport.com”.
Complainant has rights in the FLYCRW mark through registration with the United States Patent and Trademark Office (“USPTO”). Respondent’s flycrw.com domain name is confusingly similar to Complainant’s FLYCRW mark.
Respondent is a cybersquatter that has no rights or legitimate interests in the flycrw.com domain name. Respondent has not made, nor is presently making, any legitimate noncommercial use of the domain name for any purpose. The domain name resolves to a passive website. This is evidence that Respondent has no legitimate rights to the domain name. There is no evidence that Respondent has ever been commonly known by the domain name, the mark FLYCRW, or any close variation thereof.
The domain name was indisputably registered, and is being used, in bad faith by Respondent, as it merely resolves to a passive website. Multiple panels have repeatedly held that passive holding of a domain name can be evidence of bad faith.
Specifically, Respondent clearly registered the domain name, which is essentially identical to Complainant’s FLYCRW name and mark, in a bad faith effort to trade on Complainant’s reputation and goodwill. Respondent was indisputably aware of Complainant and its well-known mark when the domain name was registered, as Complainant has been using its FLYCRW mark since 2017. See Finaxa S.A. v. Spiral Matrix, 2005 UDRP LEXIS 834 (WIPO Jan. 16, 2005).
Accordingly, when all of the circumstances surrounding Respondents registration and use of the domain name are taken into consideration, there can be no question that the domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant has failed to establish all the elements entitling it to relief.
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 the domain name should be cancelled or transferred:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint. However, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (‘Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint’).
Identical and/or Confusingly Similar
Complainant has shown that it has rights in the FLYCRW mark through registration with the USPTO (i.e. Reg. No. 6,864,285, registered on October 4, 2022 upon application filed on September 7, 2021, claiming first use in commerce on August 31, 2017). The Panel finds Respondent’s flycrw.com domain name to be identical to Complainant’s mark, since it differs from the mark only by the addition of the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Complainant has established this element.
Rights or Legitimate Interests
In light of the Panel’s finding in relation to bad faith, it is unnecessary to consider this element.
Registration and Use in Bad Faith
Complainant must prove under Policy ¶4(a)(iii) that the flycrw.com domain name “has been registered and is being used in bad faith”. This has long been understood to mean that proof is required of both bad faith registration and bad faith use.
The critical issue in this case is whether Respondent has been shown to have been aware of Complainant’s mark when registering the domain name and accordingly did so in bad faith.
According to the WIPO Jurisprudential Overview 3.0:
“3.8 Can bad faith be found where a domain name was registered before the complainant acquired trademark rights?
3.8.1 Domain names registered before a complainant accrues trademark rights
Subject to scenarios described in 3.8.2 below, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. (This would not however impact a panel’s assessment of a complainant’s standing under the first UDRP element.)
…
3.8.2 Domain names registered in anticipation of trademark rights
As an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.
Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application.”
As noted above, the FLYCRW mark was registered on October 4, 2022. Hence the effective date upon which Complainant acquired rights in its registered mark is the date of the application, September 7, 2021. The flycrw.com domain name was registered on June 28, 2019, some two years prior to the filing of that application.
Complainant submits:
“Complainant’s long and extensive use of the mark FLYCRW in connection with its airport services since 2017 firmly demonstrates Complainant’s strong rights in the mark. As such, Complainant owns its protectable trademark interest in and to the mark FLYCRW since long prior to the registration of the Domain Name by Respondent.
…
Respondent clearly registered the Domain Name, which is essentially identical to Complainant’s FLYCRW name and mark, in a bad faith effort to trade on Complainant’s reputation and goodwill. Respondent was indisputably aware of Complainant and its well-known mark when the Domain Name was registered, as Complainant has been using its FLYCRW mark since 2017. See Finaxa S.A. v. Spiral Matrix, 2005 UDRP LEXIS 834 (WIPO Jan. 16, 2005).”
The Panel notes that in Finaxa S.A. v. Spiral Matrix, WIPO Case No. D2005-1044, the disputed domain name was registered several years after the registration of the complainant’s trademarks.
Exhibit A to the Complaint is the only evidence provided by Complainant in support of its claimed first use of the FLYCRW mark in commerce prior to the registration of the flycrw.com domain name. This is a screenshot of the main page of Complainant’s website at “www.yeagerairport.com” which displays a logo followed by the letters CRW and the words “West Virginia International Yeager Airport” and “#FLYCRW”. Complainant has provided no evidence as to the date of the screenshot nor of the number of views of that page of its website occurring prior to the registration of the flycrw.com domain name.
Nor has Complainant produced any evidence that, “through long and extensive use of the mark FLYCRW in connection with its airport services since 2017”, it had acquired common law trademark rights prior to the registration of the domain name, nor that Respondent was “indisputably aware of Complainant and its mark when the Domain Name was registered.”
As noted above, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. The Panel is not persuaded that the facts of this case establish that Respondent was aware of Complainant’s then unregistered trademark rights when registering the flycrw.com domain name, nor that any of the exceptions set out in the WIPO Jurisprudential Overview 3.0, ¶3.8.2 have been shown to apply. Accordingly, the Panel finds that the domain name has not been shown to have been registered in bad faith.
The domain name is being passively held and resolves to a GoDaddy website at which it is offered for sale for $USD 25,000. It is unnecessary to consider whether this constitutes use in bad faith. This is because, as stated in Yoomedia Dating Limited v. Cynthia Newcomer / Dateline BBS, WIPO Case No. D2004-1085:
“Previous decisions have considered the matter of good faith registration followed by bad faith use. The prevailing view is that the Policy was not designed to prevent such situations. In Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), WIPO Case No. D2001-0782, the panel stated that “If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith”. In Teradyne Inc.Teradyne, Inc. [sic] v. 4tel Technology, WIPO Case No. D2000-0026, the Respondent registered a domain name to reflect its own business name but subsequently sought to sell the name for profit when its business dissolved. The panel found that to decide the case on the subsequent bad faith action would “extend the Policy to cover cases clearly intended to be outside its scope.” Similarly, in Telaxis Communications Corp. v. William E. Minkle, WIPO Case No. D2000-0005, the respondent registered the disputed domain name in good faith but subsequently began to use it in bad faith. It was held that because the registration was made in good faith the requirement of Paragraph 4(a)(iii) was not met”.
Complainant has failed to establish this element.
Reverse domain name hijacking
Reverse Domain Name Hijacking (“RDNH”) is defined in Rule 1 as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Rule 15(e) provides, in part:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Complainant failed to produce any evidence in support of its conclusory and unsubstantiated arguments claiming use by Complainant of the FLYCRW mark prior to the registration of the flycrw.com domain name nor any evidence supporting any of the exceptions set out in the WIPO Jurisprudential Overview 3.0, ¶3.8.2.
The lack of any such evidence has been fatal to the success of the Complaint, since Respondent could not be shown to have had Complainant or its mark in mind when registering the domain name.
Complainant, through its Counsel, relied upon the case of Finaxa S.A. v. Spiral Matrix, WIPO Case No. D2005-1044, in which the disputed domain name was registered several years after the registration of the complainant’s trademarks.
This persuades the Panel that Complainant, represented by Counsel, appreciated that its Complaint should fail. The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
DECISION
Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the flycrw.com domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: April 21, 2024
