Efzed Pty Ltd. of North Melbourne, Victoria, Australia (“Efzed”), Simulate Pty Ltd. of North Melbourne, Victoria, Australia (“Simulate”), and Mr. Frank Zimmermann of Ultimo, New South Wales, Australia (“Zimmerman”), were just all found guilty of Reverse Domain Name Hijacking on the domain airlineonline.com.
The domain is owned by AviaDesign Ky, Sami Puro of Vantaa, of Finland, and was represented by UDRP POLICE DBS, United Kingdom of Great Britain and Northern Ireland.
Complainants hold registered trademark rights in Australia for the word mark AIRLINE ONLINE, lodged on July 7, 2008 and registered on February 16, 2009 for “application software: computer software”.
The AIRLINE ONLINE registration is jointly owned by Efzed and Zimmermann, who is the sole director, company secretary and shareholder of Efzed.
Zimmermann is also a co-director and co-shareholder of Simulate.
Efzed has authorized Simulate to use the AIRLINE ONLINE mark.
The one member WIPO panel of Robert A. Badgley said: The Panel does not believe that Complainants were sufficiently candid in their Complaint. They omitted facts and presented selective evidence tending to show that AIRLINE ONLINE was being used continuously to identify and distinguish Complainants‟ products throughout the history of the parties‟ dealings as described in the Complaint. Although a party is expected to put forward its best case on its own behalf and is not charged with the duty of making out its adversary‟s case, some modicum of candor is called for in proceedings under the Policy.
Here are the highlights of the case.
Complainants allege that, “in addition to the registered rights in the AIRLINE ONLINE name”, they “have built up a significant global reputation in the AIRLINE ONLINE name since the Complainants first commenced offering their products branded under or by reference to the AIRLINE ONLINE name in 2002”.
Complainants state that they “first used the AIRLINE ONLINE name in relation to their aviation simulation game in 2002”.
In 2007, Complainants allege, they “re-launched AIRLINE ONLINE as a corporate and tertiary training tool, predominately targeted towards the U.S. aviation university market and major international airlines”.
Complainants claim a “market share of approximately 80% of the U.S. Aviation Association‟s aviation management courses”, and they list various universities in the United States of America, United Kingdom, Australia, and Germany among their clients. Complainants also contend that they are “prominent participants in the aviation simulation industry by offering aviation management and business simulations as a corporate training tool for major international airlines including Air New Zealand and Lufthansa”.
Geographically, Complainants assert that they provide their AIRLINE ONLINE products worldwide including in the United States, Australia, Canada, France, Germany, Switzerland, the Netherlands, the Common Wealth of Puerto Rico, Singapore, Hong Kong, China, the United Kingdom, and New Zealand. Complainants attach a series of invoices to various clients, the earliest of which is dated November 8, 2005.
Complainants operate websites at various online addresses, including airlinesimulation.com, www.simulate.aero and “www.efzed.com.au”.
Respondent was formed as a Finland company in 1989 to provide IT consulting, primarily for the aviation sector.
Sami Puro is one of the co-owners, who swore an affidavit in this proceeding. According to this affidavit, Puro is an experienced pilot (7,000 flying hours) and aviation enthusiast who began a website “Flight Simulator Finland” in 1998 to provide information about flight simulator software. In 2006, Respondent began to develop its own online airline simulation software under the name “AirwaySim”.
In May 2011, the AIRWAYSIM mark was registered by Respondent with the United States Patent and Trademark Office.
Respondent registered the Domain Name on or about March 23, 2012.
The Domain Name resolves to Respondent‟s website airlinemanager.net. At that website, by clicking on the page, Internet users are redirected to Respondent‟s another website airwaysim.com where the history of Respondent‟s AirwaySim game is described. As respects to the decision to name the product AirwaySim in December 2006, the site states:
Complainants bear the burden of establishing that Respondent lacks rights or legitimate interests in the Domain Name. Complainants have failed to do so.
It bears emphasis that Respondent‟s principal Sami Puro is a longstanding aviation enthusiast, and he and his company have established a legitimate business offering airline simulation products.
It also bears noting that the mark AIRLINE ONLINE is a relatively weak trademark when used in association with an online product which simulates the operation of an airline.
As Respondent points out, there are various third-party uses of the term “airline online”, including various airlines who use the term to describe their online check-in features.
The record here indicates that Respondent‟s principal was clearly aware of Complainants and their flight simulation game as early as 2005.
It is by no means clear, however, that Respondent was aware that Complainants‟ game was marketed under the trademark AIRLINE ONLINE.
The blog review written by Sami Puro in 2005 does not refer to the game as AIRLINE ONLINE. Further, even when deciding to brand its own game AIRWAY SIM in December 2006,
Respondent‟s allusion to “an Australian company” mentioned the term “Airline” rather than “Airline Online”.
On this record, there is ample basis to conclude that Respondent was unaware that Complainants were actually using AIRLINE ONLINE as a mark in association with any airline simulation game at the time Respondent registered the Domain Name in March 2012. As Respondent argues, there is some room to conclude that Complainants had ceased using AIRLINE ONLINE by 2012. The preponderance of the selective evidence put forth by Complainants tends to indicate that they were using AIRLINE as their mark, and the term “online” appeared, sporadically, in a largely descriptive sense to distinguish Complainants‟ online AIRLINE products from its offline AIRLINE products.
Respondent‟s registration of the Domain Name appears to be consistent with its registration of many other domain names (wrongfully described by Complainants as illegitimate), such as flightsim.fi and airlinebusinesssim.com. The Panel concludes, based on this record, that Respondent more likely than not registered the Domain Name for the innocuous purpose of attracting Internet visitors through the descriptive use of words likely to garner interest in an airline simulation game which one plays online.
Whether Complainants can make out a viable trademark or unfair competition claim in some court of law somewhere is not for this Panel to determine. On this record, and under the principles set forth under the Policy, the Panel concludes that Respondent registered the Domain Name in connection with a bona fide offering of goods or services within the meaning of Policy paragraph 4(c)(i).
Accordingly, the Panel concludes that Complainants have failed to satisfy Policy paragraph 4(a)(ii) and this Complaint must be denied.
7. Reverse Domain Name Hijacking
The Panel does not believe that Complainants were sufficiently candid in their Complaint.
They omitted facts and presented selective evidence tending to show that AIRLINE ONLINE was being used continuously to identify and distinguish Complainants‟ products throughout the history of the parties‟ dealings as described in the Complaint. Although a party is expected to put forward its best case on its own behalf and is not charged with the duty of making out its adversary‟s case, some modicum of candor is called for in proceedings under the Policy.
The Panel must decide the case based on the materials presented by the parties, and there is no opportunity to test the allegations and selective evidence through discovery, cross-examination, and the like. The Panel is also taking into account Complainants‟ overreaching claim that Respondent has “no legitimate interest” in other domain names such as (Respondent‟s company name) and (Respondent‟s own trademark).
If Complainants‟ conduct here had been limited to some legerdemain through omission of facts, and the frivolous argument noted above, the Panel might well have stopped short of declaring Complainants culpable of Reverse Domain Name Hijacking.
However, in this case it is also quite clear that Complainants find themselves guilty of the very same conduct that they would have this Panel condemn vis-à-vis Respondent. By registering a series of domain names containing the words “Airway Sim” or “Sami Puro”, Complainants come to this proceeding with unclean hands.
In a court exercising equitable jurisdiction, Complainants would have been tossed out on their ear because of their unclean hands.
In this proceeding, which does not expressly authorize the exercise of equitable jurisdiction, Complainants‟ conduct can, and will, be condemned through the Panel‟s declaration that they are guilty of Reverse Domain Name Hijacking.
