Robert Segelbaum v. Steve Elisberg

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Robert Segelbaum

v. Steve Elisberg

Case No.

D2001-0077

1. The Parties

The Complainant is Robert

Segelbaum, an individual residing in the state of New York.

The Respondent is Steve

Elisberg, an individual residing in Colorado.

2. The Domain Name and

Registrar

The domain name at issue

is <airhitch.com> (the Domain Name). The registrar with which the Domain

name is registered is Network Solutions, Inc. (the Registrar or NSI), located

in Herndon, Virginia, USA.

The Registrar provided

contact details showing the Respondent Steve Elisberg as the administrative,

technical and billing contact with respect to the Domain Name.

3. Procedural History

The WIPO Arbitration and

Mediation Center (the Center) received the Complainant’s Complaint in hardcopy

on January 19, 2001. On January 23, 2001, the Center sent the Complainant an

Acknowledgment of Receipt of the Complaint.

On February 6, 2001, the

Center sent to the Registrar, NSI, a Request for Registrar Verification. On

February 8, 2001, the Registrar transmitted to the Center via e-mail a Registrar

Verification Response confirming that the Domain Name is registered with NSI

and that the Respondent is the current registrant of the Domain Name.

The Center completed a

Formalities Compliance Review on February 27, 2001, and verified that the Complaint

satisfied the formal requirements of the ICANN Uniform Dispute Resolution Policy

(the Policy), the Rules for Uniform Domain Dispute Resolution Policy (the Uniform

Rules), and the Supplemental Rules for Uniform Domain Dispute Resolution Policy

(the WIPO Supplemental Rules). Complainant made the required payment to the

Center. Upon independent review, the Administrative Panel also finds that the

Complaint satisfies the formal requirements of the Policy, the Uniform Rules,

and the Supplemental Rules.

On February 27, 2001, the

Center transmitted to the parties, with copies to NSI and ICANN, a Notification

of Complaint and Commencement of Administrative Proceeding, setting a deadline

of March 18, 2001 by which the Respondent could file a Response to the Complaint.

This Notification was sent to the Respondent. After receiving the Respondent’s

Response, the Center notified the parties that it would proceed to appoint the

Administrative Panel.

In view of the parties’

selection of a single-member panel, the Center invited Dana Haviland to serve

as the sole panelist. On April 5, 2001, after having received a Statement of

Acceptance and Declaration of Impartiality and Independence, the Center transmitted

to the parties via e-mail a Notification of Appointment of Administrative Panel

and Projected Decision Date, appointing the aforementioned panel. The Panel

finds that the Administrative Panel was properly constituted and appointed in

accordance with the Uniform Rules and the WIPO Supplemental Rules.

The Panelist requested

additional information from the parties, which was submitted by Complainant

on May 2 and May 15, 2001, and by Respondent on May 1, 2001, and has been considered

herein.

4. Factual Background

Complainant Robert Segelbaum,

an arranger of commercial air transportation, has registered trademarks in the

United States and Canada for the mark AIRHITCH, dating from 1984. Complaint

para. 12.1. Complainant registered the domain name <airhitch.org> in August

1994.

In August 1996, the Respondent

registered the Domain Name <airhitch.com>. Complaint Annex 1.

5. Parties’ Contentions

The Complainant contends

that the Domain Name registered by the Respondent is identical to Complainant’s

Airhitch trademark. Complaint para. 12.1. Complainant contends that he

has used that name for over fifteen years in connection with his business as

an arranger for commercial air transport. Id..

Complainant further contends

that the Respondent has no rights or legitimate interests in the Domain Name.

Complainant alleges that Respondent leased the Domain Name in 1999 to a third

party "who has been using it to transact business with the public";

that the Domain Name currently points to a page advertising the services of

Air Courier Association, "a company having no connection with the Airhitch

operation"; and that Respondent is a member of the board of directors of

Air Courier Association. Complaint para. 12.3-12.4.

Finally, Complainant contends

that the Respondent has registered and is using the Domain Name in bad faith.

As evidence of bad faith, Complainant alleges that he contacted the Respondent

on September 29, 2000, attaching copies of his United States trademark registration,

and asked that Respondent return the Domain Name to Complainant, but received

no response. Complaint para. 12.4, Annex 12(a). Complainant further notes

that the party to whom Respondent has "delegated control of" the Domain

Name has refused to transfer it back to the Respondent without "’some money’

in return." Complaint para. 12.5. Complainant estimates that "approximately

100,000 potential visits" to his Airhitch website are diverted annually

by Respondent’s use of the Domain Name, creating "costly and wasteful confusion".

Complaint, para. 12.6, Annex 6.

Respondent contends that

his corporation, Air Courier Association, has a contract with a company called

Whole Earth Travel, whereunder he claims the right to use the Airhitch trademark,

and states that he believes that Whole Earth Travel, not Complainant, is "the

owner of Airhitch." He states that he has never done business with Complainant,

and that he "does a large annual dollar volume of business reselling the

goods of Whole Earth Travel who claim they are Airhitch." Response, para. 12.3.

Respondent states that Air Courier Association has used the name <airhitch.com>

on the Internet since 1997. Response, para. 12.4. Respondent states that

he has not delegated control of the domain name to another party but that the

Domain Name "is being used by Air Courier Association in its business dealing

with Whole Earth Travel and has never been for sale to another party."

Response, para. 12.5. The Respondent further states that he has not diverted

potential visitors of <airhitch.com> to <aircourier.com>. Response,

para. 12.6.

The Respondent contends

that he has rights to and legitimate interests in the domain name, because he

"had a bona fide offering of Airhitch services prior of this notice of

dispute." Response para. 12.3. In support of this allegation, he submits

copies of an April 17, 1998 contract between Air Courier Association and Whole

Earth Travel, pursuant to which his company is "a reseller of the goods

of Whole Earth travel, which are Airhitch travel vouchers," and copies

of various advertisements of Airhitch services by Air Courier Association in

a magazine, travel guide, and website. Response, Annexes 1-4.

Respondent denies that

he registered the domain name in bad faith. He states that he has never offered

the Domain Name for sale or prevented the holder of the trademark from reflecting

the mark in a corresponding domain name. Respondent further states that he is

not disrupting the business of a competitor. He states that he believes the

owner of Airhitch is the individual who is the president of Whole Earth Travel

and not Respondent. Response para. b. Respondent alleges that he called

the yellow pages number for Airhitch on March 9, 2001 and the person who answered

said "Whole Earth Travel." Response, Annex 5.

In response to questions

from the Panelist, the Complainant states that in the past he had been a consultant

to Whole Earth Travel and in January 1996 became a shareholder in that company

pursuant to a shareholder agreement. He further acknowledges that: "A revocable

license, or permission, for use the name and trademark was granted to WET as

part of the aforementioned shareholder’s agreement." Complainant states

that the license was revoked by an email of January 15, 2001, confirmed by a

letter from his attorney on January 25, 2001, alleging that the Airhitch name

was being damaged by Whole Earth Travel’s failure to pay trade debts and complaining

of its failure to repay a substantial loan from Complainant.

6. Discussion and Findings

Under the terms of the

Policy, the Complainant must prove three distinct elements in order to prevail

on a claim for transfer of a domain name. These elements are set forth in Paragraph (a)

of the Policy:

- that the domain name

registered by the Respondent is identical or confusingly similar to a trademark

or service mark in which the complainant has rights; and

- that the Respondent

has no rights or legitimate interests in respect of the domain name; and

- that the domain name

has been registered and is being used in bad faith.

a) Identity or confusing

similarity of domain name and trademark

The evidence shows that

the Domain Name <airhitch.com> registered by the Respondent is identical

or confusingly similar to the Complainant’s mark, proof of which is shown at

Annex 4 of the Complaint.

b) No legitimate interest

in domain name

A party may demonstrate

its rights or legitimate interest in a domain name under paragraph 4(c) of the

Policy in any of the following ways:

(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

bonafide 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 has submitted

evidence to show use of the Domain Name in connection with a bonafide offering

of goods and services prior to notice of the dispute, but Respondent’s right

to use the Airhitch mark in connection with its business activities has not

been conclusively established. Although the Complainant has admitted to licensing

the Airhitch trademark to Whole Earth Travel, the Domain Name utilizing the

trademark was registered by Respondent Elisberg. The contract between Whole

Earth Travel and Air Courier Association submitted by Respondent requires the

former’s prior approval for Air Courier’s use of the Airhitch name, and Respondent

has not submitted any written evidence of approval for use of the Airhitch name

in the Domain Name by Air Courier Travel or by Respondent himself. The Panelist

need not reach the issue of whether Respondent has sufficiently shown a right

or legitimate interest in the Domain Name, however, because the Complainant

has failed to satisfy the bad faith registration and use requirement of the

claim, as discussed below.

c) Bad faith registration

and use of the domain name

Paragraph 4(b) of the Policy

sets forth four examples of bad faith, which are not exclusive, but which "shall

be evidence of registration and use of a domain name in bad faith":

(i) circumstances indicating

that you have registered or you have 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 your

documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have

engaged in a pattern of such conduct; or

(iii) you have registered

the domain name primarily for the purpose of disrupting the business of a competitor;

or

(iv) by using the domain

name, you have intentionally attempted to attract, for commercial gain, Internet

users to your website or other on-line location, by creating a likelihood of

confusion with the Complainant’s mark as to the source, sponsorship, affiliation,

or endorsement of your website or location or of a product or service on your

website or location.

The evidence is insufficient

to show bad faith registration and use of the Domain Name by the Respondent

under any of the four examples given in the Policy, and Complainant’s allegation

with respect to Respondent’s failure to reply to Complainant’s September 2000

notice does not alone establish bad faith. More importantly, Complainant’s admission

that the Airhitch trademark was in fact licensed to the entity from which Respondent

claims a right to the Domain Name for a period covering Respondent’s registration

and use of the Domain Name tends to negate any inference of bad faith.

The evidence suggests that

there is an underlying business dispute with respect to the use of the Airhitch

mark by Complainant’s licensee Whole Earth Travel, and that this dispute over

the Domain Name is related to that dispute. Resolution of such business disputes

is beyond the scope of this domain name proceeding, which is intended only to

provide a remedy for bad faith registration and use of a domain name. Whether

Respondent himself has ever had any contractual right to use the Airhitch mark

in the Domain Name and whether that right, if any, has now ended by virtue of

Complainant’s alleged termination of a license to the party from whom Respondent

claims contract rights are legitimate issues of law and fact, but are not resolved

herein, because the evidence does not establish Respondent’s bad faith registration

or use of the Domain Name.

7. Decision

It is the decision of the

Panel that the Complainant has not satisfied its burden of proving bad faith

registration and use, an essential element of a Complaint under Paragraph 4(a)

of the Policy, and that the Complainant’s claim for transfer of the Domain Name

is therefore denied.

Dana Haviland

Sole Panelist

Dated: June

21, 2001