Pratt & Whitney Power Systems, Inc.; United Technologies Corporation v. Orange Aero Engine Supplies Ltd

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pratt & Whitney Power Systems Inc. v. Orange AES

Case No. D2002-0315

1. The Parties

The Complainants are Pratt & Whitney Power Systems, Inc. of Windsor,

CT 06095, United States of America and United Technologies Corporation,

Pratt & Whitney of East Hartford, CT 06108, United States of America.

The Respondent is Orange AES of Forest Row Business Park,

Forest Row, West Sussex RH18 5DW, United Kingdom.

2. The Domain Name and Registrar

The contested domain name is <ft8.com>.

The registrar is Network Solutions Inc.

3. Procedural History

The electronic version of the Complaint was filed on April 2, 2002,

with the WIPO Arbitration and Mediation Center ("the Center").

The hardcopy of the Complaint was received on April 5, 2002.

In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name

Dispute Resolution Policy ("the Rules") and Paragraph 5 of the

WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

("the Supplemental Rules"), the Center verified that the Complaint

satisfied the formal requirements of the Uniform Domain Name Dispute Resolution

Policy ("the Policy"), the Rules and the Supplemental Rules.

On April 18, 2002, the Center formally notified the Respondent by courier,

fax and email of the Complaint and of the commencement of this administrative

proceeding and sent copies to the Complainant, the Registrar and ICANN.

The Respondent failed to file a response. On May 10, 2002, the

Center sent a Notification of Respondent Default by email to the Respondent

and the Complainant.

On May 14, 2002 the Respondent sent an email to the Center stating that

the Respondent had spoken with the Complainant and had agreed to transfer

to the Complainant the domain name <ft8.com> and that a copy of the

signed transfer had been faxed to the Complainant, with the original sent

by airmail.

On May 14, 2002 the Center forwarded the email from the Respondent dated

May 14, 2002 to the Complainant and advised that the Center would

continue proceedings unless otherwise notified by the Complainant. The Center

sent a further email to the Complainant on May 17, 2002, advising

that if a response was not received by May 21, 2002, the Center

would proceed to appoint a panel to decide this case.

On May 16, 2002, the Center contacted John Swinson and requested that he

act as panelist in this case.

On May 17, 2002, Mr. Swinson accepted to act as panelist in this case and

submitted a Statement of Acceptance and Declaration of Impartiality and

Independence.

On May 17, 2002, the Center contacted John Swinson and advised that the

Center was seeking confirmation from the Complainant as to whether the Complainant

wanted to terminate or suspend the case, and that if no such confirmation

was received, the Center would notify the Complainant and Respondent of

the appointment of John Swinson. The Center did not receive a response from

the Complainant.

On May 22, 2002, the parties were notified that Mr. Swinson had been appointed

and that a decision was to be, save exceptional circumstances, provided

to the Center on June 5, 2002.

The language of the proceeding was English.

The panel is satisfied that the Complaint was filed in accordance with

the requirements of the Rules and Supplemental Rules; payment was properly

made; the panel agrees with the Center’s assessment concerning the Complaint’s

compliance with the formal requirements; the Complaint was properly notified

to the Respondent in accordance with paragraph 2(b) of the Rules; no Response

was filed by the Respondent; and the administrative panel was properly constituted.

4. Factual Background

Although there are two Complainants, for the purposes of this decision

the panel treats Pratt & Whitney Power Systems, Inc as the Complainant.

The Complainant is the owner of United States Trademark Registration No.

1589718 "FT8". The Complainant asserts that it holds trademark

registrations in various other countries for FT8.

The trademark was originally registered in the United States on April 3, 1990,

by Turbo Power and Marine Systems Inc. The name of Turbo Power and

Marine Systems was changed to Pratt & Whitney Power Systems, Inc

in June 2000.

The Respondent is the registrant of the domain name <gasgenie.com>.

The Respondent advertises engine parts for sale on the <gasgenie.com>

website and provides customer access to gas turbine engines and after-market

services.

5. Parties’ Contentions

A. Complainant

The Complainant is a leading manufacturer in the design, manufacture and

support of engines for commercial, military and general aviation aircraft,

and space propulsion systems in the world.

The FT8 trademark has been used in the United States in association with

the goods and services for industrial gas turbines and replacement parts

and has been continuously used by the Complainant for at least the time

the mark was registered in the United States in 1990. The Complainant asserts

it has registered the trademark in other countries but has not provided

details of those registrations.

The Complainant asserts that the trademark is well known among the general

public and that substantial amounts of time, effort and money have been

expended to ensure that the public associates the trademark with the Complainant’s

business, products and services.

The Complainant states that the Respondent has not used the disputed domain

name in connection with the bona fide offering of goods and services. The

Complainant contends that the Respondent has no legitimate interest in the

use of the contested domain name as the Respondent:

(a) is not using the contested domain name in connection with a bona

fide offering of goods or services; and

(b) is not commonly known by the domain name <ft8.com>.

The Complainant contends that the Respondent intended to divert persons

looking for the Complainant’s products and services to the Respondent’s

website, thereby capitalizing on the Complainant’s trademark FT8.

B. Respondent

The Respondent failed to file a Response within the time limit set by the

Center.

In accordance with Rule 5(e) of the Rules, this dispute shall be decided

on the basis of the Complaint alone.

6. Discussion and Findings

In order to qualify for a remedy, the Complainant must prove each of the

three elements set out in Paragraph 4(a) of the Policy, as approved by ICANN

on October 24, 1999, namely:

(i) the domain name is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights; and

(ii) the 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.

The onus of proving these elements is that of the Complainant.

6.1 Identical or confusingly similar to a trademark or service mark

The panel finds that the Complainant is the owner of the registered trademark

FT8.

The panel finds that the contested domain name is identical to the trademark

owned by the Complainant. The only difference between the domain name and the

trademark is the addition of the suffix ".com". See Microsoft Corporation

v. Amit Mehrotra WIPO Case No. D2000-0053.

6.2 Illegitimacy

The Respondent’s prior use of the contested domain name was clearly not

legitimate, as discussed below in the section on bad faith.

The panel notes that the contested domain name is not currently being used

as an active address, however the panel believes the Complainant’s contention

that at the time of filing the Complaint, the contested domain name was

being used by the Respondent to divert traffic to the <gasgenie.com>

website.

There is no apparent association between the Respondent’s name, Orange

AES, and the domain name <ft8.com>.

Paragraph 4(c) of the Policy sets out three elements, any of which shall

demonstrate the Respondent’s legitimate rights in the contested domain name.

The Respondent does not meet any of the three elements set out in this paragraph.

The Respondent had the opportunity to respond and present evidence that

it is a legitimate business that registered the domain name without knowledge

of the Complainant’s rights. The Respondent chose not to do so. The Complainant

is not entitled to relief simply by default, but the panel can and does

draw evidentiary inferences from the failure to respond. See Royal Bank

of Canada v. D3M Domain Sales (eResolution Case No. AF-0147, May 1, 2000).

Accordingly, the panel finds that the Complainant has no rights or legitimate

interests in respect of the domain name.

6.3 Bad Faith

The Complainant contends that the Respondent registered and is using the

domain name in bad faith as:

(a) the Respondent has engaged in a pattern of conduct of registering

trading names of third parties to divert persons to its website at <gasgenie.com>;

and

(b) the contested domain name was used intentionally to attract, for

commercial gain, Internet users to the <gasgenie.com> web site by

creating a likelihood of confusion with the trademark FT8 as to the source,

sponsorship, affiliation or endorsement of the <gasgenie.com> website.

On September 7, 2001 the Complainant sent a letter to the Respondent, requesting

transfer of the contested domain name to the Complainant. On November 22, 2001,

the Respondent sent a letter to the Complainant stating that the Respondent

had registered "over 500 … URL feeder addresses" (including the

contested domain name) and claimed that the Respondent was "legally

entitled to use the mark as a feeder address to an independent gas turbine

web portal (gasGenie)".

On December 10, 2001, the Complainant sent a second letter to Respondent

again requesting transfer of the contested domain name to the Complainant.

On January 29, 2002, the Respondent sent a letter to Complainant

stating that Respondent’s position had not changed.

The Complainant contends that the Respondent has registered feeder addresses,

including the contested domain name with the intention and expectation of

developing a network that will direct prospective customers to the Respondent’s

primary site at <gasgenie.com>, so that the Respondent can sell a

variety of goods and services. This is consistent with a gasGenie news release

on July 21, 2000, which stated that the website at <gasgenie.com>

is "a hybrid system that links buyers and sellers to its site through

any one of 500 alternative domain names - a feeder address system, making

our site the easiest to find and use."

Other panels have concluded that "the registration and use in this way

by a non-trademark owner of such large numbers of domain names of the kind in

issue here tend to show bad faith registration and use. Overkill in registering

domain names incorporating well-known trademarks for commercial purposes logically

leads to an inference of bad faith registration and use." National Collegiate

Athletic Association and March Madness Athletic Association, L.L.C. v. Mark

Halpern and Front & Center Entertainment, WIPO

Case No. D2000-0700.

The Complainant contends that use of the contested domain name by the Respondent

causes confusion with the trademark and is likely to mislead the public

into believing that the Respondent is authorized by the Complainant, or

that the Respondent is affiliated with the Complainant, and as such, the

Respondent is using the good will and reputation in the FT8 trademark to

misleadingly divert customers to do business on the <gasgenie.com>

website.

The circumstances listed in Paragraph 4(b) of the Policy are examples of

registration and use of a domain name in bad faith. Paragraph 4(a)(iii)

of the Policy is not limited to these examples. Here, the panel considers

that using a domain name that is confusingly similar to a registered trademark

to redirect Internet users to the website of the Respondent’s for the purpose

of maximizing its sales on that website (i.e. for commercial gain) is strong

evidence that the domain name has been registered and is being used in bad

faith.

Although the Complainant has not provided any evidence of whether the other

domain names registered by the Respondent are also trademarks of third parties,

and thus the present situation is weaker than that in the National Collegiate

Athletic Association case cited above, the panel accepts the

Complainant’s contentions and finds that the Complainant has provided sufficient

evidence to satisfy Paragraphs 4(b)(iv) of the Policy.

Accordingly, the panel finds that the Complainant has established the element

set out in Paragraph 4(a)(iii) of the Policy.

7. Decision

For the reasons set forth above and pursuant to Paragraphs 4(i) of the

Policy and 15 of the Rules, the panel orders that the contested domain name

<ft8.com> be transferred to the Complainant, Pratt & Whitney Power

Systems, Inc.

John Swinson

Sole Panelist

Dated: 5 June, 2002