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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

One Creative Place, LLC v. Kevin Scott

Case No. D2006-0518

 

1. The Parties

The Complainant is One Creative Place, LLC, Montrose, Colorado, United States of America, represented by Ballard Spahr Andrews & Ingersoll, LLP, United States of America.

The Respondent is Kevin Scott, Black Canyon Jet Center, Montrose, Colorado, United States of America, represented by Dorsey & Whitney, LLP, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <montrosejetcenter.com> and <montrosejetcenter.net> (the “Domain Names”) are registered with GoDaddy.com, Inc. (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2006. On April 25, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 27, 2006, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2006. The Response was filed with the Center on May 18, 2006.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 2, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On June 7, 2006, the Complainant submitted a Supplemental Filing responding to certain factual assertions in the Response.

 

4. Factual Background

The parties are rivals in providing general aviation services at the Montrose Regional Airport located in Montrose County in southwestern Colorado. The airport, which is owned and operated by Montrose County, is a popular destination for private and charter jets and other “noncommercial” aircraft, since it serves as a gateway to a number of state and national parks and commercial ski resorts, prominently Telluride.

The Complainant, One Creative Place, LLC, is a Colorado limited liability company based in Montrose. The managing member of the Complainant, Stephen Stuhmer, is also the managing member of an “affiliated” Colorado limited liability company, JetAway Aviation, LLC, which operates the Complainant’s facilities and services at and adjacent to the Montrose Regional Airport. These include a passenger terminal and hanger for private and chartered aircraft, an aircraft and helicopter engine maintenance and repair facility, ground transportation, aircraft cleaning and washing, hospitality and catering services, weather information, and flight planning.

The Respondent, Kevin Scott, is president of Jet Center Partners, LLC, a Colorado limited liability company formed in 2005 to bid on a privatization request for proposals (“RFP”) issued by Montrose County to provide Fixed Based Operator (“FBO”) services onsite at the airport. As prescribed in the County’s Minimum Standards and Requirements for the Provision of Commercial Aeronautical Services at the Montrose Regional Airport (December 5, 2005), required FBO services included the retail sale of aviation fuels, “other aircraft line services” (such as towing, ramp parking, and de-icing), and airframe and engine repair and maintenance.

The Complainant and the Respondent each submitted proposals in 2005, in response to the County’s RFP. The County selected the Respondent to take over the County’s jet center and operate as an FBO at the airport under a 20-year lease that was executed in December 2005, effective January 4, 2006. The Respondent announced that FBO services would be offered under the name “Black Canyon Jet Center,” and the airport’s website at “www.co.montrose.co.us/airport” names “Black Canyon Jet Center” as the airport FBO. Additional FBO facilities construction is scheduled to begin in the summer of 2006. According to press reports, the Respondent is managing FBO services in the interim from a trailer parked a quarter of a mile from the Complainant’s facilities.

In January 2006, the Complainant sued Montrose County and the Director of the Montrose Regional Airport, challenging the exclusive FBO license granted to the Respondent. A state court issued a temporary restraining order on April 10, 2006, prohibiting the Complainant from selling aviation fuel and providing certain other services at the airport until the issues are resolved at a preliminary injunction hearing or at trial. The Complainant and the Respondent agree that the domain name dispute is not an issue in those proceedings.

Neither party used the name “Montrose Jet Center” in bidding for an FBO concession at the Montrose Regional Airport in 2005. The Complainant’s proposal, submitted in April 2005, was made in the name of “JetAway Aviation, LLC.” The Respondent, as noted above, bid on behalf of Jet Center Partners, LLC and announced after winning the bid that it would operate under the name “Black Canyon Jet Center.”

It does not appear that there is a legal entity named “Montrose Jet Center.” The Complainant’s managing member, Stephen Stuhmer, states that the Complainant began using MONTROSE JET CENTER as a mark in November 2004. He states further that the Complainant has been offering “aircraft-related goods and services” associated with that mark continuously since at least December 2004.

In support of this assertion, the Complainant provides copies of four advertisements displaying that name in publications that do not bear exact dates but refer to activities in the winter of 2005-2006 or the spring and summer of 2006, respectively. The sign over the entrance to the Complainant’s facilities reads “Montrose Jet Center,” as appears in a photograph printed in the Montrose Daily Press dated January 4, 2006. Mr. Stuhmer furnished a business card that identifies him as president and CEO of “Montrose Jet Center.” Mr. Stuhmer reports that the Complainant has spent more than $250,000 on marketing and advertising “its Montrose Jet Center business” in “magazines, promotional materials for conventions and exhibits, regional event and adventure guides, brochures, direct marketing mailings, festival programs, and newspapers, among others.”

The Respondent registered the Domain Name <montrosejetcenter.com> on December 30, 2005, and the Domain Name <montrosejetcenter.net> on January 7, 2006. The Respondent also registered other relevant domain names on December 30, 2005, including <www.montrosejet.com>, <www.montroseaircenter.com>, and <www.blackcanyonjetcenter.com>. The Respondent currently advertises its FBO services at Montrose Regional Airport on a website at the URL “www.blackcanyonjetcenter.com.” The Domain Names both redirect to this website, as do the other domain names mentioned in this paragraph. According to the Respondent’s Declaration, that website “went live” “on or around January 4, 2006.”

The Complainant registered the domain name <jetawayaviation.com> on November 26, 2004, and has advertised its services at Montrose Regional Airport on a website at that URL since then. The Complainant registered the domain name <montrose-jetcenter.com> (with a distinguishing hyphen) on April 17, 2006. Both domain names currently resolve to the same website content advertising the Complainant’s facilities and services at the Montrose Regional Airport. “Montrose Jet Center” is displayed prominently in the upper left corner of the home page, followed by “JetAway Aviation – www.FBO-KMTJ.com.” (the latter URL currently resolves to precisely the same website content). The introductory text on the home page begins, “Welcome to JetAway Aviation” and goes on to refer to “our Montrose Jet Center”. The Panel notes that the “Internet Archive Wayback Machine” displays one earlier instance of the Complainant’s website at “www.jetawayaviation.com”, as published on March 12, 2005. This page is headed “JetAway Aviation”, without reference to “Montrose Jet Center” (see “http://web.archive.org/web/*/http://www.jetawayaviation.com”).

On January 17, 2006, the Complainant filed two Statements of Trade Name with the Colorado Secretary of State, one for “Montrose Jet Center, LLC” and the other for “Montrose Telluride Jet Center, LLC”. According to the state’s business entity database, these are not limited liability companies (despite the letters “LLC”) but rather trade names registered to the Complainant.

On January 23, 2006, the Complainant filed a Statement of Registration of Trademark with the Colorado Secretary of State, resulting in a state registration for the trademark MONTROSE JET CENTER.

Two days later, on January 25, 2006, Counsel for the Complainant (“d/b/a Montrose Jet Center and JetAway Aviation, LLC”) sent a letter to Black Canyon Jet Center, asserting rights to MONTROSE JET CENTER as a trademark, service mark, and trade name and demanding transfer of the Domain Names. Counsel for Black Canyon Jet Center responded with a letter dated January 27, 2006, challenging the Complainant’s claims to the asserted mark and demanding that the Complainant cease its “activities with respect to the generic descriptive term ‘Montrose Jet Center’ and cease defaming Black Canyon.”

 

5. Parties’ Contentions

A. Complainant

The Complainant claims state common-law and statutory rights in MONTROSE JET CENTER as a mark and contends that the Domain Names are identical or confusingly similar to that mark. The Complainant argues that the Respondent has never used a name equivalent to the Domain Names in its business and has no rights or legitimate interests in the Domain Names. The Complainant introduces a Declaration of Paul Meyers as expert testimony to the effect that the aviation industry does not use the terms “FBO” and “jet center” interchangeably, as the Respondent had suggested.

The Complainant infers bad-faith registration and use of the Domain Names because they are confusingly similar to the Complainant’s mark and are used to redirect Internet users to a website about the Respondent’s directly competing business (see Policy, Paragraph 4(b)(iv)). The Complainant argues further that the Domain Names were registered primarily for the purpose of disrupting the business of a competitor (see Policy, Paragraph 4(b)(iii)). The Complainant finds further evidence of bad faith in the Respondent’s use of an “anonymous” registration service in registering the Domain Names and its submission of inaccurate WHOIS contact data.

B. Respondent

The Respondent argues that the term “Montrose Jet Center” is not a protected mark, as it consists of a geographic description and a generic term and has not been used by the Complainant long enough or in such a manner as to have acquired secondary meaning. The Respondent contends that the very recent (and unexamined) state registration of the Complainant’s trademark and trade name does not support a presumption of secondary meaning.

The Respondent states that he registered the Domain Names, along with other domain names referring to “Montrose” and “Black Canyon,” shortly after his group won the bid to offer FBO or “jet center” services at the Montrose Regional Airport. He argues that the Domain Names are descriptive of the FBO services his company offers at the airport, and that it is appropriate to use such accurately descriptive names to direct Internet users to his company’s website.

The Respondent declares that he had no knowledge of the Complainant’s use of the alleged mark MONTROSE JET CENTER at the time he registered the Domain Names and points out that the Complainant did not register a similar domain name until April 2006. The Respondent states that he registered the Domain Names and used them to redirect Internet visitors to the Black Canyon Jet Center website before the Complainant’s state trademark and trade name registrations and before notice of this dispute, further undermining the Complainant’s inference of bad faith. The Respondent characterizes the two errors in WHOIS contact data (a dropped digit in the street address and the wrong postal zip code) as inadvertent mistakes by the Registrar in taking his telephone order, which have since been corrected. He also states that he selected the private registration option on the advice of the Registrar, to avoid spam emails.

 

6. Discussion and Findings

Under Paragraph 15(a) of the Rules,

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the Domain Names, the Complainant must demonstrate each of the following:

(i) the Domain Names are 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 the Domain Names; and

(iii) the Domain Names have been registered and are being used in bad faith.

A. Supplemental Filing

The Complainant submitted a Supplemental Filing replying to the Respondent’s denial of actual knowledge of the claimed MONTROSE JET CENTER mark and his charge that the Complainant’s expert, Paul Meyers, is not a disinterested witness.

The Rules do not explicitly provide for supplemental filings. Paragraph 10 of the Rules enjoins the Panel to conduct the proceeding “with due expedition” and empowers the Panel to “determine the admissibility, relevance, materiality and weight of the evidence.” Therefore, UDRP panels are reluctant to encourage delay through additional rounds of pleading and typically accept supplemental filings only to consider new evidence or provide a fair opportunity to respond to new arguments.

Without delaying the decision in this proceeding, the Panel will consider the Complainant’s Supplemental Filing.

B. Identical or Confusingly Similar

The Domain Names are identical to the Complainant’s claimed MONTROSE JET CENTER mark for purposes of the Policy, since spaces between words are necessarily ignored in the domain name system and the top-level domain name is not relevant to a determination of identity or confusing similarity.

Whether the Complainant has established MONTROSE JET CENTER as a trademark or service mark for purposes of maintaining a UDRP complaint is more problematic, since the mark consists solely of a geographic location (“Montrose”) combined with a descriptive term (“jet center”).

A very recent, same-day state trademark and trade name registration is not highly probative of a legally protected secondary meaning in these descriptive words. The Complainant’s MONTROSE JET CENTER mark is not federally registered, and the Complainant has not applied for such registration. Indeed, the Respondent cites several Final or Initial Office Actions by the United States Patent and Trademark Office (USPTO) rejecting applications to register the descriptive term “jet center” combined with a geographic or other descriptive term.

The Panel finds immaterial the parties’ respective contentions (and expert testimony) on the question of whether the term “jet center” is interchangeable with the term “FBO,” a term used by Montrose County in its RFP and subsequently on its airport website to refer to the Respondent. The Panel finds that the term “jet center” is in any event descriptive of services offered by both parties to the owners, pilots, and passengers of private jets at the Montrose Regional Airport.

As the Panel observed in Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105, citing the United States federal Seventh Circuit Court of Appeals in Mil-Mar Shoe v. Shonac, 75 F. 3d 1153, 1161 and n.15 (7^th Cir. 1996):

“it is possible for two generic terms taken together to achieve trademark or service mark status by achieving a sufficient level of secondary meaning in the relevant community. However, the burden on the party making a claim to distinctiveness or secondary meaning in such a case is high because of the disinclination of the courts to take words of ordinary meaning out of common usage.”

Thus, UDRP Panels faced with claims based on descriptive marks asserted under state law have required evidence that the name has become a distinctive identifier associated with the complainant or its goods and services. Evidence of a protectible secondary meaning might include the length and amount of sales under the mark, the nature and extent of advertising, consumer surveys, and media recognition. See, e.g., Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083 (insufficient evidence that “American Background” had acquired a secondary meaning). Panels have deemed evidence of advertising over a longer period than the Complainant claims here, and with a higher level of expenditure, insufficient to establish a distinctive secondary meaning. See, e.g., Keystone Publishing, Inc. v. UtahBrides.com, WIPO Case No. D2004-0725 (three years’ use and $371,000 in advertising expenditures found inadequate to establish the first element of a UDRP complaint based on a descriptive mark that was not federally registered).

The Complainant cites BAA plc, Aberdeen Airport Limited v. Mr. H. Hashimi, WIPO Case No. D2004-0717 (ordering transfer of <aberdeenairport.com>), where the Panel concluded that the complainant had rights in the unregistered mark ABERDEEN AIRPORT. But in that case the airport (established in 1935) had been operated for 18 years by a company called Aberdeen Airport Limited, and there were numerous references to Aberdeen Airport in a variety of publications over a period of many years.

In the Panel’s view, the record in this proceeding is not similarly compelling with respect to secondary meaning. Apart from an unsupported statement by the Complainant’s managing member alleging use of the mark since November 2004, the evidence essentially consists of a handful of advertisements published at the end of 2005 and early 2006, along with indications that the mark appeared on the Complainant’s website sometime after March 2005 and on signs at the Complainant’s facility by January 4, 2006.

Given the Panel’s conclusions below on the element of bad faith, it is not necessary for the Panel to determine whether the Domain Names are identical or confusingly similar to a mark in which the Complainant has rights. However, the foregoing discussion is instructive in assessing the Complainant’s contentions under the second and third elements of its UDRP Complaint.

C. Rights or Legitimate Interests

The Respondent cites Policy, Paragraph 4(c)(i) in defense of its registration of the Domain Names:

(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 bona fide offering of goods or services.

The Respondent is president of a company that indisputably operates a “jet center” selling fuel and aircraft services at the “Montrose” airport. The Respondent prepared for this business by submitting a proposal in response to the County’s 2005 RFP for taking over and expanding its FBO operations at the airport, and the Respondent’s company commenced offering goods and services as an FBO at the airport on January 4, 2006, after succeeding in this competitive bidding process – all before notice of any dispute over domain names or the Complainant’s claimed MONTROSE JET CENTER mark.

The Respondent has never operated under the name “Montrose Jet Center,” and he does not reveal an intention to do so. But those words are a fair description of his company’s operations at the Montrose Regional Airport, and (absent bad faith) could be used in domain names designed to attract Internet users seeking information about “jet center” services at the “Montrose” airport. The Complainant argues that the Respondent cannot have a “legitimate” interest in using Domain Names that infringe the Complainant’s mark. But there is insufficient evidence (as discussed above in connection with the first element of the Complaint) supporting the Complainant’s claim of having established MONTROSE JET CENTER as a common-law mark by the time the Respondent registered the Domain Names on December 30, 2005 and January 7, 2006, respectively.

The Complainant’s remaining contentions regarding this element of the Complaint depend essentially on a conclusion that the Respondent’s registration of the Domain Names was not genuinely motivated by an attempt at legitimate, descriptive advertising of its goods and services at the Montrose airport but rather by a bad-faith effort to profit from misleading Internet users and disrupting the Complainant’s business. Therefore, that argument is addressed below, in connection with the third element of the Complaint.

D. Registered and Used in Bad Faith

The Complainant cites two subparagraphs in the non-exhaustive list of circumstances indicating bad faith that is found in the Policy, Paragraph 4(b):

(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 web site 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 web site or location or of a product or service on your web site or location.

Both of these allegations depend first on establishing the probability that the Respondent knew the Complainant, its direct competitor, was in fact using the term “Montrose Jet Center” to label or advertise its jet center services at the Montrose airport. The argument based on Paragraph 4(b)(iv) of the Policy further requires evidence supporting an inference of the Respondent’s intent to create a likelihood of confusion with a mark held by the Complainant. Neither of these factual propositions is clearly established on this record, even taking into account the additional briefing on the first point in the Complainant’s Supplemental Filing.

The Respondent denies knowledge of the Complainant’s use of MONTROSE JET CENTER at the time he registered the Domain Names on December 30, 2005, and January 7, 2006, respectively. He points out that the Complainant had long operated under the name “JetAway Aviation”, not “Montrose Jet Center”. The Respondent states that he avoided using the term “aviation” in registering several descriptive domain names in December 2005 and January 2006, precisely to avoid confusion with the Complainant. The Respondent declares that he has not seen “Montrose Jet Center” on signs at the front of the Complainant’s facility, simply because the Complainant does not permit him to drive up the guarded half-mile service road leading to its entrance. The Respondent asserts that only in April 2006 did a sign marked “Montrose Jet Center” appear (in addition to the older sign for “JetAway Aviation”) on the airport side of the Complainant’s building.

The Complainant argues that the Respondent’s ignorance is implausible, since both parties operate at the same airport. But even in its Supplemental Filing replying to the Respondent’s contentions the Complainant fails to indicate when it posted signs with its claimed MONTROSE JET CENTER mark. Their first dated appearance is in a newspaper photograph of the building entrance published on January 4, 2006, after the Respondent’s registration of the Domain Name <montrosejetcenter.com>. Thus, the Respondent’s proximity is not conclusive of his knowledge of the Complainant’s claimed mark, or even its intent to use the mark, in December 2005 and at the beginning of January 2006. The other fact mentioned by the Complainant in its Supplemental Filing –(the recent bidding war between the two parties in response to the County’s 2005 RFP) does not support the Complainant’s inference of the Respondent’s actual knowledge. The Complainant’s own materials submitted in response to the County’s RFP use the name “JetAway Aviation,” not MONTROSE JET CENTER. Thus, there is insufficient evidence to support the claim that the Respondent registered the Domain Names “primarily for the purpose of disrupting the business” of the Complainant.

The Complainant argues as well that the Respondent intended to create a “likelihood of confusion” with the Complainant’s mark MONTROSE JET CENTER, but this argument is similarly unpersuasive. The Complainant did not register a state trademark and trade name using those words until after the Respondent registered the Domain Names. Nor did the Complainant register its own domain name similar to the claimed mark until April 2006, shortly before commencing this proceeding. The Complainant’s claim to earlier common-law rights to the mark is weak. It does not indicate when it started displaying MONTROSE JET CENTER on its building or website, and it does not provide copies of advertisements, brochures, or other documents to support the contention of its managing member that it “started marketing activities using the Montrose Jet Center Mark on approximately November 30, 2004”. The four advertisements furnished by the Complainant were apparently published in 2006 or at the end of 2005. As indicated above in discussing the first element of the Complaint, this very recent advertising of a “Montrose Jet Center” (still in combination with the more established name “JetAway Aviation”) is insufficient to establish that the Complainant had common-law rights in the descriptive mark MONTROSE JET CENTER by the time the Respondent registered the Domain Names in a putative effort to engender confusion with that mark.

Given the opportunity to refute the Respondent’s contentions, the Complainant has simply failed to provide convincing evidence that it established secondary meaning in MONTROSE JET CENTER by December 2005 or publicized the claimed mark at the airport, in advertising, and in the RFP proceedings before the County in such a manner that the Respondent “must” have known that the Complainant was using the mark when the Respondent registered the Domain Names. The Complainant has the burden of persuasion on the issue of bad faith, as on the other elements of its Complaint under the Policy. It has not met that burden. While it is certainly a plausible theory that its direct competitor might attempt to disrupt the Complainant’s business or divert Internet users, the Panel is not persuaded by the evidence in the record that this is what probably occurred.

Both parties had a potential interest in using the highly relevant, descriptive words “Montrose Jet Center,” as a name, as a domain name, or in descriptive advertising. There is evidence that in December 2005 and January 2006 both parties took steps to use those words in connection with their competing businesses. The Respondent moved more quickly to use the words in Domain Names. This is not clearly a sign of bad faith, because the Complainant did not have an established common-law claim to a mark using those words by that time.

In short, it appears to the Panel that this dispute represents a race to use descriptive words in a newly competitive marketplace, rather than a bad-faith effort by the Respondent to trade on the Complainant’s established marks.

The Complainant’s other arguments for bad faith are also not persuasive. The contact details in the Respondent’s original registration were largely accurate but displayed the wrong zip code in one place, and a street address missing one number in another. Sufficient information was provided to identify and locate the registrant, and the errors appear more likely to be inadvertent than the result of a calculated effort at obfuscation. (UDRP Panels have certainly seen much more effective efforts at obfuscation.)

Similarly, “anonymous” registration services do reduce spam to the registrant’s contact addresses, as the Respondent observes, and they do not normally prevent the disclosure of the registrant in the event of a lawsuit or UDRP complaint. The Domain Name <Proxy Agreement> used by the current Registrar, for example, includes the following provision:

You further understand and agree that if DBP is named as a defendant in, or investigated in anticipation of, any legal or administrative proceeding arising out of Your domain name registration or Your use of DBP’s services, Your private domain name registration will automatically revert back to You and Your identity will therefore be revealed in the Whois directory as Registrant.

In this case, moreover, the Domain Names redirect Internet users to the Respondent’s Black Canyon Jet Center website, so there has been no serious issue of hiding the identity of the responsible party.

The Panel concludes that the Complainant has not met its burden of establishing the probability that the Respondent registered and used the Domain Names in bad faith.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

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W. Scott Blackmer
Sole Panelist

Dated: June 16, 2006