Skip to content
August 19, 2010 / Nate Harris

CharterX, Inc. and Wyvern Consulting, Ltd. v. Gregg Westgate

Summary of CharterX, Inc. and Wyvern Consulting, Ltd. v. Gregg Westgate
(Nat. Arb. Forum. FA1007001335604
)
Filed July 16, 2010; Decided August 16, 2010 (Panelist: David P. Miranda, Esq.)

Domain Name: <wyvern.com>

wyvern.com

Screenshot of wyvern.com

The Parties

Complainant Wyvern Consulting Ltd. (a subsidiary of the other Complainant, Charter X, Inc.) is an authority on aviation safety and consulting for the private aviation industry. It has used the trade name WYVERN since 1991, and claims “widespread media coverage” in aviation publications. Wyvern has used the domain name <wyvernltd.com> since 1998.

Respondent Gregg Westgate of Connecticut is a man of varied interests. He registered the disputed domain name <wyvern.com> in either 2005 or 2006 (the decision variously recites both dates) on behalf of his employer, which planned a foray into the “gasification” business. When the employer decided to pass on the plan, Mr. Westgate decided to “use the domain as a private forum for his World of Warcraft guild.”

According to Mr. Westgate, Wyvern is the name of a mythical winged dragon that populates World of Warcraft, an online multiplayer game. [Aren’t all dragons mythical and winged?]

Mr. Westgate claims to have never heard of the Complainants until they contacted him about the disputed domain name in 2006, when he allegedly convinced them that he would be using the domain for legitimate purposes. Attempts to access the website were met with “Forbidden. Access Denied.” However, Mr. Westgate claimed to maintain and access an email address on the domain for personal use.

Identical or confusingly similar

Complainant alleged that its common law marks had acquired secondary meaning through promotion and advertising, its website, its membership in several aviation trade associations, and extensive media coverage. The Panel agreed that trademark registration is not necessary to establish rights under the policy if secondary meaning is established. Mr. Westgate did not dispute Complainant’s rights in its mark, nor the fact that the disputed domain was identical to Complainant’s mark.

Accordingly, the Panel found that the disputed domain was identical to Complainant’s mark.

Rights or Legitimate Interest

The Panel notes that the Complainant has the “light” burden of showing that Mr. Westgate has no rights or legitimate interest in the disputed domain name. The inactive holding of a disputed domain name is not a legitimate use for purposes of the Policy. Here, Complainant submitted evidence that Mr. Westgate had not used the domain to play World of Warcraft since 2008. Mr. Westgate pointed to his email address as use. The Panel disagreed, citing UDRP decisions finding that use of an email address at the disputed domain name, without more, is not sufficient to demonstrate a bona fide offering.

Thus, the Panel found Mr. Westgate had no rights or legitimate interest in the mark.

Bad Faith

The Complainant argued that Mr. Westgate must have had either constructive or actual knowledge of its mark when he registered and used the disputed domain name. The Panel brushed that argument aside, however, and seemed to believe this was just the age-old story of “failed gasification business, using the domain name for a World of Warcraft guild.” Accordingly, the Complainant failed to prove Mr. Westgate registered the disputed domain in bad faith.

Furthermore, though there was minimal [no?] evidence of Mr. Westgate’s current use of the disputed domain, the burden to show non-use is on the Complainant. Thus, the Complainant also failed to prove that Mr. Westgate used the disputed domain in bad faith.

Decision

Because the Complainant failed to prove bad faith, relief is DENIED.


Commentary

Though the point is barely addressed in the decision, Complainant apparently questioned Mr. Westgate’s tale of initially registering the disputed domain in connection with his employer’s business. I think that’s a good point. It seems a little odd that the gasification company was going to be named after a mythical winged dragon from World of Warcraft. In the end, though, that story proved to be deadly to Complainant’s argument of bad faith registration.

Furthermore, the Complainant alleged constructive knowledge as proof of bad faith, which the Panel didn’t really address. See SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport (Nat. Arb. Forum FA94956) (finding bad faith where “[t]he Respondent knew or should have known of the trademark registration and usage of the [complainant’s] marks prior to his registration of the domain name in question.”).

Here, the Panel relied on the gasification company story to show a lack of bad faith. Does a lack of bad faith in one area (the gasification company story) cure bad faith in another (constructive notice)? Though it’s not stated here, I think the Panel disregarded the constructive notice argument because the parties are not in the same field.

Epilogue

8/19/2010: <wyvern.com> still says “Access Forbidden. Access denied. Please click on the back button to return to the former page.”

Advertisements

One Comment

Trackbacks

  1. Proving Respondent’s Rights With Subdomains « The Domain Blog

Comments are closed.