Pilot Travel Centers LLC v. Alan Cortez / kloecknermetals
Claim Number: FA1907001851172
Complainant is Pilot Travel Centers LLC (“Complainant”), represented by Seth Hudson of Clements Bernard Walker PLLC, Tennessee, USA. Respondent is Alan Cortez / kloecknermetals (“Respondent”), South Africa.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pilottravelcentres.com>, registered with Namecheap Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 8, 2019; the Forum received payment on July 8, 2019.
On July 8, 2019, Namecheap Inc confirmed by e-mail to the Forum that the <pilottravelcentres.com> domain name is registered with Namecheap Inc and that Respondent is the current registrant of the name. Namecheap Inc has verified that Respondent is bound by the Namecheap Inc registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy.”
On July 9, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@pilottravelcentres.com. Also, on July 9, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 1, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates motor vehicle service stations and associated retail stores under the name PILOT TRAVEL CENTERS in the United States and Canada.
Complainant holds a registration for the PILOT service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,440,835, first registered May 26, 1987, most recently renewed as of June 16, 2017.
Respondent registered the domain name <pilottravelcentres.com> on or about November 28, 2018.
The domain name is confusingly similar to Complainant’s PILOT mark.
Respondent has not been commonly known by the domain name.
Complainant has not authorized Respondent to use the PILOT mark.
Respondent does not use the domain name in connection with either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent fails to make active use of the disputed domain name, which does not resolve to an active webpage, except that Respondent employs the domain name in an email address to pass itself off as an employee of Complainant in an apparent effort to reroute to itself payments intended for Complainant.
Respondent has no rights to or legitimate interests in the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [...] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the PILOT service mark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See State Farm Mutual Automobile Ins. Co. v. Henry Francis, FA 1738716 (Forum July 28, 2017) (confirming a UDRP complainant’s rights in a mark adequate for purposes of Policy ¶ 4(a)(i) where it had registered that mark with the United States Patent and Trademark Office).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here South Africa). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <pilottravelcentres.com> domain name is confusingly similar to Complainant’s PILOT service mark. The domain name contains the mark in its entirety, with only the addition of the expression “travel centres,” an appropriation of Complainant’s doing business as name containing a respelling of the word “centers” consistent with Complainant’s operations in Canada, plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Capital One Financial Corp. v. Huang Li Technology Corp c/o Dynadot, FA 1620197 (Forum June 16, 2015) (finding confusing similarity under Policy ¶4(a)(i) where a respondent misspelled the word “bank” by transposing the letters “a” and “n” and attaching the gTLD “.com” to the mark of a UDRP complainant in forming a domain name.
See also Lucasfilm Entertainment Company Ltd. LLC v George Ring, FA 1673825 (Forum June 7, 2016) (finding that, although a respondent’s domain name <lukasfilm.com> incorporated the LUCASFILM mark of another and merely substituted a phonetically identical ‘k’ for the ‘c,’ it was nonetheless confusingly similar to that mark).
Further see Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that the addition of a gTLD and the generic term “finance,” which described a UDRP complainant’s financial services business, to the mark of that complainant in creating a domain name did not sufficiently distinguish the domain name from the mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the challenged <pilottravelcentres.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the contested domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the PILOT mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Alan Cortez/kloecknermetals,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant contends, without objection from Respondent, that Respondent does not make any active use of the <pilottravelcentres.com> domain name except that Respondent employs the domain name in an email address to pass itself off as an employee of Complainant in an apparent effort to reroute to itself payments of funds intended for Complainant. This use is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that a respondent’s attempt to pass itself off as a UDRP complainant via an email address that was confusingly similar to the mark of that complainant did not constitute a bona fide offering of goods or services and thus failed to demonstrate that that respondent had rights to or legitimate interests in the domain name). See also Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1550388 (Forum May 5, 2014):
Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers…. [S]uch actions preclude[ ] a bona fide offer or fair use.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent uses the domain name <pilottravelcentres.com>, which we have found to be confusingly similar to Complainant’s PILOT service mark, in order to profit by perpetrating a fraud upon unsuspecting Internet users. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name.
See Graybar Services Inc. v. Graybar Elec, D2009-1017 (WIPO October 2, 2009), supra:
The Respondent's conduct … brings the case within the provisions of paragraph 4(b)(iv) of the Policy, for the whole of the fraudulent transaction was conducted on the Internet, showing that by using the domain name as the origin of the emails, the Respondent intentionally attempted to attract, for commercial gain, Internet users being the Complainant's suppliers to the Respondent's on-line location, by creating a likelihood of confusion between the Complainant's mark and the source … of the fraudulent emails.
We are also convinced by the evidence that Respondent knew of Complainant’s rights in the PILOT mark when it registered the <pilottravelcentres.com> domain name. This too demonstrates Respondent’s bad faith in registering the domain name. See, for example, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum August 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that that respondent knew of a UDRP complainant's rights in a mark when it registered that domain name).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <pilottravelcentres.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 5, 2019
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