AM General LLC v. Ashkan Shirafkan
Claim Number: FA1909001863659
Complainant is AM General LLC (“Complainant”), represented by Gerard T. Gallagher of Barnes & Thornburg LLP, Indiana, USA. Respondent is Ashkan Shirafkan (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ihumvee.com> and <humveex.com>, registered with Network Solutions, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paddy Tam as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 24, 2019; the Forum received payment on September 25, 2019.
On September 24, 2019, Network Solutions, LLC confirmed by e-mail to the Forum that the <ihumvee.com> and <humveex.com> domain names are registered with Network Solutions, LLC and that Respondent is the current registrant of the names. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 September 27, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 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@ihumvee.com, postmaster@humveex.com. Also on September 27, 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.
A timely Response was received and determined to be complete on October 1, 2019.
On October 3, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paddy Tam as Panelist.
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a heavy vehicle and contract automotive manufacturer. Complainant has rights in the HUMVEE mark based on registration with multiple trademark agencies around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,697,530, registered June 30, 1992). Respondent’s <ihumvee.com> and <humveex.com> domain names are identical or confusingly similar to Complainant’s mark as they incorporate Complainant’s HUMVEE mark and simply add the letters “i" or “x” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <ihumvee.com> and <humveex.com> domain names. There is no evidence that Respondent is commonly known by the disputed domain names prior to registration. Respondent uses the <ihumvee.com> and <humveex.com> domain names to divert those seeking Complainant’s website and online services to Respondent’s website by registering domain names containing Complainant’s mark and incorporating Complainant’s marks into Respondent’s business name and logo.
Respondent registered and uses the <ihumvee.com> and <humveex.com> domain names in bad faith. Respondent uses the disputed domain names to deceive and confuse Internet users into believing Respondent is affiliated with or endorsed by Complainant and attract users to Respondent’s commercial website. Respondent had constructive or actual knowledge of Complainant’s mark at the time of registration of the disputed domain names.
B. Respondent
Respondent submitted a response on October 1, 2019. Respondent purchases HUMVEES and resells them with enhancements and modifications. Respondent uses the <ihumvee.com> and <humveex.com> domain names for the resale of these vehicles. Respondent purchases these vehicles from the U.S. government, thus Respondent’s use of the HUMVEE mark is protected by the doctrine of first sale. Respondent uses the HUMVEE mark to refer to the products by name and is covered by the doctrine of nominative fair use. Respondent’s <ihumvee.com> and <humveex.com> domain names feature disclaimers stating that the mark is owned by Complainant.
The <ihumvee.com> domain name was registered on September 25, 2017 and the <humveex.com> domain name was registered on July 18, 2018.
1. Complainant has been using the HUMVEE Trademarks since 1983;
2. Complainant owns numerous HUMVEE Trademarks including but not limited to Reg. No. 1,697,530, registered with USPTO on June 30, 1992;
3. The disputed domain name <ihumvee.com> resolves to a website incorporating Complainant’s HUMVEE Trademark;
4. The disputed domain name <humveex.com> redirects all traffics to the website resolved by another disputed domain name, <ihumvee.com>;
5. Complainant has not authorized Respondent to use it HUMVEE Trademark and Respondent confirms that it is not associated with Complainant.
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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
To satisfy the first element under Policy ¶ 4(a), a Complainant needs to prove its rights in a trademark and the domain names are identical and/or confusingly similar to the trademark.
First, the Complainant claims rights in the HUMVEE mark through its registrations of the Trademarks with the USPTO (e.g. Reg. No. 1,697,530, registered June 30, 1992). By virtue of its federal trademark registrations, Complainant has proved that it has rights in the mark under Policy ¶ 4(a). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Accordingly, the Panel accepts that the Complainant has the registered Trademark rights in the HUMVEE mark.
Second, the Complaint claims that the additional letters “i" or “x” does not distinguish the domain name from Complainant’s HUMVEE trademark. The Panel accepts that the additional letter does not alter the underlying trademark or negate the confusing similarity and it does not sufficiently differentiate the disputed domain name from that trademark. In addition, the Panel also finds that the “.com” generic top-level domain (“gTLD”) is irrelevant when establishing whether or not a mark is identical or confusingly similar for the purposes of Policy ¶ 4(a)(i). See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank’).
Respondent makes no cognizable arguments with regards to Policy ¶ 4(a)(i).
For the foregoing reasons, the Panel finds the Complainant has satisfied Policy ¶ 4(a)(i).
To satisfy the second element under Policy ¶ 4(a), the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the domain names, and the burden of prove then shifts to the Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues Respondent lacks rights or legitimate interests in the <ihumvee.com> and <humveex.com> domain names as there is no evidence that Respondent is commonly known by the disputed domain names prior to registration. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name and has rights or legitimate interest under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). The WHOIS information for both the disputed domain names lists the registrant as “Ashkan Shirafkan.” Therefore, the Panel may find Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the <ihumvee.com> and <humveex.com> domain names to divert those seeking Complainant’s website and online services to Respondent’s website. Use of a confusingly similar domain name to divert Internet users to a respondent’s website by creating an impression of affiliation between a respondent and complainant may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant argues Respondent diverts users to Respondent’s own website by registering domain names containing Complainant’s mark and incorporating Complainant’s marks into Respondent’s business name and logo. In addition, Complainant further alleges that Respondent has sold counterfeit HUMVEE® vehicles, incorporated Complainant’s mark into its business name and logo, and provided additional false and misleading to consumers.
The Panel finds that the Complainant has established a prima facie case and the burden of proof shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c):
(i) before any notice to Respondent of the dispute, Respondent’s 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; or
(ii) Respondent has been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) Respondent is 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.
In the present case, there is no evidence showing that Respondent neither has been commonly known by the dispute domain names nor is making legitimate noncommercial or fair use of the domain names. As to whether or not Respondent’s reseller service is a bone fide offering of goods or services, it’s commonly agreed that the Oki Data test should be applied. Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue; and
(ii) the respondent must use the site to sell only the trademarked goods or services; and
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
In the present case, Respondent asserts that it purchased HUMVEES legally from the U.S. Federal Government, and customized them and fabricated custom enhancement for them and Complainant does not even sell new or used HUMVEES to the civilian market in the U.S. In addition, the website on the disputed domain name states that Respondent “ENHANCE AND MODIFY HUMVEES and that AMG makes HUMVEES”. However, Respondent does not respond to Complainant’s assertion on selling counterfeit HUMVEE vehicles. Nevertheless, Panel is entitled to accept reasonable allegations set forth in the Complaint as true unless the evidence is clearly contradictory (see H-D U.S.A., LLC v. big three, FA1310001525853 (Forum Dec. 3, 2013).
The Panel is of the view that Respondent fails to meet at least one of the requirements set forth in the Oki Data test and the use of the domain names do not in connection with a bona fide offering of goods or services.
Despite Respondent also argues various legal points pursuant to the doctrines of first sale and nominative fair use, the Panel is of the view that the instant domain name dispute is governed by the UDRP and those doctrines of substantive intellectual property law are not applicable to the present case.
For the foregoing reasons, the Panel finds the Complainant has satisfied Policy ¶ 4(a)(ii).
To satisfy the third element under Policy ¶ 4(a), the Complainant must prove both the registration and use of the domain names are in bad faith.
First, Complainant argues Respondent had constructive or actual knowledge of Complainant’s mark at the time of registration of the <ihumvee.com> and <humveex.com> domain names. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Complainant argues that the HUMVEE mark is distinctive and registered in numerous jurisdictions throughout the world, giving Respondent constructive or actual notice of Complainant’s rights in the HUMVEE mark at the time of registration. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration under Policy ¶ 4(a)(iii).
Second, Complainant contends Respondent uses the <ihumvee.com> and <humveex.com> domain names in bad faith because Respondent uses the disputed domain names to deceive and confuse Internet users into believing Respondent is affiliated with or endorsed by Complainant and attract users to Respondent’s commercial website. Use of a disputed domain name to direct Internet users to a respondent’s own website by mimicking a complainant and giving the impression of affiliation or association can evince bad faith registration and use per Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iv).
For the foregoing reasons, the Panel finds the Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ihumvee.com> and <humveex.com> domain names be TRANSFERRED from Respondent to Complainant.
Paddy Tam, Panelist
Dated: October 7, 2019
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