BorgWarner Inc. v. Kevin Nowlan
Claim Number: FA2103001937859
Complainant is BorgWarner Inc. (“Complainant”), represented by Thad Chaloemtiarana of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is Kevin Nowlan (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <borgwarnerinc.com>, registered with Porkbun 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 24, 2021; the Forum received payment on March 24, 2021.
On March 25, 2021, Porkbun LLC confirmed by e-mail to the Forum that the <borgwarnerinc.com> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun 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 March 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 2021 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@borgwarnerinc.com. Also on March 29, 2021, 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 April 26, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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. 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 any response from Respondent.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the BORGWARNER mark and submits that it is one of the largest automotive suppliers in the world. For many years, Complainant has offered a wide variety of automotive products and services, such as turbochargers, emission systems, hybrid automotive technology, propulsion technologies, batteries, motors, and power transmission products under its BORGWARNER marks. Complainant currently has 96 locations in 24 countries around the world and approximately 50,000 employees worldwide. In 2020, BorgWarner had over $ 10 billion in sales.
Complainant adds that the BORGWARNER mark is a coined term that was adopted by Complainant for use as its company name and house mark.
Complainant submits that the disputed domain name is confusingly similar to its BORGWARNER mark, as it fully incorporates Complainant's BORGWARNER mark. Liberty Counsel v. Fei Zhu, FA 332473 (Forum Aug. 5, 2010) (finding that the disputed domain name containing Complainant's mark in its entirety in addition to the gTLD ".com" was identical to Complainant's mark).
The addition of a company abbreviation "inc." and the top-level domain ("gTLD") ".com" to the trademark does not serve to distinguish the domain name from the trademark. Citing Medline Industries, Inc. v. Jeff Ramos, FA 1805909 (Forum Oct. 12, 2018).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not generally known by the disputed domain name, nor has it acquired any trademark or service mark rights in the name or mark. Respondent is not even identified in the registration information in the Whois database listings for the disputed domain name. Citing Chevron Intellectual Property LLC v. Fred Wallace, FA150600 (Forum July 27, 2015) (finding that a respondent was not commonly known by the <chevron-europe.com> domain name where the relevant WHOIS information identified its registrant only as “Fred Wallace.”).
Additionally, Complainant submits that Respondent is identified as "Whois Privacy" in the registration information in the WHOIS database listing for the disputed domain name. There is no evidence to suggest that Respondent is commonly known by "BorgWarner," and there is no evidence of Respondent's legitimate rights or interests in the disputed domain name. Citing Kohler Co. v. Privacy Service, FA1621573 (Forum Jul. 2, 2015) (respondent had no rights or legitimate interests in the disputed domain name when "Privacy Service" was listed as the registrant of the disputed domain name).
In addition, Complainant asserts that it has not licensed or otherwise permitted Respondent to use the BORGWARNER mark in connection with the disputed domain name. Citing Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum Jun. 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).
It is further contended that Respondent has no rights in the BORGWARNER mark as Complainant’s longstanding trademark rights would prevent the Respondent from acquiring such rights. Citing Pepsico, Inc. v. Becky a/k/a Joe Cutroni, FA 117014 (Forum Sept. 3, 2002) ("The notoriety and fame of Complainant's PEPSI and PEPSI-COLA trademarks, due to Complainant's popular soft drink products, creates a presumption that no one else could be commonly known by the mark or the trade name.").
Arguing that the disputed domain name is being used for fraudulent purposes, Complainant submits that email addresses associated with the disputed domain name are being used to impersonate Complainant and its personnel in furtherance of a fraudulent scheme to deceive suppliers and to steal their goods.
Complainant states that it was recently contacted by an agent of the U.S. Federal Bureau of Investigation (“FBI”), who informed Complainant about fraudulent activity by a third-party purporting to be Complainant. According to the information provided by the FBI, Respondent has been using the disputed domain name to send emails to impersonate a real employee of Complainant [name provided in the Complaint but redacted in this decision] who is the Advanced Purchasing Manager for Complainant.
Specifically, it is alleged that Respondent impersonated its named employee, by sending emails using the disputed domain name from <[named_employee]@borgwarnerinc.com> to a third party electronics manufacturer and reseller. The third party is also named in the Complaint.
Copies of emails adduced in evidence in an annex to the Complaint show that these emails featured the BORGWARNER name and mark and a doctored version of the Complainant’ employee’s signature block which featured Complainant’s real address, but replaced his email address with “[named_employee]@borgwarnerinc.com” and changed the employee’s telephone number to Respondent’s telephone number.
Complainant contends that in those emails, Respondent, fraudulently misrepresenting itself as Complainant, attempting to purchase 56 laptops from the named third party with payment on receipt. Respondent requested the laptops to be delivered to “BorgWarner, Inc.” at an address [provided in the Complaint but redacted in this Decision] that was not a legitimate location of Complainant but was, in fact, Respondent’s self-storage storage location.
In addition Complainant submits that Respondent has used the disputed domain name as an email address to purchase 22 laptops from a third party, providing a forged “purchase order” featuring Complainant’s trademark, billing address, company identification number but requesting delivery to Respondent’s identified self-storage location in Michigan.
To add to the confusion Respondent has arranged that all visitor traffic to the website to which the disputed domain name resolves is redirected to Complainant’s own official website and therefore unsuspecting Internet users would mistakenly assume that Respondent is in fact Complainant.
In an annex to the Complaint, in support of these allegations Complainant has provided copies of the abovementioned correspondence with the third party and the FBI.
Complainant submits that such use the disputed domain name does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use.
Complainant further alleges that the disputed domain name was registered and is being used in bad faith, arguing that Respondent registered the disputed domain name long after Complainant adopted, used, and registered the BORGWARNER mark.
Additionally, Complainant contends that Respondent had constructive notice of Complainant's trademark rights in BORGWARNER as a result of Complainant’s many U.S. and worldwide trademark registrations. Citing 15 U.S.C. § 1072; Zagat Survey, LLC v. Friedmans Constr. Inc., FA 0210304 (Forum Jan. 2, 2004) (finding that respondent had constructive knowledge of complainant's rights based on complainant's U.S. trademark registration and that respondent's registration of the infringing domain name, which was confusingly similar thereto, constituted bad faith).
In conclusion, Complainant submits that the fraudulent use of the disputed domain name as an email address and to redirect Internet traffic as detailed above constitutes use of the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is an automotive supplier with a worldwide business providing a wide variety of automotive products and services, such as turbochargers, emission systems, hybrid automotive technology, propulsion technologies, batteries, motors, and power transmission products under its BORGWARNER marks.
Complainant is the registered owner of a portfolio of trademark registrations including United States federal trademark registrations, including:
· United States registered trademark BORGWARNER (design) registration number 787,3621, 6, registered on the Principal Register on March 30, 1965 for goods in United States trademark classes 1, 12, 13, 14, 16, 19, 23, 24, 26, 31, 32, 34, 44.
· United States registered trademark BORGWARNER (design) registration number 1,414,891, registered on the Principal Register on October 28, 1986 for goods in international class 12;
· United States registered trademark BORGWARNER (design) registration number 1,412,240, registered on the Principal Register on October 7, 1986 for goods in international class 12;
· United States registered trademark BORGWARNER registration number 4,019,697, registered on the Principal Register on August 30, 2011 for goods in international class 6, 14, 16, 21 and 25.
Complainant has an established Internet presence with its main website at <www.borgwarner.com> which was established in 2002.
The disputed domain name <borgwarnerinc.com> was registered on June 30, 2020. It is used as the address of a website that redirects Internet traffic to Complainant’s own abovementioned website and has also been used for email account from which emails are being sent to third parties impersonating Complainant. The registrant avails of a privacy service to conceal his identity on the published WhoIs.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request for verification of the registration details of the disputed domain name.
The Registrar confirmed that Respondent, who has availed of a privacy service to conceal his identity on the published WhoIs, is the registrant of the disputed domain name.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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 adduced clear, convincing and uncontested evidence that it is the owner of and has rights through registration and at common law in the BORGWARNER mark. Complainant relies on its rights in its portfolio of trademark registrations described above and its long and extensive use of the mark in its automotive supplies business which has grown to have a presence in 96 locations in 24 countries around the world, with approximately 50,000 employees worldwide and annual sales in 2020 amounting to USD$ 10 billion.
The disputed domain name <borgwarnerinc.com> consists of Complainant’s BORGWARNER mark in combination with the element “inc” and the generic Top-Level Domain (“gTLD”) extension <.com>.
Complainant’s BORGWARNER mark which is a coined term is the dominant and only distinctive element in the disputed domain name.
Neither the element “inc”, which is a commonplace abbreviation for “incorporated” as part of a corporate name, nor the gTLD extension contribute any distinctive character to the disputed domain name. The gTLD extension would, most probably be viewed by Internet users as a necessary technical element for a domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the BORGWARNER mark in which Complainant has rights.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out an uncontested prima facie case that Respondent has no rights or legitimate interests in the disputed domain name alleging that
· Respondent is not generally known by the disputed domain name;
· Respondent is not even identified in the disclosed registration information in the WhoIs database listings for the disputed domain name and has availed of a privacy service to conceal his identity on the published WhoIs;
· Respondent has not acquired any trademark or service mark rights in the disputed domain name, or the BORGWARNER mark and Complainant’s longstanding trademark rights would prevent the Respondent from acquiring such rights;
· Complainant has not licensed or otherwise permitted Respondent to use the BORGWARNER mark in connection with the disputed domain name;
· the evidence adduced shows that email addresses associated with the disputed domain name are being used to impersonate Complainant and its personnel in furtherance of a fraudulent scheme to deceive suppliers and to steal their goods which Complainant has reported U.S. Federal Bureau of Investigation (“FBI”);
· the FBI were aware of the fraudulent activity using the disputed domain name and advised Complainant accordingly;
· Respondent has also fraudulently misrepresented himself as Complainant in an to purchase 56 laptops from the named third party requesting that they be delivered to Respondent’s self-storage storage location;
· Respondent has also used the disputed domain name as an email address to purchase 22 laptops from a third party, providing a forged “purchase order” featuring Complainant’s trademark, billing address, company identification number but requesting delivery to Respondent’s identified self-storage location in Michigan; and
· such use the disputed domain name does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use.
It is well established that once Complainant makes out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, the burden of production shifts to Respondent to prove that he has such rights or interests.
Respondent has failed to deny any of the allegations made by Complainant and so has failed to discharge the burden of production. This Panel must therefore find that on the balance of probabilities Respondent had no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant’s BORGWARNER mark is a distinctive, coined term which has been extensively used by Complainant for 90 years, has been the subject of US Federal trademark registration since March 30, 1965 and is currently a business with an established Internet presence having over $ 10 billion in annual sales. It is most improbable that the registrant of the disputed domain name was unaware of Complainant when the disputed domain name was chosen and registered.
In the circumstances described in the Complainant, this Panel finds that on the balance of probabilities the disputed domain name was registered in bad faith with the intention that it would be used to impersonate Complainant.
The strong, uncontested evidence adduced by Complainant, proves on the balance of probabilities, that the disputed domain name is being used in bad faith to impersonate Complainant and its employee in order to perpetrate fraud on third Parties and furthermore is being used in bad faith to redirect Internet traffic to Complainant’s website in order to create a likelihood of confusion with Complainant, its name, website and mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site.
As this Panel finds therefore that the disputed domain name was registered and is being used in bad faith, Complainant has satisfied the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <borgwarnerinc.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: April 27, 2021
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