ITT Inc. and ITT Manufacturing Enterprises, LLC v. Thomas Romero
Claim Number: FA2108001961339
Complainant is ITT Inc. and ITT Manufacturing Enterprises, LLC (“Complainant”), represented by Peter S. Sloane of Leason Ellis LLP, New York, USA. Respondent is Thomas Romero (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <itthelpdesk.com>, registered with GoDaddy.com, 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.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 27, 2021; the Forum received payment on August 27, 2021.
On August 30, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <itthelpdesk.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 1, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 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@itthelpdesk.com. Also on September 1, 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.
A timely Response was received and determined to be complete on September 20, 2021.
On September 24, 2021, Complainant filed an additional submission, which was filed in a timely manner according to the Forum’s Supplemental Rule #7.
On September 27, 2021, Respondent filed an additional submission, which was filed in a timely manner according to the Forum’s Supplemental Rule #7.
On September 27, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Reinhard Schanda 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 name be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. ITT Inc. and ITT Manufacturing Enterprises, LLC. ITT Inc. and ITT Manufacturing Enterprises, LLC are related companies and have ownership of various ITT marks. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
In this case the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants. As a result, the Panel treats them all as a single entity in this proceeding.
A. Complainant
Complainant contends that it is a leading manufacturer of critical components and customized technology solutions. Complainant has rights in the ITT mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 829,106, registered May 23, 1967). Complainant argues that Respondent’s <itthelpdesk.com> domain name is confusingly similar to Complainant’s ITT mark since it includes the entire mark and simply adds the term “help desk.”
Complainant further contends that Respondent does not have rights or legitimate interests in the <itthelpdesk.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the ITT mark. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as the domain is inactive.
Finally, Complainant contends that Respondent has registered and uses the <itthelpdesk.com> domain name in bad faith. Respondent fails to resolve the disputed domain name to an active website. Additionally, Respondent had constructive and/or actual knowledge of Complainant’s rights in the ITT mark based on the global recognition of the mark.
B. Respondent
Respondent argues that the <itthelpdesk.com> domain name is not identical or confusingly similar to Complainant’s ITT mark. Respondent contends that the ITT mark and the disputed domain name are generic.
Respondent further contends that it has rights and legitimate interests in the <itthelpdesk.com> domain name as Respondent plans to use the domain to provide IT services to small businesses.
Finally, Respondent contends that it has registered and uses the <itthelpdesk.com> domain name in good faith.
In this regard the Panel notes that the disputed domain name was registered on May 20, 2021.
The Panel finds that:
(1) The domain name <itthelpdesk.com> is confusingly similar to Complainants’ registered trademarks.
(2) The Respondent has not established rights or legitimate interests in the domain name <itthelpdesk.com>.
(3) The Respondent has registered and is using the domain name <itthelpdesk.com> 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:
(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.
Complainant asserts rights in the ITT mark based on registration with the USPTO (e.g., Reg. No. 829,106, registered May 23, 1967). Registration of a mark with the USPTO is a valid showing of rights in a mark. See Synovus Financial Corp. v. Elizabeth Fagin / Wells & Wadw, FA 1601001655021 (Forum Feb. 5, 2016) (finding that Complainant had demonstrated its rights in the SYNOVUS mark through its registration with the USPTO). Since Complainant provides evidence of registration of the ITT mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <itthelpdesk.com> domain name is confusingly similar to Complainant’s ITT mark since it includes the entire mark and simply adds the term “help desk.” The addition of generic terms to a mark does not negate any confusing similarity between a disputed domain name and a mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). Thus, the Panel finds that the disputed domain name who in this case is confusingly similar to the ITT mark under Policy ¶ 4(a)(i).
While Respondent contends that the <itthelpdesk.com> domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made 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 prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant argues that Respondent does not have rights or legitimate interests in the <itthelpdesk.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the ITT mark. WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a mark constitutes a further showing that a respondent lacks rights in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here, the WHOIS information for the disputed domain name lists “Thomas Romero” as the registrant and no information suggests Complainant authorized Respondent to use the ITT mark. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as the domain is inactive. Failure to resolve a disputed domain name to an active website is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Kohler Co. v. xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”); see also Household Int’l, Inc. v. Cyntom Enters., FA 95784 (Forum Nov. 7, 2000) (finding that the respondent’s “vague and unsupported assertion of ‘plans to sell household goods, supplies and appliances over the Internet’” was insufficient to be considered proof of a legitimate business plan). Here, Complainant provides a screenshot shows the disputed domain name resolves to a blank webpage. Thus, the Panel agrees with Complainant and finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant argues that Respondent registered and uses the <itthelpdesk.com> domain name in bad faith because Respondent fails to resolve the disputed domain name to an active website. Under Policy ¶ 4(a)(iii), failure to resolve a disputed domain name to an active website indicates bad faith registration and use. See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”); see also Microsoft Corporation v. Jordin Barth, FA1211001473274 (Forum Jan. 14, 2013) (finding that the respondent’s failure to make an active use of the disputed domain name from the time it was registered until the time it was contacted by the complainant’s counsel indicated that the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). The Panel points out that Complainant provided a screenshot showing the disputed domain name resolves to a blank webpage. Therefore, the Panel finds bad faith per Policy ¶ 4(a)(iii).
Additionally, Complainant contends that Respondent had constructive and/or actual knowledge of Complainant’s rights in the ITT mark based on the global recognition of the mark. While constructive knowledge is insufficient for a finding of bad faith, per Policy ¶ 4(a)(iii), actual knowledge of a Complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the fame of the mark. See BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of bad faith); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Complainant provides evidence of the notoriety of the ITT mark. Since the Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the ITT mark, the Panel also finds bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <itthelpdesk.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
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