Bechtel Group, Inc. v. PrivacyProtect.org / Domain Admin
Claim Number: FA1305001499268
Complainant is Bechtel Group, Inc. (“Complainant”), represented by Laurie H. van Loben Sels of Duane Morris, LLP, California, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bechtelcorporations.com>, registered with REGISTERMATRIX.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 10, 2013; the National Arbitration Forum received payment on May 13, 2013.
On May 21, 2013, REGISTERMATRIX confirmed by e-mail to the National Arbitration Forum that the <bechtelcorporations.com> domain name is registered with REGISTERMATRIX and that Respondent is the current registrant of the name. REGISTERMATRIX has verified that Respondent is bound by the REGISTERMATRIX 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 May 29, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 18, 2013 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@bechtelcorporations.com. Also on May 29, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i): Complainant’s Rights / Confusing Similarity
Policy ¶ 4(a)(ii): Respondent Lacks Rights & Legitimate Interests
Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use & Registration
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant, Bechtel Group, Inc., is a holding company for a large group of international construction, procurement, and engineering companies based out of the United States. Complainant claims that it operates under the BECHTEL mark, which it has registered with the USPTO (Reg. No. 1,047,369 registered on Aug. 31, 1976). The Panel agrees that USPTO trademark registration provides adequate evidence of Complainant’s Policy ¶ 4(a)(i) rights, even if Respondent is located in Australia. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the 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.”).
Complainant argues that Respondent has registered the <bechtelcorporations.com> domain name, which features the entire BECHTEL mark with the generic business designation “corporations.” The Panel notes the addition of the generic top-level domain (“gTLD”) “.com,” but regards the addition as irrelevant. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The Panel also agrees that generic business designations such as “corporations” do not defeat the confusing similarity of a domain name. See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity). Thus the Panel concludes that the <bechtelcorporations.com> domain name is confusingly similar to the BECHTEL mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has not been commonly known by the <bechtelcorporations.com> domain name. Complainant claims that Respondent is not authorized or licensed to use the BECHTEL mark in any way. The Panel notes that the domain name’s WHOIS information identifies “PrivacyProtect.org / Domain Admin” service as the registrant. The Panel agrees that there is no basis for finding that Respondent is commonly known as the <bechtelcorporations.com> domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant also argues that Respondent is using the <bechtelcorporations.com> domain name to display random advertisements to third-party websites. Complainant argues that these advertisements provide potential advertising income to Respondent. The Panel notes that the record illustrates that the record provides evidence that random hyperlinks appear at the domain name’s resolving website. The Panel agrees that the use of the confusingly similar <bechtelcorporations.com> domain name for the purposes of promoting various hyperlinks does not amount to a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Complainant has proven this element.
Complainant argues that Respondent intends to distract and confuse Internet users into believing the <bechtelcorporations.com> domain name is being used by or sponsored by Complainant. Complainant claims that Respondent profits by displaying third-party advertisements through its use of this domain name that contains the entire BECHTEL mark. The Panel notes that this domain name resolves to a website that consists only of hyperlinks to various third-party sponsors. The Panel agrees that Respondent has engaged in Policy ¶ 4(b)(iv) bad faith by using this confusingly similar domain name to trick Internet users into visiting the <bechtelcorporations.com> domain name so as to increase the chances that Respondent will receive advertising revenue. See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain).
Complainant also argues that Respondent has used the <bechtelcorporations.com> domain name to host e-mail accounts in bad faith. Complainant claims that Respondent has created an info@bechtelcorporations.com e-mail address to host and solicit fraudulent job offers. Complainant states that Respondent is thus seeking to phish personal and financial information from Internet users by leading them to believe that they have a chance to work for Complainant. The Panel notes that it appears Respondent was using the <bechtelcorporations.com> domain name in an e-mail address to suggest that it was an official representative of Complainant, and thus made false job offers to various third parties. The Panel agrees that Respondent’s Policy ¶ 4(a)(iii) bad faith use and registration is showcased through this phishing scheme of tricking Internet users into providing Respondent with sensitive information under the belief that the user would actually be getting the opportunity to work for Complainant. See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
Complainant last argues that Respondent at least had constructive knowledge of Complainant’s marks when registering the domain name due to Complainant’s use of the mark and trademark registrations. Complainant also cites its use of the mark in the global marketplace since 1898. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. 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 has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <bechtelcorporations.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: June 25, 2013
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