DECISION

 

Navigant Consulting, Inc. v. Anthony Tomaska / Magnificent Mile Productions

Claim Number: FA1503001611873

 

PARTIES

Complainant is Navigant Consulting, Inc. (“Complainant”), represented by Maureen Beacom Gorman, of Marshall, Gerstein & Borun LLP, Illinois, USA.  Respondent is Anthony Tomaska / Magnificent Mile Productions (“Respondent”), represented by Steven L. Rinehart, Utah, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <navigantenergy.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Jeffrey M. Samuels as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the Forum electronically on March 27, 2015; the Forum received payment on March 27, 2015.

 

On March 30, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <navigantenergy.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 March 31, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 20, 2015 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@navigantenergy.com.  Also on March 31, 2015, 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 April 16, 2015.

 

Complainant submitted a timely Additional Submission, which was received on April 21, 2015.

 

Respondent submitted a timely Additional Submission, which was received on April 27, 2015.

 

On April 28, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey M. Samuels 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.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A. Complainant

 

Complainant Navigant Consulting, Inc. is a global expert services firm that offers in the U.S. and around the world business consulting and other related services in a number of industries, including technology, chemicals, construction, energy, and financial and health care.  It was incorporated in 1996. Complainant has received numerous awards and publicity over the years, including listing in Forbes in 2005 and 2009 as one of the 200 Best Run Small Companies and inclusion in Business Week’s 2006 listing of Hot Growth Companies.

 

Complainant owns several U.S. trademark registrations for the NAVIGANT or NAVIGANT CONSULTING mark, as used on or in connection with computer programs and business consulting and financial management services, as well as registrations in a number of other countries (e.g., Canada, Brazil and China) for its NAVIGANT marks. Complainant also owns the domain name navigantconsulting.com, which was first registered in May 1999, as well as 34 other domain names containing the NAVIGANT mark.

 

According to Complainant, the disputed domain name, navigantenergy.com, was first registered by Respondent on April 3, 2012.

 

Complainant asserts that the disputed domain name is identical or confusingly similar to its NAVIGANT marks.  It notes that the domain name wholly incorporates the NAVIGANT mark and that the inclusion in the domain name of the descriptive term “energy” and of the top-level domain “.com” is “without significance.”

 

Complainant urges that Respondent has no rights or legitimate interests in the disputed domain name and that its “longstanding use of the NAVIGANT Marks predates any rights Respondent may claim in the disputed domain name.”  Complainant contends that, prior to any notice of the dispute, Respondent did not use the disputed domain name in connection with a bona fide offering of goods or services.  In support of such contention, Complainant refers to correspondence between the parties in which Complainant noted that Respondent had indicated in a telephone conversation of December 19, 2014, that Respondent had no intent to use the registered domain name.  According to Complainant, the website at navigantenergy.com remained inactive from April 3, 2012 until March 22, 2015.  As of March 23, 2015, the disputed domain name resolves to an active website at which it is stated: “Introducing America’ Newest Energy Drink, Coming Soon, Navigant Energy, Keeps you sailing all day.”  Complainant asserts that this site was not uploaded until after Respondent breached a settlement agreement between the parties.

 

Complainant further maintains that Respondent failed to discharge its duty and contractual obligations under the Policy when it failed to register and use a domain name that did not infringe upon Complainant’s trademark rights.  Complainant points out that it registered its navigantconsulting.com domain name nearly 13 years before Respondent registered the disputed domain name and that had Respondent conducted a simple internet search, it would have unearthed the navigantconsulting.com site.

 

With respect to the issue of “bad faith” registration and use, Complainant asserts that the evidence establishes that Respondent registered the disputed domain name with the sole intent of selling the domain name in excess of out-of-pocket expenses.  Complainant indicates that, in exchange for transfer of the domain name, it made a good faith offer to cover Respondent’s registration fees and costs incurred to date, that Respondent demanded a larger amount, that Complainant then offered Respondent $1,750 to acquire the domain name, that Respondent accepted the offer on March 11, 2015, and that Respondent later reneged on the deal after it allegedly made a deal with another party.[1]

 

Complainant also alleges that Respondent’s non-use of the domain name for three years demonstrates bad faith and that “[b]ased on Navigant’s use of the NAVIGANT Marks for more than 18 years and the NAVIGANT mark’s strong, distinctive nature, it is highly improbable that Respondent registered a virtually identical domain name without knowledge of Navigant’s rights in the mark.”

 

B. Respondent

In its Response, Respondent asserts that it “is a good faith registrant of the Disputed Domain.”  Respondent contends that it has been making use of the generic expression “Navigant” in commerce since 2006, before Complainant accrued trademark rights. In support of such assertion, Respondent refers to a business entity detail report from the Illinois Secretary of State for Navigant Development, LLC, showing that Respondent originally organized Navigant Development, LLC, a  real estate development company, on April 21, 2006, the issuance to Navigant Development of a federal tax ID number on April 27, 2006, and its prior registration and use of the domain names navigantdevelopment.com, navigantfilms.com, and navigantproducts.com.

 

Respondent notes that Complainant had no registered trademark when Respondent began using the “Navigant” expression in commerce in 2006. It further contends that the term “navigant” is Latin and French for sailing and that Complainant’s NAVIGANT mark in generic.  “It is self-evident that the `navigant’ term relates to the guiding another party, as many companies do for their customers or clients.  The Respondent is using the term not because of its `value as a [confusingly similar] trademark’ but because of its attraction as a dictionary words or common terms.”  Respondent maintains that the use of a common word domain name related to the descriptive meaning of the domain name and its services constitutes use in connection with a bona fide offering of goods or services under the Policy.

 

Respondent argues that Complainant failed to meet the burden of establishing bad faith registration and use.  It contends that it never offered to sell the disputed domain name to Complainant until Complainant inquired about purchasing it and threatened legal action and that none of the other circumstances set forth in the Policy as supportive of the requisite bad faith exists.  Respondent reiterates its argument that the domain registration predates the accrual of trademark rights by Complainant and, thus, that bad faith cannot be found.

 

Respondent requests the Panel to enter a finding of reverse domain name hijacking, asserting that Complainant knew there is no plausible basis for its complaint.   

 

C. Additional Submissions

 

In its “Additional Submission,” Complainant notes that Respondent provides no argument as to how any purported rights that Navigant Development, LLC may have to the name “Navigant” inure to the benefit of Magnificent Mile Productions, the Respondent and registrant of the disputed domain name.  Moreover, Complainant asserts, there is no evidence that Navigant Development, LLC ever conducted business or that it ever owned the navigantdevelopment.com, navigantproductions.com, or navigantfilms.com domain names, none of which, according to Complainant, resolve to an active website.

 

Focusing on Respondent’s assertion that Complainant’s NAVIGANT mark is generic, Complainant simply notes that a UDRP proceeding is not the proper forum to attack the validity of a trademark registration.  Complainant further contends that prior to the time Respondent or Navigant Development, LLC adopted the name “Navigant Development,” Complainant was already a half-billion dollar global publicly-traded consulting.  Complainant also notes that it owns valid U.S. trademark registrations for the NAVIGANT marks for use in connection with consulting services with dates of first use of at least as early as June 14, 1999, which predates the registration of the disputed domain name and Navigant Development’s purported founding in 2006.

 

In its “Additional Submission,” Respondent indicates that Navigant Development was making use of the “Navigant” name before Complainant applied for any trademark registration and points to a lease dated April 28, 2006, to support such assertion. Respondent also challenges Complainant’s assertion that Respondent reneged on its sale of the disputed domain name to Complainant, contending that Complainant demanded during settlement that Respondent transfer additional domain names and agree to never register any domain name incorporating the word “navigant.”  

 

FINDINGS

The Panel finds that: (1) the disputed domain name in confusingly similar to a trademark or service mark in which Complainant has rights; (2) Respondent has no rights or legitimate interests in the disputed domain name; and (3) the disputed domain name was registered and is being used in bad faith.

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that the disputed domain name, navigantenergy.com, is confusingly similar to the NAVIGANT mark.  As noted by Complainant, the domain name incorporates in full the NAVIGANT mark, adding only the descriptive term “energy” and the generic top-level domain .com.

 

The Panel further finds that Complainant has rights in the NAVIGANT marks.  While Respondent contends that “navigant” is a generic term meaning “sailing” in Latin and French, such fact does not render NAVIGANT, as used by Complainant, generic.  The evidence establishes that Complainant uses NAVIGANT in connection with various business consulting services.  Even if one was to accept Respondent’s contention that “navigant” relates to the concept of guiding another party (the Panel assumes that the argument is that guiding and consulting are related concepts), such fact, in the Panel’s view, would not render NAVIGANT, as used by Complainant, generic.  Moreover, the Panel agrees with Complainant that a UDRP proceeding is not a proper forum to second guess the determination of the United States Patent and Trademark Office that the mark NAVIGANT is distinctive and otherwise registrable. The Panel notes that the issuance of a federal trademark registration creates a presumption that the registered mark is valid.  Generic terms are not subject to registration.

 

Rights or Legitimate Interests

 

The Panel concludes that Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name. In the view of the Panel, the evidence does not support Respondent’s assertion that, before any notice of the dispute, it was using or making demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services, within the meaning of paragraph 4(c)(i) of the Policy. 

 

To the extent Respondent relies on the current “use of the disputed domain name in connection with the advertising of “a coming soon” energy drink to be sold under the name “Navigant Energy”, which “use” commenced on March 23, 2015, the Panel finds that such “use” falls outside the Policy’s boundaries.  The declaration of Craig A. Becker, an attorney with Complainant’s counsel, indicates that the parties had reached an agreement for the transfer of the disputed domain name on March 11, 2015, and that, on March 22, Respondent informed Mr. Becker that it would be transferring the domain name to another party and that such other party intended to use the website in connection with an energy drink.  As noted above, such “use” commenced the following day, March 23. Such “use,” in the view of the Panel, may not be considered bona fide, especially in view of the fact that the evidence indicates that the disputed domain name remained dormant for the three years prior thereto. Moreover, advertising an energy drink as “coming soon” does not, in the Panel’s opinion, constitutes an “offering” of goods and there is no evidence of any demonstrable preparations to use the domain name in connection with a bona fide offering.  Indeed, as suggested below in the section dealing with “bad faith” registration and use, there is no evidence that Respondent has the ability to make and sell energy drinks.  

 

To the extent Respondent relies on any use of the term “Navigant” by Navigant Development, LLC in order to establish use of the disputed domain name in connection with a bona fide offering of goods or services, such effort is equally unavailing.  First, there is no evidence that Navigant Development uses the disputed domain name.  Second, the Policy clearly requires that, to fall within paragraph 4(c)(i) of the Policy, such use must be by the Respondent.  As noted by Complainant, the Respondent in this matter is not Navigant Development. [2]

 

Finally, to the extent Respondent contends that it has rights or legitimate interests in the disputed domain name based on the fact that Navigant Development entered into real estate leases in April 2006, which was prior to the filing of Complainant’s trademark applications, such argument must also be rejected. First, as noted above, Navigant Development and Respondent are not the same entity, so Respondent may not assert any priority claim based on the use, if any, by Navigant Development.  Second, even if it could, the evidence indicates that Complainant commenced use of its NAVIGANT mark as early as June 14, 1999, well prior to any use by Navigant Development.  The fact that Complainant did not apply to register its NAVIGANT mark with the United States Patent and Trademark Office until after the alleged use by Navigant Development does not change the fact that Complainant commenced use of, and thereby acquired trademark rights in, the NAVIGANT mark prior to any alleged use by Navigant Development. 

 

Registration and Use in Bad Faith

 

The Panel concludes that the disputed domain name was registered and is being used in bad faith. First, it appears undisputed that the domain name was not being used in connection with an active website for about three years and non-use has been found to support a finding of bad faith. See, e.g., Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).  Second, with respect to the current “use” of the disputed domain name, the evidence does not support Respondent’s assertion that it is not using the term “navigant” because of its value as a trademark but, rather, because of its attraction as a dictionary word or common term.   While the term “navigant” may mean “sailing” in French and Latin, the evidence indicates that Respondent intends to use the term in connection with an energy drink.  The use of the tag line “Keeps You Sailing All Day,” which appears on the picture of the can of NAVIGANT ENERGY depicted on the current navigantenergy.com website, does not support descriptive use of the term “navigant” by Respondent in connection with an energy drink.  The Panel further notes that Complainant uses the NAVIGANT mark in connection with consulting in the energy industry and that the current site became active only one day after the collapse of the parties’ settlement discussions.  Indeed, Respondent’s current use of the disputed domain name in connection with the advertising of a “coming soon” energy drink to be sold under the mark “Navigant Energy” strikes the Panel as a contrived, and untimately unsuccessful, attempt to establish rights or legitimate interests and supports a finding of “bad faith” use, especially when one notes that there is no evidence that Respondent has the ability to make and sell energy drinks.

 

This is not a case, as alleged by Respondent, where a respondent began use of a disputed domain name prior to any use of the mark in issue by the Complainant.  Rather, the evidence suggests that Respondent registered the disputed domain name with the knowledge of Complainant and its use of the NAVIGANT trademark, in connection with a wide variety of consulting services, including those involving the energy industry.  As noted above, the evidence indicates that Complainant began use of the NAVIGANT mark at least as early as June 1999, and that Complainant has been recognized as a successful company by widely read magazines.  Based on this evidence, as well as the apparent fact that both Complainant and Respondent are based in Chicago, the Panel may infer that Respondent was aware of Complainant and of its use of the NAVIGANT mark prior to the 2012 registration of the disputed domain name.[3]  

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.[4]

 

Accordingly, it is Ordered that the <navigantenergy.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Jeffrey M. Samuels, Panelist

Dated:  May 7, 2015