Bechtel Group, Inc. v. Domain Brand Protection / Domain Brand Protection Group LLC
Claim Number: FA1505001618843
Complainant is Bechtel Group, Inc. (“Complainant”), represented by Mark A. Steiner of Duane Morris, LLP, California, USA. Respondent is Domain Brand Protection / Domain Brand Protection Group LLC (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <riley-bechtel.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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 11, 2015; the Forum received payment on May 11, 2015.
On May 12, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <riley-bechtel.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 May 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 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@riley-bechtel.com. Also on May 20, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 a formal response from Respondent.
The Panel notes that on July 2, 2015, the Forum received an email which stated: “I Kelsey Goldman hereby allow the transfer of www.Riley-Bechtel.com to Bechtel Group.” That was communicated to Complainant who advised the Forum that: “Complainant appreciates the cooperation of Respondent. However, Complainant does not wish a Stay of the matter.” Accordingly, the Panel does not treat this as a “consent-to-transfer” case and will proceed to apply the Policy.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in BECHTEL and RILEY BECHTEL and alleges that the disputed domain name is confusingly similar to its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and holds the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a formal Response.
The factual findings pertinent to the decision in this case are that:
1. Complainant’s group of subsidiary companies provide construction, procurement, and engineering services by reference to the trademark BECHTEL;
2. the trademark is registered with the United States Patent and Trademark Office ("USPTO") under Reg. No. 1,047,369 from December 23, 1974;
3. the disputed domain name was registered on March 2, 2015;
4. Riley Bechtel is the former CEO of Complainant and is currently its chairman;
5. the website resolving from the domain name carries the message, “Website Coming Soon”, as its only content; and
6. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use the trademark or to register any domain name incorporating the trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – an investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Complainant provides evidence of its USPTO registration for the trademark BECHTEL and so Panel is satisfied that Complainant has trademark rights in that name (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
Complainant also asserts common law trademark rights in the name RILEY BECHTEL. That claim to common law rights is examined later since Panel is first concerned to unravel Complainant’s submissions regarding the identity or confusing similarity of the disputed domain name to the trademarks.
There seem to be several, alternative, submissions. First, it is alleged that the domain name is confusingly similar to the trademark because it wholly incorporates the trademark. Secondly, it is alleged that the domain name “is virtually identical, and thus confusingly similar to the BECHTEL mark, and the various domain names owned by Complainant…” Thirdly, Complainant alleges that the disputed domain name “is confusingly similar to …Complainant’s common law RILEY BECHTEL mark, which has acquired the distinctiveness necessary for common law protection.”
Subject to what is said below, Panel accepts that for the purposes of comparison the generic top-level domain gTLD, “.com”, can be disregarded (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)). Panel also accepts that punctuation and hyphenation are usually inconsequential in that comparison (see Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003)).
Contrary to Complainant’s submissions, there is no hard and fast rule that a domain name is identical or confusingly similar to a trademark only because the domain name wholly incorporates that trademark. In all cases it will depend on the character of the compared terms and the added matter. In other words, generalizations of this kind are limited to the situation where the disputed domain name takes the whole of the trademark and adds any matter of a non-distinctive nature, leaving the trademark essentially recognizable. The statements made in the preceding paragraph regarding gTLDs and punctuation are examples. They are accurate to the extent, more often than not, that the added matter has no impact on the global assessment of the compared terms.
It follows that Panel does not accept the claim that the domain name is “virtually identical” to the trademark, BECHTEL. That submission ignores completely the impact of the additional (family and first) name, “Riley”, in the domain name.
On the other hand, if the submission is that the domain name is confusingly similar to the trademark, BECHTEL, then different considerations arise. The combination of the names “Riley” and “Bechtel” may, because of other influencing factors such as reputation, connote the businessman and former CEO of Complainant, but paragraph 4(a)(i) of the Policy requires that the domain name and trademark be, of themselves, confusingly similar.[1]
The Complaint frames the paragraph 4(a)(i) “test” incorrectly. It assumes that the issue is whether or not the domain name is likely to cause confusion (in the sense that Internet users might be caused to wonder whether the domain name is somehow associated with Complainant’s business).
Assessed in accordance with the language of the Policy, there is no basis for reading the domain name as uniquely indicating the former CEO of Complainant and, given both the commonality of “Riley” as a family name together with the convention of hyphenating compound family names, there is a respectable basis for reading the domain name as a hyphenated surname unconnected with Complainant. In short, there is no compelling argument that the disputed domain name is confusingly similar to the trademark, BECHTEL.
Further, Panel reminds Complainant that the comparison is between the disputed domain name and the trademark(s), not between the disputed domain name and domain names owned by Complainant. The submission regarding confusing similarity of domain names is irrelevant and has been given no weight.
There then follows Complainant’s assertion that the name RILEY BECHTEL functions as a common law trademark. That claim requires scrutiny since Panel finds that it is the only potential basis for establishment of the first element of the Policy. If common law rights are shown to exist then Panel would find that the disputed domain name is legally identical to RILEY BECHTEL. Panel is obliged to also assess whether those common law rights, if shown, are rights exercisable by Complainant rather than by Mr Riley Bechtel as an individual.
The Complaint states that “Complainant is …the owner of the common law trademark RILEY BECHTEL, the personal name of its prominent and well-known, if not famous, former CEO and current chairperson …”. Further, it is said that “Riley Bechtel, heir and great-grandson of Warren A. Bechtel, the founder of the Bechtel group of companies, joined the company in 1981 and has since used his name for commercial purposes.”
The Complaint further states that “[T]he prominence of the RILEY BECHTEL name in connection with Complainant’s business in providing services associated with that name and mark has been recognized by news and media around the globe, and is promoted by the Bechtel group of companies itself.”
This last statement is said to be supported by exhibit 13 to the Complaint. Exhibit 13 is not concerned with news and media recognition. It is a page from Complainant’s official website entitled “Ethics and Compliance”. It is devoted essentially to Complainant’s corporate compliance philosophy and makes incidental reference to Riley Bechtel.
Exhibit 12 to the Complaint, also cited in support of alleged common law rights in RILEY BECHTEL, is from the “About Us” section of Complainant’s website and features Riley Bechtel. It tells of his education and rise through the ranks of the Complainant group of companies to his present position as chairman of the board.
There is very little else of relevance. Annexure 14 lists Complainant’s stock of domain names. It includes <rileybechtel.com> and <rileypbechtel.com>. Panel has already noted that those domain names are not the proper basis for comparison with the disputed domain name for the purposes of the first element for the Policy.
Although there is no submission on the point, Panel nevertheless recognizes that those domains may resolve to websites which give information relevant to use of the name “Riley Bechtel” and so to possible common law trademark rights. However, Panel has made its own searches which would indicate that neither domain name resolves to an active website, nor has it done so in the past.
The claim to common law rights is therefore limited to unsupported assertion. This is no evidence before the Panel that the name RILEY BECHTEL has acquired trademark status. There is no evidence that the name, RILEY BECHTEL, has been used for commercial purposes. Panel finds that all trademark use has been use of BECHTEL, a finding which accords with the fact that BECHTEL has been the trademark chosen for registration. References to Riley Bechtel are references to that person in his professional capacity as chairman or an executive officer of Complainant; they are not examples of trademark use.
The Complaint therefore provides a threadbare basis for the claim to common law trademark rights and Panel finds that none has been established for the purposes of satisfying paragraph 4(a)(i) of the Policy. It follows that Complainant has failed to establish the first limb of the Policy.
No findings are required.
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that the <riley-bechtel.com> domain name remain with Respondent.
Debrett G. Lyons, Panelist
Dated: July 15, 2015
[1] The position taken by many UDRP panelists and shared by this Panel is that the repute of a complainant is to be disregarded when considering confusing similarity under paragraph 4(a)(i).
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