Bechtel Group, Inc. v. N Rahmany
Claim Number: FA1505001618844
Complainant is Bechtel Group, Inc. (“Complainant”), represented by Mark A. Steiner of Duane Morris, LLP, California, USA. Respondent is N Rahmany (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bechtel.services>, registered with GoDaddy.com, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically May 11, 2015; the Forum received payment May 11, 2015.
On May 13, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bechtel.services> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and 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 15, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 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@bechtel.services. Also on May 15, 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.
The Forum received a timely Response, determined to be complete May 20, 2015.
On June 1, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant’s Contentions in This Proceeding:
Complainant owns the BECHTEL mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,047,369, registered August 31, 1976). Complainant uses the BECHTEL mark in connection with its construction, repair, and modernization of installations for utility, commercial, and government industries. The <bechtel.services> domain name is identical to the BECHTEL mark, as Respondent merely adds the generic top-level domain (“gTLD”) “.services” to the mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as made evident by the WHOIS information for the disputed domain name. Respondent is not connected or affiliated with Complainant, and is not licensed to use the BECHTEL mark in any manner. Further, Respondent failed to establish a non-commercial or fair use of the disputed domain name and lacks a bona fide offering of goods or services. The disputed domain name resolves to an inactive webpage that states “website coming soon.” Compl., at Attached Ex. 12.
Respondent engaged in bad faith registration and use of the <bechtel.services> domain name. Additionally, Respondent registered the disputed domain with actual or constructive knowledge of Complainant’s mark. Finally, Respondent has not made an active use of the disputed domain name, which is further evidence of bad faith registration.
Respondent’s Contentions in this Proceeding:
Respondent makes no contentions relative to Policy ¶ 4(a)(i), Policy ¶ 4(a)(ii), and Policy ¶ 4(a)(iii). However, Respondent communicated by providing a screen grab of the USPTO website, which shows, according to Respondent, that “many different registrant[s]” may claim ownership of the BECHTEL mark. The Panel notes that the WHOIS information shows a date of creation of the Respondent’s domain of March 10, 2015; some 40 years after Complainant’s registration of its mark with appropriate authorities.
Complainant established legal rights and legitimate interests in the mark contained in its entirety within the disputed domain name, dating back some 40 years.
The disputed domain name is identical to Complainant’s mark.
Respondent did not show and the evidence supports findings that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and passively held 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 Complainant to 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 to or Confusingly Similar:
Complainant contends that it owns the BECHTEL mark through its registration with the USPTO (e.g., Reg. No. 1,047,369 registered Aug. 31, 1976). Complainant states that it uses the BECHTEL mark in connection with its construction, repair, and modernization of installations for utility, commercial, and government industries. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the <bechtel.services> domain name is identical to the BECHTEL mark, as Respondent merely adds the gTLD “.services” to the mark. As a general rule, the addition of a gTLD does not adequately distinguish a disputed domain name from the mark at issue. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Respondent makes no contentions relative to Policy ¶ 4(a)(i). However, in its Response, Respondent included a screen grab of the USPTO website, which Respondent asserts shows that “many different registrant[s]” may claim ownership of the BETCHEL mark. The Panel notes that Respondent registered the <bechtel.services> domain name March 10, 2015.
Therefore, the Panel finds that the disputed domain name is identical to the BECHTEL mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 asserts that Respondent has no rights or legitimate interests in the disputed domain name, claiming that Respondent is not commonly known by the disputed domain name, as is evident in the WHOIS information for the disputed domain name. The Panel notes that the WHOIS information for the <bechtel.services> domain name lists “N Rahmany” as the registrant of record. Compl., at Attached Ex. 1. Further, Complainant contends that Respondent is not connected or affiliated with Complainant, and is not licensed to use the BECHTEL mark in any manner. Previous panels have often found that such contentions, lacking any evidence from the respondent to the contrary, are sufficient to demonstrate that the respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question). Accordingly, the Panel finds that Respondent is not commonly known by the <bechtel.services> domain name.
Further, Complainant asserts that Respondent failed to establish a non-commercial or fair use of the disputed domain name and lacks a bona fide offering of goods or services. Complainant states that the disputed domain name resolves to an inactive webpage that states: “website coming soon.” Compl., at Attached Ex. 12. A respondent’s inactive holding of a disputed domain name is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
Thus, the Panel finds that Respondent lacks rights or legitimate interests under ¶¶ 4(c)(i) and 4(c)(iii) in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Although Complainant did not reference specific bad faith under the illustrative examples provided by ICANN in Policy ¶ 4(b), it is possible for Complainant to prevail if it shows bad faith through use and at registration of the domain name in some manner. See, e.g., Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Complainant argues that Respondent registered the disputed domain with actual or constructive knowledge of Complainant’s mark. Complainant contends that since it owns a USPTO registration for the BECHTEL mark, it is entitled to a presumption of exclusive rights to the mark. As such, Complainant states that Respondent has constructive knowledge of Complainant’s right to the mark. Further, Complainant argues that Respondent had actual knowledge of the BECHTEL mark, because Respondent sent a letter to Complainant stating that it had purchased a domain name similar to its BECHTEL mark. Compl., at Attached Ex. 13. Complainant deduced from that letter that Respondent was making a thinly veiled attempt to extort payment from Complainant, and that therefore, such attempt shows that Respondent had actual knowledge of Complainant’s rights in the mark contained in its entirety within the disputed domain name. The Panel here finds that any argument of bad faith based on constructive notice is irrelevant, because UDRP case precedent declines to find bad faith flowing from constructive knowledge. 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."). The Panel agrees, however, with Complainant’s contention that Respondent showed actual knowledge of Complainant's rights in the mark, prior to registering the disputed domain name and finds that actual knowledge is adequate evidence to support findings of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Finally, Complainant argues that Respondent has not made an active use of the disputed domain name, which is further evidence of bad faith registration. Complainant contends that Respondent’s disputed domain resolves to an inactive page featuring no content, merely a statement noting: “website coming soon.” Compl., at Attached Ex. 12. Complainant asserts that failure to actively use a domain name support findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). As Respondent failed to make an active use of the disputed domain name, this Panel finds bad faith registration under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered, suggested an attempt to sell, and passively held the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bechtel.services> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 10, 2015
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