Navistar International Corporation v. Kevin Sable / GD
Claim Number: FA1506001622205
Complainant is Navistar International Corporation (“Complainant”), represented by Brett A. August of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is Kevin Sable / GD (“Respondent”), Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <navisterdefense.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 Forum electronically on June 2, 2015; the Forum received payment on June 2, 2015.
On June 4, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <navisterdefense.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 June 5, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 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@navisterdefense.com. Also on June 5, 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 Hon. Karl V. Fink (Ret.) 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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant
Complainant uses the NAVISTAR mark to distinguish itself as a company whose subsidiaries and affiliates work together as one of the world’s leading companies in truck development. Complainant has registered the NAVISTAR mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,498,530, registered August 2, 1988), which demonstrates its rights in the mark. The <navisterdefense.com> domain name is confusingly similar to the NAVISTAR mark as the domain name simply replaces the letter “a” in the NAVISTAR mark with the letter “e”, and adds the descriptive term “defense.”
Respondent has no rights or legitimate interests in the <navisterdefense.com> domain name. Respondent is not commonly known by the disputed name or any variant of NAVISTAR and has not acquired any trademark or service mark rights in that name or mark. Additionally, Complainant has not licensed or permitted Respondent to use the NAVISTAR mark in connection with the <navisterdefense.com> domain name. Finally, Respondent’s inactive use of the <navisterdefense.com> domain name is evidence of a lack of rights or legitimate interests in the disputed domain name.
Respondent registered and is using the infringing domain name in bad faith. Respondent is engaging in typosquatting through the intentional misspelling of words. The Respondent used the infringing domain name to create an email address that fraudulently appeared to come from an individual who works for Complainant. Respondent’s fraudulent email scheme indicates that Respondent must have had actual and/or constructive knowledge of Complainant’s rights in the mark. Respondent’s inactive use of the disputed domain name constitutes bad faith.
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <navisterdefense.com> domain name to Complainant.
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 uses the NAVISTAR mark to distinguish itself as a company whose subsidiaries and affiliates work together as one of the world’s leading companies in truck development. Complainant registered the NAVISTAR mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,498,530, registered August 2, 1988), and claims that such trademark registrations demonstrate its rights in the mark. Panels generally have found that a complainant’s registration of a mark with the USPTO is sufficient to establish rights in a mark for purposes of Policy ¶ 4(a)(i). 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.”). Accordingly, the Panel finds that Complainant has rights in the NAVISTAR mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <navisterdefense.com> domain name is confusingly similar to the NAVISTAR mark as the domain name merely replaces the letter “a” in the NAVISTAR mark with the letter “e”, and adds the descriptive term “defense.” The disputed domain name also differs from Complainant’s mark by the addition of the generic top-level domain (“gTLD”) “.com.” Panels have held that the addition of a gTLD is irrelevant to Policy ¶ 4(a)(i) analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Additionally, past panels have determined that simply substituting one letter of a complainant’s mark for another letter does not distinguish a disputed domain name from a registered mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Panels have found that the addition of a descriptive term, such as the term “defense,” fails to distinguish a disputed domain name from a mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). As such, the Panel finds the <navisterdefense.com> domain name is confusingly similar to Complainant’s NAVISTAR mark pursuant to Policy ¶ 4(a)(i).
Complainant has proved 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 no rights or legitimate interests in the <navisterdefense.com> domain name because Respondent is not commonly known by the disputed domain name and has not acquired any trademark or service mark rights in that name or mark. Complainant states that Respondent has been neither licensed nor authorized to use Complainant’s NAVISTAR mark. The WHOIS information lists “KEVIN Sable” as registrant of record. Past panels have concluded that a respondent has no rights or legitimate interests in a disputed domain name where the respondent is not commonly known by the disputed domain name based on the WHOIS information and other evidence available in the record. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). In light of the available information, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not using the domain name for a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Complainant states that Respondent has failed to make an active use of the disputed domain name. Complainant has provided evidence of such inactive use in the form of a screen shot of Respondent’s resolving website. The Panel finds that Respondent’s failure to make an active use of the disputed domain name is evidence of a lack of rights and legitimate interests under Policy ¶ 4(c)(i) and 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant has proved this element.
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), these provisions are meant to be merely illustrative of bad faith, and Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant argues that Respondent has registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). Complainant alleges that Respondent is engaging in typosquatting through the intentional misspelling of Complainant’s mark, thereby using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). Respondent’s disputed domain name simply switches the letter “a” for “e” and adds a term descriptive of Complainant’s services and commonly associated with Complainant. Past panels have concluded that by engaging in typosquatting, a respondent has registered and used the disputed domain name in bad faith according to Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). The Panel finds that Respondent has engaged in typosquatting, and finds that Respondent has acted in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered the disputed domain name in bad faith by using the infringing domain name to create an email address that fraudulently appeared to come from an individual who works for Complainant. Complainant states that it was notified of this fraudulent use by the Defense Security Service of the United States government. Since Respondent has failed to deny this allegation, the Panel finds Respondent has acted in bad faith under Policy ¶ 4(a)(iii). See PineBridge Investments IP Holdings Limited v. uche victor, FA 1551301 (Nat. Arb. Forum May 6, 2014) (“[r]espondent is trying to confuse Internet users into believing that Respondent is in fact the CEO of [c]omplainant’s business, when it is not. The [p]anel finds that using a disputed domain name to attract Internet users to a website by confusing them as to the [c]omplainant’s affiliation with [r]espondent’s disputed domain name indicates bad faith use and registration under Policy ¶ 4(b)(iv)”).
Complainant argues that the fraudulent email scheme indicates that Respondent must have had actual and/or constructive knowledge of Complainant and its rights in the NAVISTAR mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that Respondent had actual knowledge of the mark and Complainant's rights. The Panel therefore 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 alleges that the Respondent’s registration and subsequent non-use of the disputed domain name is evidence of bad faith. Past panels have found that such inactive use indicates bad faith under Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”). Consequently, the Panel finds that Respondent’s failure to make an active use of the disputed domain name constitutes bad faith under Policy ¶ 4(a)(iii).
Complainant has proved 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 <navisterdefense.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: July 13, 2015
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