Bechtel Group, Inc. v. Domain Admin / PrivacyProtection1.com
Claim Number: FA1509001639108
Complainant is Bechtel Group, Inc. (“Complainant”), represented by Mark A. Steiner of Duane Morris, LLP, California, USA. Respondent is Domain Admin / PrivacyProtection1.com (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <becthel.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 23, 2015; the Forum received payment on September 23, 2015.
On September 24, 2015, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <becthel.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 September 28, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 19, 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@becthel.com. Also on September 28, 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 October 26, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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.
A. Complainant
Complainant is the owner of the BECHTEL mark for construction, repair and modernization of installations and apparatus for utility, industrial and commercial companies, governments, and others; and supervisory services in connection with the foregoing; and management counseling, engineering and design services to utility, industrial and commercial companies, governments, and others. Complainant has registered the BECHTEL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,047,369, registered August 31, 1976), which demonstrates its rights in its mark.
The <becthel.com> domain name is confusingly similar to Complainant’s mark as it merely transposes the “h” and the “t” in “Bechtel” and adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of the BECHTEL mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent’s disputed domain name previously resolved to a parked page at <sedo.com>. As of September 24, 2015, Respondent’s disputed domain name redirects the user to <villanovau.com> purporting to provide online certificate programs for project management through Villanova’s partnership with Bisk online education. Additionally, Respondent offered to sell the disputed domain name for an amount in excess of its out-of-pocket costs.
Respondent has registered and is using the disputed domain name in bad faith. First, Respondent has registered the disputed domain name to disrupt Complainant’s business. Second, Respondent uses the likelihood of confusion between the disputed domain name and Complainant’s mark to attract Internet users for commercial gain. Third, Respondent has not made an active use of the disputed domain name. Fourth, Respondent registered the disputed domain name with constructive and/or actual knowledge of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was registered on November 23, 2002.
As the Respondent has failed to file a Response in this matter, the Panel shall make its determination based on the reasonable and undisputed assertions of the Complainant. As such, the Panel finds that the disputed domain name is confusingly similar to the complainant’s trademark, that the Respondent lacks any rights or legitimate interests in or to the disputed domain name, and that the Respondent engaged in bad faith use and registration of 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 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.”).
The Panel accepts Complainant’s contention that it is the owner of the BECHTEL mark and that this registration provides Complainant with rights in and to that mark. Complainant has registered the BECHTEL mark with the USPTO (e.g., Reg. No. 1,047,369, registered August 31, 1976); and Attached Annex 5.
Complainant argues that the <becthel.com> domain name is confusingly similar to Complainant’s mark as it merely transposes the “h” and the “t” in “Bechtel” and adds the gTLD “.com.” Respondent’s apparent attempt to distinguish its disputed domain name from the Complainant’s trademark is clearly insufficient. As such, the Panel finds the disputed confusingly similar to the Complainant’s trademark pursuant to Policy ¶ 4(a)(i).
The Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Further, Complainant argues that Respondent has no license or authorization to use Complainant’s mark. The WHOIS information merely lists “Domain Admin / PrivacyProtection1.com” as registrant and that Respondent has failed to submit any evidence for the Panel’s consideration. As such, the there is no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Rather, Complainant argues that Respondent’s disputed domain name previously resolved to a parked page at <sedo.com>. As of September 24, 2015, Complainant asserts that Respondent’s disputed domain name redirects the user to <villanovau.com> purporting to provide online certificate programs for project management through Villanova’s partnership with Bisk online education. Annexes 14-17 show examples of Respondent’s purported infringing use. There is not a bona fide offering of goods or services or a legitimate noncommercial or fair use where a respondent parks a domain name containing a complainant’s mark. See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)). There is no bona fide offering of goods or services or a legitimate noncommercial or fair use where a respondent uses a disputed domain name to intentionally divert Internet users seeking the complainant’s legitimate website to the website of the respondent.
Additionally, Complainant also alleges that Respondent has listed the disputed domain for sale for $3,749.00. See Compl., at Attached Annex 14. A respondent lacks legitimate rights or interests when it offers to sell a disputed domain name for an amount in excess of its out-of-pocket expenses.
Accordingly, the Panel finds that Respondent is not using the disputed domain name in connection with 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) and, therefore, lacks any rights or legitimate interests in or to the disputed domain name.
Apparently for 13 years, Respondent has engaged in bad faith use and registration of the disputed domain name. Although it is beyond the jurisdiction of this Panel to give equitable relief such as laches, a 13 year delay may be reason to suspect reliance by the Respondent. However, as it chose not to respond to this matter, the Panel is limited to the allegations made by the Complainant with no clear explanation for the delay. As such, the Panel finds that the Respondent engaged in bad faith use and registration of the disputed domain name for 13 years.
Complainant argues that Respondent’s disputed domain name unfairly disrupts Complainant’s business by using the disputed domain name for a website featuring sponsored-link advertisements for websites advertising and promoting directly competing products and services. In so arguing, Complainant references the “Related Links” section of Respondent’s resolving webpage that advertises “Bechtel Careers,” “Bechtel,” and sometimes “Bechtel Construction,” or “Oil and Gas Drilling Jobs.” See Compl., at Attached Annex 14. Past panels have found bad faith registration and use where a respondent’s disputed domain name provided links to a complainant’s competitors. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
Complainant contends that Respondent uses the likelihood of confusion between the disputed domain name and Complainant’s mark to attract Internet users for commercial gain. Specifically, Complainant alleges that Respondent’s resolving webpage had a “Related Links” section advertising “Bechtel Careers,” “Bechtel,” and sometimes “Bechtel Construction,” or “Oil and Gas Drilling Jobs.” See Attached Annex 14 for screenshots of Respondent’s resolving webpage. Complainant asserts that the most concerning link was for the “Professional Diversity Network,” which used Complainant’s federally registered design mark and requested Internet users’ information to begin a Bechtel job application. Such conduct clearly manifests Respondent’s bad faith use and registration of the disputed domain name pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent must have had actual notice of the Complainant’s rights in and to the trademark. Given the totality of the circumstances, the Panel agrees with Complainant regarding Respondent’s actual knowledge.
As such, even though the Panel is uncomfortable with the apparent 13 year delay between when the Respondent registered the disputed domain name and this action was brought, given the totality of the circumstances, the Panel finds that the Respondent has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <becthel.com> domain name be transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: October 28, 2015
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