Navistar International Corporation v. Sarah Bagby
Claim Number: FA1511001645516
Complainant is Navistar International Corporation (“Complainant”), represented by Jeffrey P. Calfa of Navistar International Corporation, Illinois, United States. Respondent is Sarah Bagby (“Respondent”), Iowa, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rnavistar.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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 5, 2015; the Forum received payment on November 5, 2015.
On November 5, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <rnavistar.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 November 6, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 27, 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@rnavistar.com. Also on November 6, 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 December 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 is a holding 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. 1,472,594, registered January 12, 1988), which demonstrates Complainant’s rights in its mark. The <rnavistar.com> domain name is confusingly similar to Complainant’s mark as it merely adds the letter “r” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Respondent is not licensed or authorized to use Complainant’s mark. Respondent is not using the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses its disputed domain name to make false claims for payment by Complainant to a specified bank account by wire transfer, thereby diverting and siphoning off Internet users seeking Complainant’s website.
Respondent registered and is using the disputed domain name in bad faith. Respondent uses the disputed domain name to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent is engaged in the tactic of typosquatting. Respondent engaged in a phishing scheme by sending an e-mail to Complainant’s Senior Vice President and Corporate Controller, Ms. Strycker, instructing her to wire a substantial amount of money to Respondent. Respondent registered the disputed domain name with actual knowledge of Complainant’s mark.
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 <rnavistar.com> 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.”).
Complainant is a holding 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 USPTO (e.g., Reg. No. 1,472,594, registered January 12, 1988). Complainant contends that its USPTO registration demonstrates its rights in its mark. The Panel agrees that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the NAVISTAR mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <rnavistar.com> domain name is confusingly similar to Complainant’s mark as it merely adds the letter “r” and the gTLD “.com” to Complainant’s mark. Panels have held that the addition of a letter to a complainant’s mark does not serve to adequately distinguish a complainant’s mark from a respondent’s disputed domain name under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to the complainant’s mark, ICQ). Panels have also held that the affixation of the gTLD “.com” to a complainant’s mark is irrelevant to a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Accordingly, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under 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 disputed domain name. Complainant contends that Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Complainant argues that Respondent has no license or authorization to use Complainant’s mark. The WHOIS information merely lists “Sarah Bagby” as registrant and Respondent has failed to provide any evidence for the Panel’s consideration. The Panel therefore finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
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. Complainant claims that Respondent uses its disputed domain name to make false claims for payment by Complainant to a specified bank account by wire transfer. Complainant has provided a copy of an E-mail sent to Complainant by Respondent requesting a money transfer. The Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of good or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant has proved this element.
Complainant contends that Respondent uses the disputed domain name to attract Internet users to Respondent’s website, for commercial gain, by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Complainant asserts that Respondent uses the disputed domain name to send E-mails to Complainant asking for money transfers. While Complainant’s argument is not recognized under Policy ¶ 4(b)(iv), the Panel finds that Complainant’s assertion constitutes general bad faith pursuant to Policy ¶ 4(a)(iii). See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”). Additionally, the Panel notes that the examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. BillZag and NWLAWS.ORG, WIPO Case No. D2004-0230. Accordingly, as Complainant’s arguments here all fall generally under Policy ¶ 4(a)(iii), the Panel finds that Respondent has acted in bad faith.
Complainant alleges that Respondent is engaged in the tactic of typosquatting. Past panels have found that a respondent’s intentional misspelling of a complainant’s mark in an attempt to divert Internet users from the complainant to the respondent constitutes bad faith under 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)). Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant asserts that Respondent engaged in a phishing scheme by sending an E-mail to Complainant’s Senior Vice President and Corporate Controller, Ms. Strycker, instructing her to wire a substantial amount of money to Respondent. Past panels have held that the use of a disputed domain name for fraudulent purposes violates Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”). Accordingly, the Panel finds that Respondent has engaged in bad faith registration and use per Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. Complainant argues Respondent uses the disputed domain name to create an E-mail address that fraudulently appeared to come from Complainant. Past panels have found evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii) where it is clear that a respondent was well-aware of a complainant’s rights in its mark. See 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). Therefore, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark, which is evidence of 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 <rnavistar.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: December 7, 2015
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