Navigant Consulting, Inc. v. Daison Arikkat / NAVIGANT ENGINEERING CONSULTANTS
Claim Number: FA1602001660462
Complainant is Navigant Consulting, Inc. (“Complainant”), represented by Maureen Beacom Gorman of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is Daison Arikkat / NAVIGANT ENGINEERING CONSULTANTS (“Respondent”), United Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <navigantdxb.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 10, 2016; the Forum received payment on February 10, 2016.
On February 11, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <navigantdxb.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 February 16, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 7, 2016 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@navigantdxb.com. Also on February 16, 2016, 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 March 10, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
The mark at issue is NAVIGANT, Complainant’s federally registered trademark for goods and services in International Classes 9, 35, 36, 42 and 45, including, among others, computer programs and business consulting services.
ICANN R. 3(b)(viii).
FACTUAL AND LEGAL GROUNDS
Complainant’s Business and Website
Navigant Consulting, Inc. (“Navigant”) is a global expert services firm that offers business consulting and other related goods and services in a number of industries, including technology, chemicals, construction, energy, financial services, government, healthcare, legal, life sciences, manufacturing, media and entertainment, real estate, telecommunications, and transportation, to name a few. Today, Navigant has offices throughout the United States, as well as in Europe, Qatar, the United Arab Emirates, China, and Singapore.[1]
Navigant incorporated in the State of Delaware in 1996 under the trade name “Navigant Consulting, Inc.” Navigant has been a publicly traded company on the New York Stock Exchange (NYSE) since July 1999. On May 19, 1999, Navigant registered the domain name <navigantconsulting.com> to be used in connection with promoting its consulting services under the NAVIGANT mark (hereinafter referred to as the “Navigant Website”). The domain name <navigantconsulting.com> currently redirects to <navigant.com>. Navigant has operated the Navigant Website continuously since May 19, 1999, prominently displaying the NAVIGANT mark. The Navigant website lists various services offered by Navigant under the NAVIGANT mark, including consulting services in the energy industry. In addition to the <navigantconsulting.com> domain name, Navigant has owned <navigant.com> since 2011.
Due to its exceptional services, Navigant has received numerous accolades and publicity, including but not limited to: 200 Best Run Small Companies (Forbes – 2005; 2009); 100 Fastest Growing Companies (Fortune Magazine – 2005); Hot Growth Companies (Business Week – 2006); Fortune 40: Stocks to Retire On (Fortune Magazine – 2007), and Best Places to Launch a Career (Business Week – 2007).
Navigant owns numerous trademark registrations for marks consisting of or incorporating NAVIGANT, including but not limited to United States registrations for NAVIGANT (U.S. Registration No. 3,452,419), NAVIGANT & Design (U.S. Registration No. 3,456,793), and NAVIGANT CONSULTING (U.S. Registration No. 3,456,794) and United Arab Emirates registrations for NAVIGANT (Registration No. 103133 and 103154) and NAVIGANT & Design (Registration No. 103131 and 103132) (collectively, the “NAVIGANT Marks”). Navigant also owns registrations for the NAVIGANT Marks in numerous other countries, including Bermuda, Brazil, Canada, China, the European Community, Hong Kong, Mexico, Republic of Singapore, and Saudi Arabia. Details regarding the NAVIGANT Marks in the United States and the United Arab Emirates are included in the chart below.
Mark Country Goods/Servs. Filed Reg. Reg. No. Status
NAVIGANT U.S.A 9, 35, 36, 45 6/15/2007 6/24/2008 3,452,419 Incontestable
NAVIGANT U.S.A 9, 35, 36, 45 6/15/2007 7/1/2008 3,456,793 Incontestable
NAVIGANT U.S.A 9, 35, 36, 45 6/15/2007 7/1/2008 3,456,794 Incontestable
CONSULTING
NAVIGANT U.A.E 9 12/16/2007 5/10/2010 103154 Registered
NAVIGANT U.A.E 35 12/16/2007 5/10/2010 103133 Registered
NAVIGANT U.A.E 9 12/16/2007 5/10/2010 103132 Registered
NAVIGANT U.A.E 35 12/16/2007 5/10/2010 103131 Registered
Navigant has expended enormous financial resources marketing the NAVIGANT Marks throughout the United States and the world. These marketing efforts include internet advertisements and media and print advertisements, such as weekly ads in the Wall Street Journal since 2006 and ads in the Chicago O’Hare International Airport as well as other international airports prominently displaying the NAVIGANT Marks since 2005 (collectively referred to as “Navigant’s Advertisements”). Through Navigant’s Advertisements, promotional efforts, and dedication to providing high-quality services, the NAVIGANT Marks have become famous and have earned extensive goodwill worldwide for consulting services.
Relationship Between the Parties
No business relationship exists or has ever existed between Navigant and Respondent.
Respondent does not have, and never has had, permission to use the NAVIGANT Marks.
Respondent’s Business and Website
The disputed <navigantdxb.com> domain name is registered to Daison Arikkat / Navigant Engineering Consultants through the privacy service, Domains By Proxy. The domain <navigantdxb.com> has been registered since March 12, 2008, by Domans By Proxy.
Through the disputed domain name, Respondent, without authorization, uses the NAVIGANT Marks. Specifically, the disputed domain name presents itself as the website for “Navigant Engineering Consultants,” providing construction and engineering consulting in the United Arab Emirates. These construction and engineering services are related to and may be directly competitive with Navigant’s Global Construction Practice providing consulting, dispute resolution, and advisory services in North America, South America, Europe, the Middle East, and Asia, including in the fields of construction and real estate development.
LEGAL ARGUMENT
FIRST ELEMENT: The disputed domain name is identical or confusingly similar to the NAVIGANT Marks.
Navigant’s numerous United States and foreign trademark registrations for the NAVIGANT Marks establish Navigant’s prior rights pursuant to ICANN Policy ¶4(a)(i). Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat’l Arb. Forum Nov. 11, 2003) (stating that “[c]omplainant’s federal trademark registrations establish Complainant’s rights in the BLIZZARD mark”). Moreover, Navigant first adopted the NAVIGANT mark in the United States in 1996, and it has established strong trademark rights in the NAVIGANT Marks through its extensive advertising and use in the United States and throughout the world. see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat’l Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶4(a)(i)); SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that complainant's trademark or service mark does not need to be registered by a government authority or agency for rights to exist).
Under U.S. trademark law, registered marks are presumed to be inherently distinctive. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (stating that “[p]anel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”). Consequently, Respondent bears the burden of refuting the presumption of validity. Id.
Here, the disputed domain name wholly incorporates the NAVIGANT mark.
Respondent’s inclusion of the descriptive word or acronym “dxb” in the disputed domain name is a minor alteration to Navigant’s registered marks and is without significance. Specifically, “dxb” is the International Air Transport Association (IATA) airport code for Dubai International Airport, is used by the United Nations as a location code for Trade and Transport Locations (UN/LOCODE), and serves as a geographic descriptor for Dubai. A simple Google search for “Navigant DXB” shows that DXB is interpreted as an acronym for Dubai. Complainant offers its consulting and other services to clients in the construction, real estate development, and financial services industries. Further, Navigant maintains an office location in Dubai, United Arab Emirates. Accordingly, Respondent’s mere inclusion of the descriptive term, “dxb,” a geographic indicator which is descriptive of Navigant’s services and a geographic area within which Navigant serves clients, does not distinguish the disputed domain name from the NAVIGANT Marks. The addition of a geographic descriptor, such as “dxb,” does not differentiate the domain but, in fact, “creates a confusing similarity.” See Mitsubishi Shoji Kabushiki Kaisha v. Carless, FA 1301949 (Nat’l Arb. Forum Mar. 2, 2010) (finding <mitsubishichicago.com> confusingly similar to MITSUBISHI and ordering transfer); see also Seiko Epson Corp. & Epson America, Inc. v. McKeown, FA 1312058 (Nat’l Arb. Forum April 20, 2010) (holding that a domain name that “incorporates the dominant feature of Complainant’s mark, adds descriptive terms related to Complainant’s business, and adds the generic top-level domain . . . are minor alterations to Complainant’s registered mark and, as such” is still “confusingly similar to Complainant’s mark pursuant to Policy 4(a)(i).”).
The use of the generic top-level domains “.com,” does not distinguish the disputed domain name <navigantdxb.com> from the NAVIGANT Marks and is without significance under Policy ¶4(a)(i). See InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”).
Navigant satisfies the first element of Policy ¶4(a), as the disputed domain name wholly incorporates the NAVIGANT mark and includes only a minor alterations – the inclusion of the gTLDs “.com,” and the geographically descriptive term “dxb.”
SECOND ELEMENT: Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has no rights or legitimate interests in the disputed domain name. Conversely, Navigant’s longstanding use of the NAVIGANT Marks predates any rights Respondent may claim in the disputed domain name. Further, the disputed domain name wholly incorporates the NAVIGANT mark, which negates any presumption of Respondent’s legitimate use. See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in the domain name makes it difficult to infer any legitimate use).
Pursuant to Policy ¶4(c), a Panel may consider the following non-exhaustive factors to determine whether a respondent has any rights or legitimate interests in a disputed domain:
(i) Before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although Navigant must make a prima facie showing that Respondent has no rights or legitimate interests in the mark, the burden of proof is light since evidence of this element lies most directly within Respondent’s own knowledge. Ebay Inc. v. Wangming, D2006-1107 (WIPO Dec. 28, 2006). Once Navigant meets that light burden, the evidentiary burden shifts to Respondent to rebut the showing. Id. Respondent must demonstrate, that when it made its choice to register <navigantdxb.com> there was no exploitative intent. While Respondent may have at one time had a legitimate business, the issue is whether the Respondent has a legitimate right or interest in using the disputed domain name. See International Data Group, Inc. v. K McGovern, D2005-0960 (WIPO October 31, 2005) (finding the issue is whether respondent “has a right or legitimate interest in the domain name itself; thus, a respondent might have a legitimate business and yet be obliged to conduct it under a different name from the complainant’s trademark”). In this case, the evidence shows that Respondent lacks any rights or legitimate interests in the disputed domain name.
(a) Prior to notice of the dispute, Respondent did not use the dispute domain name in connection with a bona fide offering of goods or services or any legitimate noncommercial or fair use of the domain.
Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services. Instead, the disputed domain name displays the purported business of “Navigant Engineering Consultants” in Dubai, United Arab Emirates. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat’l Arb. Forum June 23, 2003) (stating that “Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding no rights or legitimate interests when respondent used the disputed domain to market similar goods and services as those offered by complainant and to profit from the complainant’s established reputation); Hewlett-Packard v. Full System, FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that the Respondent had no legitimate interest in the domain name, <openmail.com>, that was being used to compete with the Complainant’s e-mail services). Respondent uses the disputed domain name to divert users away from Navigant’s website, redirecting them to a website offering construction consulting services and other related services under the name “Navigant Engineering Consultants.” Navigant has offered the same or similar services since its formation in 1996, and it has advertised its services through Navigant’s website at <navigantconsulting.com> since at least as early as 1999.
On information and belief, “Navigant Engineering Consultants,” was established in 2008, however, its membership with the Dubai Chamber of Commerce expired in 2009, and its license with the Department of Economic Development in Dubai expired on November 10, 2010. The affidavit of Maureen B. Gorman detailing the results of the investigation into the activity of “Navigant Engineering Consultants” conduct by local counsel in Dubai.
Further, a review of the archived pages cataloged at <archive.org> reveals that there is no evidence a website existed at <navigantdxb.com> prior to February 7, 2011, and since its first capture on February 7, 2011, the web site has remained static. Further, Respondent Daison Arikkat has not been employed by Navigant Engineering Consultants since August 2010. A copy of Daison Arikkat’s Linkedin profile showing employment with Navigant Engineering Consultants from June 2008 to August 2010 is attached.
Evan assuming arguendo that the registration of a business name that appropriates Complainant’s mark in its entirety and is used by a competitor to offer competing services is a bona fide use, the fact that the Respondent’s business has been defunct for at least five (5) years means that the original use of the domain name cannot be deemed a bona fide use to support the current registration and continued renewal of the disputed domain. A domain name registration is not perpetual, Respondent renewed the disputed domain name in March of 2011, 2012, 2014, and 2015. Policy ¶2 requires that the Respondent make the same representations regarding the legitimacy of the domain name registration and its intended use at renewal that Respondent made at the time of its initial registration. See Policy ¶2 (“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that [..](b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party”). Because Respondent did not have a bona fide business to support renewal of the domain name after the entity stopped operations its ongoing registration cannot be supported by any bona fide commercial activities giving rise to rights in the Navigant name.
Further, Navigant has not authorized Respondent to use the NAVIGANT Marks.
Respondent’s use of the disputed domain name to steer users to a website “offering services related to and competing with Complainants’ site cannot be deemed a bona fide offering of goods or services under Policy ¶4(c)(i).” Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat’l Arb. Forum Jan. 11, 2002); see also Computerized Sec. Sys., Inc., FA 157321; S. Exposure v. S. Exposure, Inc., FA 94864; Hewlett-Packard v. Full System, FA 94637. Thus, Respondent’s use of the Disputed Navigant Domain Names is not a bona fide use, and Respondent cannot satisfy the requirements of Policy ¶4(c)(i) or 4(c)(iii).
(b) Respondent is not commonly known by the disputed domain name
Respondent cannot point to any evidence establishing that it is legally chartered or commonly known as “Navigant,” “Navigant DXB,” “Navigant Engineering Consultants,” or “navigantdxb.com.” Respondent’s business license in Dubai expired on November 10, 2010. Respondent is not legitimately conducting business as “Navigant DXB” or “Navigant Engineering Consultants.” The simple existence of a website is not sufficient evidence of Respondent being “commonly” known as “Navigant DXB.”
Respondent cannot satisfy the requirements of Policy ¶4(c)(ii) because the disputed domain name, <navigantdxb.com> was not the Respondent’s commonly-known name. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat’l Arb. Forum June 23, 2003) (finding respondent’s claim that since it uses its company name as its domain name it has a legitimate interest and is commonly known by the name as insufficient to prove respondent was commonly known by the dispute domain name); Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
(c) Respondent failed to discharge its duty to select, register, and use a domain name that does not infringe the rights of a third party.
Respondent failed to discharge its duty and contractual obligations under the Policy when it failed to select, register, and use a domain name that did not infringe Navigant’s rights in the NAVIGANT Marks. Specifically, Policy ¶2 states that the domain name registrant is charged with the responsibility of determining whether its domain name registration infringes or violates a third party’s rights. See also Collegetown Relocation, L.L.C. v. John Mamminga FA 95003 (Nat’l Arb. Forum July 20, 2000) (“When registering domain names, the Respondent has a duty to investigate and refrain from using a domain name that infringes on a third party’s rights.”); Slep-Tone Entm’t Corp. v. Sound Choice Disc Jockeys Inc., FA 93636 (Nat’l Arb. Forum Mar. 13, 2000) (holding that Respondent registered and used the domain name in bad faith because of the failure to select, register, and use a domain name that did not infringe on the rights of a third party).
The facts reflect that Respondent either failed to conduct any type of investigation or search prior to registering the disputed domain name or continued to adopt the disputed domain name despite having knowledge of the NAVIGANT Marks. Navigant registered its <navigantconsulting.com> domain name in 1999, nearly nine years before Respondent registered the disputed domain name. Had Respondent conducted a simple internet search, it would have identified search hits for Navigant and its website at <navigantconsulting.com>. Moreover, Complainant filed its applications for the NAVIGANT Marks in the United Arab Emirates in 2007, prior to the registration of the disputed domain name or the now expired business registration. If Respondent had conducted the requisite search before adopting the disputed domain name, it would have learned of Navigant’s applications and use of the NAVIGANT Marks.
(d) Respondent does not use the disputed domain name for any legitimate noncommercial or fair use.
Respondent cannot demonstrate that it is engaged in a legitimate noncommercial or fair use of the disputed domain name. Pursuant to Policy ¶4(c)(iii), a respondent may demonstrate that it has legitimate interest in a domain name when it is “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” Conversely, a respondent that misleadingly diverts consumers for commercial gain cannot rely on such use to demonstrate that it is using the disputed domain for a legitimate noncommercial or fair use. In Computerized Security Systems, Inc. v. Hu, FA 157321, a Panel held that the use of a confusingly similar domain name to sell goods in direct competition with the complainant’s goods was not a legitimate noncommercial or fair use qualifying under Policy ¶4(c)(iii).
Respondent’s domain name <navigantdxb.com> wholly incorporates the NAVIGANT Marks. In addition, Respondent does not offer any noncommercial information through, or make other fair use of, the disputed domain name. Instead, Respondent uses the disputed domain name to present users with a webpage offering services, directly competitive with Navigant’s own services which are purportedly offered by a defunct corporation. Such use is not a legitimate or noncommercial fair use. Respondent therefore cannot satisfy the requirements of Policy ¶4(c)(iii).
In sum, Navigant has not authorized Respondent to use the NAVIGANT Marks. Respondent does not use the disputed domain name in connection with a bona fide offering of goods for sale, and Navigant’s rights in the NAVIGANT Marks predate any rights Respondent could claim in the disputed domain name. Accordingly, Navigant has satisfied the second prong of Policy ¶4(a) because Respondent has no rights or legitimate interests in the disputed domain name.
THIRD ELEMENT: The disputed domain name was registered and is being used in bad faith.
Respondent’s bad faith is evidenced by its registration of <navigantdxb.com> and use of “Navigant Engineering Consultants” to offer competing consulting services. The disputed domain name wholly incorporates the NAVIGANT mark, which negates any presumption of Respondent’s legitimate intentions. See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in the domain name makes it difficult to infer any legitimate use). Respondent’s registration and use intentionally attempts to trade on Navigant’s longstanding use of the NAVIGANT Marks, which predates any rights Respondent may claim in the disputed domain name.
Pursuant to Policy ¶4(b), the following non-exhaustive circumstances, if present, shall be evidence of bad faith registration and use of a domain name:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
(a) Respondent intentionally attempted to divert Navigant’s customers by creating a likelihood of confusion.
Respondent is using the disputed domain to distract potential customers of Navigant’s business by capitalizing on mistaken or confused internet users. Use of a domain name intentionally to attract consumers to a website for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website constitutes bad faith. Policy ¶4(b)(iv). Here, Respondent uses the disputed domain name to drive traffic to a website purported to offer construction consulting and other related services through a defunct corporate entity. These services are directly competitive with Navigant’s services, and Respondent use of a nearly identical domain name calculated to misdirect consumers who incorrectly assume an affiliation with Navigant. This type of conduct constitutes evidence of Respondent’s registration and use of the disputed domain name in bad faith, Respondent’s use of the disputed domain name “to offer competing goods illustrates Respondent’s bad faith registration and use and is intentionally attempting to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which evidences bad faith registration and use pursuant to Policy 4(b)(iv).” Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat’l Arb. Forum June 23, 2003); see also SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it "obvious" that the domain names were registered for the primary purpose of disrupting the competitor's business when the parties are part of the same, highly specialized field).
Respondent’s adoption of a domain name that wholly incorporates the NAVIGANT mark in order to divert consumers is evidence that Respondent’s registration and use of the disputed domain name in bad faith under Policy ¶4(b)(iv).
(b) Respondent’s bad faith is evinced by its use of the NAVIGANT mark primarily to disrupt and compete with Navigant’s business.
Respondent has intentionally attempted to disrupt, and is currently disrupting, Navigant’s business. Respondent does so by using a domain name that is nearly identical to the NAVIGANT Marks to display a website offering directly competitive services. This is exactly the type of misuse contemplated by Policy ¶4(b)(iii). Specifically, “[o]perat[ing] a website that provides goods and services in direct competition with Complainant’s business . . . constitutes disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).” Almco Inc. v. Almco, Inc., FA 560535 (Nat’l Arb. Forum Nov. 4, 2005); see also Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (stating that “[t]he fact that Respondent has taken essentially Complain[ant's] mark as its domain name is evidence of bad faith”); Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum April 25, 2000) (finding that the Respondent acted in bad faith when he used the Complainant’s marks to develop an Internet business in competition with the Complainant); S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (respondent diverted business from complainant to competing website in violation of Policy ¶4(b)(iii)). As in Almco, Respondent’s use of Disputed Navigant Domain Names to market services competing with those offered by Navigant demonstrates Respondent’s bad faith registration and use under Policy ¶4(b)(iii).
(c) Respondent knew, or should have known, of Navigant’s prior use of the NAVIGANT Marks.
Where a respondent has actual knowledge of another party’s mark when registering a domain name, that registration is made in bad faith. See Minicards Vennootschap Onder Firma Amsterdam v. Moscow Studios, Case No. FA 1031703 (Nat’l Arb. Forum Sept. 5, 2007) (finding bad faith registration where respondent had “actual knowledge of Complainant’s mark when registering the disputed domain name”). Here, Respondent registered a domain name that wholly incorporates the NAVIGANT mark. Respondent registered the disputed domain name despite having no affiliation with Navigant whatsoever. Based on Navigant’s use of the NAVIGANT Marks since 1996 and the NAVIGANT mark’s strong, distinctive nature, it is highly improbable that Respondent registered virtually identical domain names without knowledge of Navigant’s rights in the mark.
Even assuming a lack of actual knowledge, Respondent nevertheless had a duty to investigate prior to registering the domain name. See Collegetown Relocation, L.L.C. v. John Mamminga, Case No. FA 95003 (Nat’l Arb. Forum July 20, 2000) (stating that “[w]hen registering domain names, the Respondent has a duty to investigate and refrain from using a domain name that infringes on a third-party’s rights”); Slep-Tone Entm’t Corp. v. Sound Choice Disc Jockeys Inc., Case No. FA 93636 (Nat’l Arb. Forum Mar. 13, 2000) (finding that “[t]he domain name ‘sound-choice.com’ should be considered as having been registered and being used in bad faith because Respondent failed to discharge its responsibility to select, register, and use a domain name that does not infringe the rights of a third party”).
A most basic investigation by Respondent would have revealed Navigant’s rights in the NAVIGANT Marks, and its applications to register NAVIGANT in the United Arab Emirates. Navigant has used its mark since 1996 and registered its <navigantconsulting.com> domain name in 1999. Regardless of whether Respondent failed to investigate, or investigated and then disregarded, Navigant’s longstanding rights in the NAVIGANT Marks, Respondent’s actions evince bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 prove the following three elements to obtain an order cancelling or transferring a domain name:
(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(f), 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 has rights in the NAVIGANT mark because it registered the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,714,796, registered June 15, 2003). Registration of mark with the USPTO (or any governmental authority) adequately demonstrates rights in a mark. See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶4(a)(i)).
Complainant claims Respondent’s domain <navigantdxb.com> is confusingly similar to the NAVIGANT mark in which Complainant has rights. The <navigantdxb.com> domain appears to differ from the NAVIGANT mark through the addition of the gTLD “.com” and the letters “dxb” (the three letter airport code for Dubai). The addition of the gTLD “.com” must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires a TLD (whether a gTLD or ccTLD). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark). Adding letters to a mark in a domain does not prevent a finding of confusing similarity. See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”). Additionally, geographic terms or letters added to a mark have also been found not to adequately differentiate a domain name from a mark. See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”). Respondent’s domain is confusingly similar to Complainant’s NAVIGANT mark.
The Panel finds Policy ¶ 4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent is not commonly known by the disputed domain name based on a lack of any evidence to establish Respondent as an entity known as “Navigant” or “Navigant DXB.” This domain name was originally registered using a privacy service. The current WHOIS information indicates that Respondent is “Daison Arikkat” of the organization, “NAVIGANT ENGINEERING CONSULTANTS.” A respondent was not commonly known by a disputed domain name based on WHOIS information and other information in the record. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Navigant Engineering Consultants’ registration as a company expired in 2009. This means the company no longer exists and has not existed for at least five years…even though the domain name was renewed in March 2012, March 2014 and March 2015. Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant claims Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain <navigantdxb.com> resolves to a website with the title, “Navigant Engineering Consultants,” which appears to advertise construction services in Dubai. Complainant’s domain at <navigant.com> resolves to a domain that offers various services including in the energy and engineering fields. At this time, no such company as “Navigant Engineering Consultants” exists. Using a confusingly similar domain to host a website offering fictitious services that compete with a complainant is not a use permitted under Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Respondent cannot have acquired any right to the domain name simply by registering it because it was registered using a privacy service. Respondent has done nothing to public connect itself with the disputed domain name.
The Panel finds Policy ¶ 4(a)(ii) satisfied.
First of all, Respondent registered the disputed domain name using a privacy service. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut this presumption. For this reason alone, the Panel is comfortable finding bad faith registration and use.
The next question is when should the domain name be considered registered. In this case, the domain name was initially registered on March 12, 2008 using a WHOIS privacy service. This Panel does not believe that is the operative date for determining bad faith registration because the domain name was renewed in March 2011, March 2013, March 2014 and March 2015. Under these circumstances and with a privacy registration, March 2015 must be considered the registration date. A registrant reaffirms all information associated with a domain name when it is renewed. The UDRP is better served by using renewal dates (if there are any) rather than creation dates, especially if there is a transfer of ownership or the owning juridical entity “dies” (and a WHOIS privacy service will mask this information). To do otherwise would protect discontinued marks for terminated enterprises and no one has an interest in doing that.
It is difficult to know what transpired because Respondent has submitted no response. This Panel believes Respondent established a “copycat” business to take advantage of Complainant’s good reputation in the region (the domain name was registered a scant 87 days after Complainant filed is trademark application in Dubai), but this is only an inference. The copycat business lasted only about a year.
Complainant claims Respondent’s bad faith is demonstrated through Respondent’s intentional disruption of Complainant’s business. Respondent’s domain resolves to a website that offers services in competition with Complainant’s services. However, Respondent does not actually offer such services and has not offered such services for at least 5 years. Using a confusingly similar domain to offer even fictitious competing services constitutes bad faith registration and use of the disputed domain name. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website). Respondent’s registration and use of the disputed domain demonstrates bad faith under Policy ¶ 4(b)(iii).
Complainant claims Respondent has shown bad faith through using the dispute domain to confuse and attract internet users for commercial gain. Respondent uses the domain to resolve to a website which offers competing services. Respondents have been found to have acted in bad faith based on using a confusingly similar domain in a manner that competes with a complainant’s business. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant). Respondent targeted Complainant by offering competing services on a confusingly similar domain (and company name). This means Respondent has demonstrated bad faith under Policy ¶ 4(b)(iv).
Complainant claims in light of the fame and notoriety of Complainant's NAVIGANT mark, it is inconceivable Respondent could have registered the <navigantdxb.com> domain name without actual knowledge of Complainant's rights in the mark. This seems to be true because Respondent seemed to establish a “copycat” business. Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and actual knowledge is adequate evidence 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).
The Panel finds Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <navigantdxb.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, March 22, 2016
[1] From 2001 to 2011 Navigant Consulting was the exclusive licensee of Navigant International. Navigant International assigned its rights in the NAVIGANT marks and associated domain names to Navigant Consulting in 2011. From 2001 to 2011 Navigant Consulting’s website and advertisements contained the following language: “’NAVIGANT’ is a service mark of Navigant International, Inc. Navigant Consulting, Inc. (NCI) is not affiliated, associated, or in any way connected with Navigant International, Inc., and NCI’s use of ‘NAVIGANT’ is made under license from Navigant International, Inc.”
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