Textron Innovations Inc. v. Textron Sistemi di Fissaggio srl
Claim Number: FA1705001732602
Complainant is Textron Innovations Inc. (“Complainant”), represented by Jeremiah A. Pastrick, Indiana, U.S.A. Respondent is Textron Sistemi di Fissaggio srl (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <textron.net>, registered with Psi-Usa, Inc. Dba Domain Robot.
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 May 22, 2017; the Forum received payment on May 22, 2017.
On May 23, 2017, Psi-Usa, Inc. Dba Domain Robot confirmed by e-mail to the Forum that the <textron.net> domain name is registered with Psi-Usa, Inc. Dba Domain Robot and that Respondent is the current registrant of the name. Psi-Usa, Inc. Dba Domain Robot has verified that Respondent is bound by the Psi-Usa, Inc. Dba Domain Robot 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 May 30, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 19, 2017 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@textron.net. Also on May 30, 2017, 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 June 22, 2017, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service Mark Information: ICANN Rule 3(b)(viii).
Complainant, Textron Innovations Inc. is the owner of the following registrations:
TEXTRON
United States Trademark Registration No. 1090806 issued May 9, 1978 in International Class 12 for, among other goods, SNOWMOBILES, STRUCTURAL PARTS AND FITTED PROTECTIVE COVERS THEREFOR; POWERED SLEDS; ] RACING CARS AND STRUCTURAL PARTS THEREFOR; ELECTRIC AND GAS GOLF CARTS; [ INTERNAL COMBUSTION ENGINES AND MUFFLERS FOR LAND VEHICLES; ] STRUCTURAL AUXILIARY GAS TANKS; SPARK PLUG CONTAINERS AS STRUCTURAL PARTS OF LAND VEHICLES; AIR CUSHION CRAFT AND LANDING GEAR THEREFOR; SURFACE EFFECT SHIPS; [ ROCKET ENGINES FOR LAND VEHICLES;] MISSILE AND SPACECRAFT PROPULSION SYSTEMS; [ STRUCTURAL ROCKET PROPELLANT TANKS; ] AIRCRAFT LANDING GEAR AND PARTS THEREOF; HELICOPTERS AND AIRPLANES AND STRUCTURAL PARTS THEREOF; METAL AUTOMOTIVE STRUCTURAL BODY PARTS; DECORATIVE TRIM FOR AUTOMOBILES; [ AUTO STEERING AND SUSPENSION STUDS; ENGINE CYLINDER BLOCKS, ENGINE CYLINDER HEADS, FLYWHEEL HOUSINGS, MANIFOLDS, CAMSHAFTS, ALL FOR LAND VEHICLES; CLUTCH HOUSINGS; TRANSMISSION HOUSINGS; FARM TRACTORS; WHEELS AND BRAKE DRUMS FOR LAND VEHICLES
TEXTRON
United States Trademark Registration No. 1090737 issued May 9, 1978 in International Class 9 for, among other goods, PRECISION FLUID SYSTEM COMPONENTS AND ASSEMBLIES-NAMELY, SERVOVALVES, PROPELLANT VALVES, CONTROL VALVES, ACTUATORS, FILTERS, SWITCHES, REGULATORS, GAUGES, VESSELS; FUEL SYSTEM CONTROL VALVES AND MEASUREMENT APPARATUS; [ FIRE SUPPRESSION AND CONTROL UNITS; ] [ GAS METERS AND REGULATORS AND PARTS THEREOF; PRESSURE REGULATORS; NUMERICAL CONTROL UNITS FOR MACHINE TOOLS; NUMERICAL CONTROLS FOR TURRET LATHES; ELECTRONIC AND HYDRAULIC MACHINE TOOL CONTROL UNITS; OPTICAL DUPLICATORS; OPTICAL COMPARATORS; SPECTACLES; EYEGLASSES; EYEGLASS FRAMES AND PARTS THEREOF; CASES FOR HOLDING SPECTACLES AND EYEGLASSES; LENSES; OPHTHALMIC LENS AND LENS BLANKS; OPTICAL MACHINERY USED FOR ADJUSTING AND TESTING LENSES AND LENS MOUNTINGS FOR EYEGLASSES AND SPECTACLES- NAMELY, LENS MARKERS, LENS TESTING UNITS, GAUGERS AND GAUGE RACKS, AND PARTS FOR ALL OF THE FOREGOING; OPTICAL INSTRUMENTS AND DEVICES FOR TESTING AND EXAMINING EYES, SPECTACLES, EYEGLASSES, AND PARTS THEREFOR; PERSONAL SAFETY PRODUCTS AND EQUIPMENT FOR HEARING, EYE, RESPIRATORY, AND HEAD PROTECTION-NAMELY, INDUSTRIAL SAFETY GOGGLES, FACE SHIELDS, MAGNIFYING LENS FOR WELDERS' HEADGEAR, WELDERS' HELMETS, SAFETY HATS AND CAPS, WELDING GLOVES, AND RESPIRATORS; ELECTRICAL RACEWAY PRODUCTS AND SYSTEMS-NAMELY, METAL RACEWAYS, FLOOR BOXES, UNDERFLOOR DUCTS, FLOOR FITTINGS, JUNCTION BOXES, SERVICE POLES; ADAPTORS; ELBOWS; OFFSETS; ] INERTIAL INSTRUMENTS; ELECTROMAGNETIC DEFENSE UNITS; AEROSPACE ANTENNAS; ELECTRO OPTICS; HIGH ENERGY LASER BEAM SYSTEMS; [ DIGITAL WATCH MODULES; ] DIGITAL FREQUENCY SYNTHESIZERS; OSCILLATORS, CRYSTALS AND FILTERS; TEMPERATURE INDICATORS; VOLTMETERS, PRECISION TIMERS AND STOPWATCHES; THERMOCOUPLE INDICATORS; COUNTERS; TRACKING COMPARATORS; DIGITAL PRESETS; REMOTE DISPLAYS; FREQUENCY METERS; TACHOMETERS; [ TAPE- PROGRAMED ELECTRONIC UNIT FOR CHECKING THE OPERATING SYSTEM OF A DIESEL ELECTRIC LOCOMOTIVE. ] ELECTRONIC DEFENSE DETECTION UNIT FOR AIRCRAFT SERVICE FITTINGS, BEING PARTS OF GAS AND WATER METERS.
United States Trademark Registration No. 1090704 issued May 9, 1978 in International Class 7 for, among other goods, MOTORS (NOT FOR LAND VEHICLES); [ CENTRIFUGAL PUMPS, THERMOPLASTIC PUMPS, HEAVY DUTY TRASH PUMPS, DIAPHRAGM PUMPS, PRESSURE PUMPS, ELECTRICAL SUBMERSIBLE PUMPS; ELECTRIC GENERATORS; ] [ CHAIN SAWS; ] [ CONCRETE VIBRATORS; DEMOLITION SAWS; ABRASIVE WHEELS; COMPACTION UNITS; ENGINE CYLINDER BLOCKS; GREY, ALLOID AND DUCTILE IRON CASTINGS FOR ENGINE BLOCKS; ENGINE CYLINDER HEADS; GEARS; ] [ PRECISION BALL, ROLLER AND SLIDING BEARINGS AND BEARING ASSEMBLIES FOR ORIGINAL EQUIPMENT AND THE REPLACEMENT MARKET, EMPHASIZING AEROSPACE, BUSINESS MACHINES, CONSTRUCTION, FARM EQUIPMENT AND MACHINE TOOL INDUSTRIES; VERTICAL MILLING MACHINES; POWER GRINDERS; ] [ HYDRAULIC DUPLICATORS; TOOL CHANGERS; HAND FEED GRINDERS; AUTOMATIC FASTENING MACHINES AND PARTS THEREOF; RIVETING MACHINES; MINE TOOL BITS FOR POWER OPERATED EQUIPMENT; COLD AND HOT HEADING MACHINES; HEADERS; THREADERS; METAL FORMING PRESSES; TRANSFER PRESSES; ] [ ROLLING MILLS; HOBBING MACHINES; ] [ PRECISION SURFACE GRINDERS; CYLINDRICAL AND THREAD GRINDERS; TURRET LATHES; TRACER LATHES; MACHINE TOOLS-NAMELY, WIRE DRAWING MACHINES, EYELET MACHINES, MACHINES FOR FORMING METAL PARTS; COLD AND HOT FORMING MACHINERY, AND PARTS THEREOF; ROCKET ENGINES (NOT FOR LAND VEHICLES); ] MISSILE AND SPACECRAFT PROPULSION ENGINES; ACTUATORS; [ STAPLING, NAILING AND WIRESTITCHING MACHINES FOR INDUSTRIAL FASTENING, PACKAGING AND CONSTRUCTION; MACHINERY FOR MAKING CORRUGATED AND SOLID FIBRE SHIPPING CONTAINERS-NAMELY, COIL AND BELT POWER NAILERS, EXPLOSIVE ACTIVATED NAILERS FOR CONCRETE, CLINCH NAILERS, SHEETERS, AND COMPLETE NAILERS FOR INDUSTRIAL USE AND FOR THE CONSTRUCTION INDUSTRY; ] [ POWDER-ACTUATED FASTENING TOOLS; ] [ WIRE STITCHING, STAPLING, AND TACKING MACHINES; PNEUMATIC POWERED NAILERS AND STAPLERS FOR CONSTRUCTION AND INDUSTRIAL PURPOSES. WIRE STITCHING MACHINES FOR THE GRAPHIC ARTS INDUSTRY; ] [ POWDER ACTUATED TOOLS USED BY THE PLUMBING, ELECTRICAL AND GENERAL COMMERCIAL CONSTRUCTION INDUSTRY; ] INTERNAL COMBUSTION ENGINES; MANIFOLDS, CAMSHAFTS, MUFFLERS (NOT FOR LAND VEHICLES) [; OPTICAL MACHINERY USED FOR MANUFACTURING AND FINISHING LENSES AND LENS MOUNTINGS FOR EYEGLASSES AND SPECTACLES-NAMELY, BLOCKERS, CLEANERS, EDGERS, GENERATORS, LAP CUTTERS, GRINDERS, PATTERN MAKERS, RECLAIM TANKS AND SURFACERS AND PARTS FOR ALL OF THE FOREGOING ]
TEXTRON
Italian trademark Registration No. 1298469 originally registered on August 4, 1999 and most recently renewed on December 1, 2007 in international classes 01, 06,
07, 08, 09, 12, 13, 17, 20, 35, 36, 41 and 42.
These registrations are incontestable under U.S. and international trademark law and are conclusive evidence of Complainant’s exclusive right to use the TEXTRON mark in the
U.S. and in Italy for the goods covered by the registrations.
FACTUAL AND LEGAL GROUNDS. ICANN Rule 3(b)(ix).
This Complaint is based on the following factual and legal grounds:
Complainant, Textron Innovations Inc., is the owner of the TEXTRON marks that it licenses to Textron Inc. (“Textron”). Textron Innovations Inc. is an affiliate of Textron.
Textron Inc. (NYSE: TXT) is not only one of the world's best known multi-industry companies, it is a pioneer of the diversified business model. Founded in 1923, Textron has grown into a network of businesses with total revenues of $13.8 billion (Textron is ranked 209th on the FORTUNE 500 list of largest U.S. companies), with approximately 35,000 employees with facilities and presence in 25 countries, serving a diverse and global customer base. Textron’s companies include some of the most respected global brands in transportation, including Bell Helicopter, E-Z-GO golf carts and Cessna aircraft. Textron operates a web site at textron.com that features information regarding the company, its products, businesses and subsidiaries.
Textron utilizes the Textron.com top-level domain for its email address, such that a real Textron email extension is @textron.com.
Complainant Textron became aware of the domain Textron.net in April 2017 when it was reported to Textron that this domain was being utilized as part of a “phishing” scam in which the textron.net domain is being used to impersonate high-level Textron executives including the President & CEO of Textron’s Textron Specialized Vehicles business unit.
Needless to say, Textron is promptly filing this UDRP upon learning of this domain and its nefarious purposes in order to protect both Textron and its intellectual property as well as to protect other consumers and business partners of Textron from the potential harm that this domain may be used to cause.
[a.] Confusing similarity. ICANN Rule 3(b)(ix)(i); ICANN Policy ¶4(a)(i).
The domain name Textron.net is confusingly identical to Complainant’s registered Textron marks. Respondent is simply utilizing the Textron name/mark with the top level domain (“tld”) .net. It is well-settled that a domain name, which utilizes a trademark along with an additional descriptive, generic terms (in this case the tld .net) does not mitigate the confusing use of the trademark. See, for example, Lockheed Martin Corp. v. Burnup, FA1307001508768 (Forum, Aug. 13, 2013), finding the addition of generic or descriptive term, “stock” to Lockheed Martin insufficient to defeat confusing similarity; Giorgio Armani S.p.A Swiss Branch, Mendriso v. Chung, Case No. D2013-0821 (“adding purely descriptive words which define the product or service offered via the website serves only to compound similarity when used in conjunction with a mark to which the Complainant has rights.”); Victoria’s Secret v. Erno Lokhorst, FA0101000096556 (Forum, March 5, 2001) finding victoriassecretoutlet.com to be confusingly similar to Complainant’s VICTORIA’S SECRET trademark; and ULTA Salon, Cosmetics & Fragrance Inc. v. ultabeautyoutlet.com, FA1505001619434 (Forum, June 25, 2015) finding the domain ultabeauty-outlet.com confusingly similar to Complainant’s ULTA BEAUTY mark.
In light of Complainant’s long-standing registration and use of the Textron marks in connection with a wide variety of goods, it is clear that the domain name Textron.net is confusingly similar to Complainant’s registered TEXTRON marks.
[b.] Rights to or Legitimate Interests. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).
Respondent has no rights or legitimate interests in the disputed domain name. Despite the fact that, according to the Whois report, Respondent has incorporated the Textron mark into its name (at least for the purposes of registering this domain) this fact alone does not confer any legitimate rights or interests in the Textron.net domain upon Respondent, especially in light of the fact that:
1. Respondent is utilizing the domain in bad faith to impersonate Textron executives.
2. Complainant’s Textron marks are so well-known that the only plausible inference that can be derived from Respondent’s registration of the disputed domain name is that Respondent registered the disputed domain name to take advantage of and intentionally trade on the goodwill associated with Complainant’s marks. See, Morgan Stanley v. Stanley Morgan FA1701001715028 (Forum March 9, 2017). This inference is compounded by the fact that Respondent is utilizing this domain in order to impersonate Textron executives.
3. Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services or for any legitimate or fair use because the disputed domain name does not resolve to an active website. The passive holding of a domain name does not show a legitimate use or bona fide offering of goods or services. See Teachers Ins. and Annuity Ass’n of Am. v. Wreaks Commc’ns Group, D2006-0483 (WIPO June 15, 2006) (“passive holding of a domain name does not constitute ‘legitimate non- commercial or fair use’”); and TMP Int’l, Inc. v. Baker Enters., FA 204112 (Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶4(a) (ii)”).
4. Complainant has not licensed nor otherwise permitted any organization to utilize its TEXTRON mark in connection with any goods or services or to own any domain names incorporating the TEXTRON mark. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
It is clear that Respondent has no legitimate rights in the domain name at issue and that his purpose for registering the Textron.net domain is to utilize this domain, and emails associated therewith, as part of scams that involve impersonating Textron personnel.
[c.] Registered and Used in Bad Faith. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii).
The facts of record support a finding that Respondent both registered and is using the domain name at issue in bad faith under Policy ¶4(b)(iii) and 4b(iv) in that Respondent is: (1) registered the domain Textron.net with knowledge of Complainant’s rights in the TEXTRON marks; (2) is passively holding this domain in adversity to Complainant’s rights in the TEXTRON marks; (3) using the Textron.net domain name intentionally to disrupt the business of Complainant; and (4) using the domain name in an intentional attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website.
The facts of record support a finding that Respondent both registered and is using (or plans to use) the domain names at issue in bad faith under Policy ¶4(b)(iii) in that Respondent:
Complainant’s registered TEXTRON trademark has a date of first use of 1976 and predates Respondent’s domain registration by more than 40 years. Moreover, it cannot be argued in good faith that Respondent did not know about the existence of Complainant’s TEXTRON marks when it registered the domain names at issue.
With regard to bad faith registration in violation of Policy ¶4(b)(iii) See Wells Fargo & Co.
v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); Cerberus Capital Management, L.P. v. Jake Newton, Id., (“Complainant argues that Respondent’s attempt to use the <cerberuscapitallp.com> domain name to pass itself off as Complainant in emails constitutes bad faith. The Panel agrees that such fraudulent activity via the disputed domain name lends evidence to support a finding of bad faith registration and use pursuant to Policy ¶4(a)(iii)”); SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA 1581255 (Forum Oct. 29, 2014) (“Respondent’s use of the domain name’s e-mail suffix for fraudulent purposes illustrates Policy ¶4(a)(iii) bad faith.”); and Zillow, Inc. v. Ryan G Foo / PPA Media Services FA 1502001604451 (Nat. Arb. Forum March 19, 2015) (“This use of a domain name for phishing disrupts the business of Complainant within the meaning of Policy ¶4(b)(iii) and is evidence of bad faith registration and subsequently of bad faith use.”).
Additionally, past panels have found that registration of a confusingly similar domain with knowledge of a Complainant’s rights in a mark constitute bad faith under Policy ¶4(b)(iii). See, for example, Bluegreen Corp. v. eGo, FA 128793 (Forum Dec. 16, 2002) finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights; and ULTA Salon, Cosmetics & Fragrance Inc. v. ultabeautyoutlet.com, FA1505001619434 (Forum, June 25, 2015) concluding that Respondent had actual knowledge of Complainant’s rights and therefore registered its domain in bad faith.
Furthermore, Panels have concluded that Respondent’s failure to make an active use of a disputed domain name is evidence of its bad faith registration, use and/or passive holding under Policy ¶4(a)(iii). See, for example, Morgan Stanley v. nashan, FA1612001706094 (Forum January 23, 2017) and Coachella Music Festival, LLC v. Titus Watson, FA1610001699866 (Forum December 2, 2016).
As for bad faith registration in violation of Policy ¶4(b)(iv), See SPTC, Inc. and SPTC Delaware, LLC v. Robert Seid / Chicago Title Trust, FA FA1503001608982 (Forum April 20, 2015) – “Past panels have found that a respondent’s “passing off” is evidence of bad faith pursuant to Policy ¶4(b)(iv). The Panel likewise finds that Respondent’s use of the<sothebysvacationsales.com> domain name constitutes bad faith use under Policy ¶4(b)(iv)”;
In summary, it cannot be disputed that Complainant has long standing and well- recognized rights and goodwill in its TEXTRON marks and that the Textron.net domain name at issue is confusingly similar to the TEXTRON marks. Respondent has no legitimate rights in the Textron.net domain name. Respondent has registered and is using the Textron.net domain to impersonate Textron employees for identify theft or other nefarious purposes. The aforementioned conduct constitutes bad faith use.
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 transferring or cancelling 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 (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 claims rights in the TEXTRON mark through its registration of that mark with the United States Patent and Trademartk Office (“USPTO”) (Reg. No. 1090704, registered May, 9 1978). Registration with the USPTO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i), even if Respondent is located in another country. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶4(a)(i).”). Complainant also registered its mark in Respondent’s home country. Complainant has established its rights in the TEXTRON mark.
Complainant claims Respondent’s <textron.net> is identical to Complainant’s TEXTRON mark because it incorporates the mark in its entirety and merely adds a generic top-level domain (“gTLD”), “.net”. The addition of a gTLD is not sufficient to eliminate confusing similarity. 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). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Therefore, Respondent’s <textron.net> is identical to Complainant’s TEXTRON 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 (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 (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 nor has Complainant authorized Respondent to use its TEXTRON mark. Where there is no response, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information on record lists “Textron Sistemi di Fissaggio srl” as the registrant name. In light of the use of the web site, this is clearly a nom de plume. There is no evidence in the record showing Complainant authorized Respondent to use the TEXTRON mark. This supports a finding Respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Respondent is not commonly known by the <textron.net> domain name.
Complainant claims Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial fair use under Policy ¶4(a)(ii). Respondent is attempting to pass itself off as Complainant. The disputed domain name does not resolve to an active website. The failure to make use of a domain name in connection with an active website is not a bona fide offering of goods or services or a legitimate fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii).”). Using a domain name to host an email server to send out fraudulent emails does not constitute “using” the domain name for the purposes of the UDRP. Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial fair use under Policy ¶4(a)(ii).
Complainant provided a copy of email correspondence, which makes it rather clear Respondent is trying to pass itself off as Complainant to obtain funds fraudulently. Using a domain name as an email suffix constitutes evidence of a lack of rights and legitimate interests. In Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA 1550388 (Forum May 5, 2014), the panel found the respondent lacked rights and legitimate interests in the disputed domain name where the respondent used the domain name to send e-mails to various IT hardware suppliers in an attempt to impersonate the complainant and defraud the suppliers; see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Respondent’s use of the domain name to send fraudulent emails demonstrates a lack of rights and legitimate interests under Policy ¶4(a)(ii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent is using the disputed domain name to disrupt Complainant’s business by passing itself off as Complainant and therefore has registered and is using the disputed domain name in bad faith. When a Respondent is using a disputed domain name to engage in fraudulent behavior (such as impersonating Complainant), then Respondent has registered and is using the disputed domain name in bad faith. See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Respondent sent emails from <kevin.holleran@textron.net>, and tried to impersonate “Kevin Holleran”, one of Complainant’s employees to obtain funds from Complainant. Respondent’s fraudulent activities disrupt Complainant’s business. Respondent has registered and is using the disputed domain name in bad faith.
Complainant claims Respondent had actual knowledge of Complainant’s rights since Complainant has used the TEXTRON mark in connection with its business for more than 40 years prior to Respondent’s registration of the disputed domain name. Clearly Respondent had actual knowledge in light of the way Respondent used the disputed domain name (even impersonating a corporate officer). Respondent’s actual knowledge of Complainant’s rights constitutes bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Respondent clearly had actual knowledge of Complainant’s rights, leaving the Panel to conclude Respondent has registered and is using the disputed domain name in bad faith.
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 <textron.net> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, July 6, 2017
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