Omnitracs, LLC v. kel mac / null
Claim Number: FA1710001755651
Complainant is Omnitracs, LLC (“Complainant”), represented by Diana S. Bae of Arent Fox LLP, District of Columbia, USA. Respondent is kel mac / null (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <omnltracs.com>, registered with Tucows Domains Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 25, 2017; the Forum received payment on October 25, 2017.
On Oct 25, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <omnltracs.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 October 30, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 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@omnltracs.com. Also on October 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 November 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Omnitracs, LLC, is a leading provider of fleet management, routing, and predictive analytics solutions for private and for-hire fleets, and has used the OMNITRACS mark in connection with such solutions since at least as early as May 1988. Complainant has rights in the OMNITRACS mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,539,151, registered May 16, 1989). Respondent’s <omnltracs.com> is confusingly similar to Complainant’s OMNITRACS mark, as the domain name consists entirely of the mark, merely replacing the letter “i” in the mark with the letter “l”—which is visually similar—and adding the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <omnltracs.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the OMNITRACS mark in any manner. Respondent’s domain name does not resolve to an active website, which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and is using the <omnltracs.com> domain name in bad faith. Respondent’s registration of a domain name which is nearly identical to a well-known mark indicates its bad faith. Respondent’s failure to use the domain is further evidence of bad faith. Finally, Respondent’s typosquatting behavior is independent evidence of bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Omnitracs, LLC, of Dallas, TX, USA. Complainant is the owner of domestic registrations for the mark OMNITRACS, which it has used continuously since at least as early as 1988, in connection with its provision of mobile communication goods and services used in the development and maintenance of data for fleet management processes.
Respondent is kel mac / null of Pine Island, MN, USA. Respondent’s registrar’s address is listed as Toronto, Canada. The Panel notes that the disputed domain name was created on or about November 1, 2016
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(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 OMNITRACS mark based upon registration of the mark with the USPTO (e.g. Reg. No. 1,539,151, registered May 16, 1989). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel here finds that Complainant’s registration of the OMNITRACS mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <omnltracs.com> domain name is confusingly similar to the OMNITRACS mark, as the name consists entirely of the mark, merely replacing the letter “i” in the mark with the letter “l”—which is visually similar—and adding the “.com” gTLD. The change of a letter in a mark and addition of a gTLD does not distinguish a resultant domain name from a protected under Policy ¶ 4(a)(i). See Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (finding, “The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”). Complainant contends the confusion is enhanced by the fact that the resultant domain name is visually similar to the mark. A domain name which is visually similar to a mark can further support a finding of confusing similarity per Policy ¶ 4(a)(i). See Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating, “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”). The Panel here finds that the <omnltracs.com> domain name is confusingly similar to the OMNITRACS mark.
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that 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), 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 (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). Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interests in <omnltracs.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the OMNITRACS mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The Panel notes that a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. As a result, the WHOIS information of record identifies Respondent as “kel mac / null.” Additionally, lack of evidence in the record to indicate that the respondent was authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a 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). The Panel here finds that Respondent has not been commonly known by the disputed domain name under Policy ¶ 4(c)(ii)
Complainant further argues Respondent’s lack of rights or legitimate interests in the <omnltracs.com> domain name is demonstrated by its failure to make an active use of the domain name. Inactive holding of a domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Complaiant includes a screenshot which shows that the domain name does not resolve to any active webpage. The Panel here finds that Respondent lacks rights and legitimate interests in the <omnltracs.com> domain name.
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant does not specifically address any of the factors of bad faith under Policy ¶ 4(b). However, past panels have held that the factors in Policy ¶ 4(b) are non-exclusive, and that bad faith can be determined from a “totality of the circumstances” under Policy ¶ 4(a)(iii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also 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.”). Accordingly, the Panel looks to arguments beyond Policy ¶ 4(b) for evidence of bad faith.
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the OMNITRACS mark. Complainant argues that Complainant’s pre-existing trademark registrations, along with the fame and notoriety of the mark indicate that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel here finds that Respondent had actual knowledge of Complainant's mark and rights and therefore Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant asserts that Respondent’s failure to use the <omnltracs.com> domain name is evidence of its bad faith. Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel again notes Complainant’s contention, and supporting screen shots, indicating that the domain name does not resolve to an active website. The Panel here finds that Respondent’s inactive holding of the domain name to be evidence of its bad faith per Policy ¶ 4(a)(iii).
Complainant
contends Respondent’s <omnltracs.com>
domain name is a typosquatted version of the OMNITRACS mark, and is
itself evidence of Respondent’s bad faith. Typosquatting is an attempt to take
advantage of Internet users’ typographical errors, and can be independent
evidence of bad faith per Policy ¶ 4(a)(iii). See Homer TLC, Inc. v. Artem
Ponomarev, FA1506001623825 (Forum
July 20, 2015) (“Finally, under this head of the Policy, it is evident that the
<homededpot.com> domain name is an instance of typosquatting, which is
the deliberate misspelling of the mark of another in a domain name, done to
take advantage of common typing errors made by Internet users in entering into
a web browser the name of an enterprise with which they would like to do
business online. Typosquatting is independent evidence of bad faith in the
registration and use of a domain name.”). Complainant points out that the
domain name differs from the mark by only one letter, which results in visual
similarity. The Panel here finds that Respondent’s actions constitute typosquatting,
and thus support a conclusion that Respondent registered and used the disputed
domain name in bad faith per Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
DECISION
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <omnltracs.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 11, 2017
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