Garrett Transportation I Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1904001837295
Complainant is Garrett Transportation I Inc. (“Complainant”), represented by Lauren B. Emerson of Leason Ellis LLP, New York, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <garettmotion.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 3, 2019; the Forum received payment on April 3, 2019.
On April 4, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <garettmotion.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 April 4, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 2019 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@garettmotion.com. Also on April 4, 2019, 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 April 25, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a leading developer of turbocharging, electric boosting, and automotive software solution technologies in the global transportation industry. Complainant has rights in the GARRETT mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,268,341, registered Feb. 21, 1984). See Compl. Annex A. Respondent’s <garettmotion.com> domain name is identical or confusingly similar to Complainant’s mark as it misspells Complainant’s mark by omitting the letter “r” while adding the term “motion,” which is part of Complainant’s New York Stock Exchange (“NYSE”) trading name.
Respondent has no rights or legitimate interests in the <garettmotion.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the domain name merely resolves to a webpage allowing for the download of the Chrome Web Store, which amounts to passive holding.
Respondent registered and uses the <garettmotion.com> domain name in bad faith. Respondent fails to make an active use of the resolving webpage associated with the domain name. Further, Respondent registered the domain name only two weeks after Honeywell publicly announced that the spinoff of Complainant’s stock exchange had been completed. See Compl. Annex D. Finally, Complainant’s longstanding use and recognition of the GARRETT mark, coupled with the influx of news coverage concerning Complainant at the time Respondent registered the domain name, evidences Respondent’s bad faith. Id.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 5,182,079 GARRETT (word), registered April 11, 2017 for goods in class 7;
No. 1,291,846 GARRETT (word), registered August 28, 1984 for goods in class 7;
No. 1,289,822 GARRETT (word), registered August 14, 1984 for goods in classes 7 and 11;
No. 1,272,612 GARRETT (word), registered April 3, 1984 for goods in class 12;
No. 1,268,815 GARRETT (word), registered February 28, 1984 for services in class 42, and
No. 1,268,341 GARRETT (word), registered February 21, 1984 for services in classes 37 and 42.
Respondent registered the <garettmotion.com> domain name on October 15, 2018.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the GARRETT trademark through its registration of the trademark with the USPTO (e.g. Reg. No. 1,268,341, registered Feb. 21, 1984). Registration of a trademark with the USPTO sufficiently confers a complainant’s rights in a trademark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the GARRETT trademark for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <garettmotion.com> domain name is identical or confusingly similar to Complainant’s trademark as it misspells Complainant’s trademark by omitting the letter “r” while adding the term “motion,” which is part of Complainant’s NYSE trading name. The Panel also sees that the domain name adds the “.com” generic top-level domain (“gTLD”) and find that similar changes in a registered trademark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”). The Panel therefore finds that the <garettmotion.com> domain name is confusingly similar to the GARRETT trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the <garettmotion.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the trademark. Relevant information includes the WHOIS, assertions by a complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS in the present case identifies “Carolina Rodrigues / Fundacion Comercio Electronico” as the registrant, and nothing in the record indicates that Complainant authorized Respondent to use the trademark for any purpose. Accordingly, the Panel agrees that Respondent is not commonly known by the <garettmotion.com> domain name under Policy ¶ 4(c)(ii).
Further, Complainant argues that the domain name merely resolves to a webpage allowing for the download of the Chrome Web Store, which amounts to passive holding. Failure to make active use of a confusingly similar domain name can evince a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). The Panel notes that Complainant does not provide any evidence to show that the domain name is passively hold in that specific way. On the other hand, the Respondent has not filed any comments contradicting Complainant’s statement. As such, the Panel accepts Complainant’s statement, and finds that Respondent’s failure to use the disputed domain name provides evidence of Respondent’s lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and/or (iii).
As noted by the Complainant, the examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which bad faith may be found. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See, e.g., Match.com, LP v. BillZag and NWLAWS.ORG, D2004-0230 (WIPO June 2, 2004). While Complainant has not made any arguments that would fit within the bounds of Policy ¶ 4(b) elements, the Panel accept the Complainant’s general statement and consider Respondent’s actions under a nonexclusive inquiry of Policy ¶ 4(a)(iii).
Complainant argues that Respondent fails to make an active use of the resolving webpage associated with the domain name. Inactively holding a confusingly similar domain name can evince 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).”). As noted above, the Respondent has not filed any comments contradicting Complainant’s statement. The Panel therefore holds that Respondent’s failure to use the domain name demonstrates Respondent’s bad faith under the Policy.
Next, Complainant claims that Respondent registered the domain name only two weeks after Honeywell publicly announced that the spin-off of Complainant’s stock exchange had been completed. A finding of opportunistic bad faith, where a respondent registers a confusingly similar domain name shortly after a major event or announcement, can support a finding of bad faith under Policy ¶ 4(a)(iii). See Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA1504001613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the disputed domain name just one week after the complainant filed applications to register the SUB DEVIL LIFE mark, and just days after those applications became public through the USPTO’s website). Complainant provides a screenshot of its website, which shows a press release from October 1, 2018 titled “Garrett Rings in New Era as Independent Company, Begins Trading on New York Stock Exchange.” The Panel notes that Respondent registered the <garettmotion.com> domain name only 14 days thereafter, namely on October 15, 2018. As such, the Panel finds that Respondent opportunistically registered the domain name in bad faith under Policy ¶ 4(a)(iii).
Further, Complainant argues that Complainant’s longstanding use and recognition of the GARRETT trademark, coupled with the influx of news coverage concerning Complainant at the time Respondent registered the domain name, evidences Respondent’s bad faith. Complainant here appears to argue that Respondent had actual knowledge of Complainant’s GARRETT trademark at the time Respondent registered the domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Accordingly, the Panel agree with Complainant and find that Respondent did have actual knowledge of Complainant’s trademark at the time it registered the <garettmotion.com> domain name, demonstrating bad faith registration under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <garettmotion.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: April 26, 2019
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