Westinghouse Electric Corporation v. Abhishek Mahindrakar
Claim Number: FA1709001749574
Complainant is Westinghouse Electric Corporation (“Complainant”), represented by Peter E. Kidd of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Abhishek Mahindrakar (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <georgewestinghouse.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 18, 2017; the Forum received payment on September 18, 2017.
On September 19, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <georgewestinghouse.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 September 20, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 10, 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@georgewestinghouse.com. Also on September 20, 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.
A timely Response was received on October 6, 2017.
On October 10, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
On October 11, 2017, Complainant’s timely additional submission was received.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant’s founder, George Westinghouse, was a pioneer in the electrical industry, and was inducted into the National Inventors Hall of Fame in 1989. Complainant now uses the WESTINGHOUSE mark to promote and offer its goods and services. Complainant registered the WESTINGHOUSE mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 888,963, registered Apr. 7, 1970). Respondent’s <georgewestinghouse.com> domain name is confusingly similar to Complainant’s WESTINGHOUSE mark because it adds the relevant term “george” to the beginning of the fully incorporated mark and appends the generic top-level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its mark in any fashion, and Respondent is not commonly known by the infringing domain name. Respondent is not using the <georgewestinghouse.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to create confusion in users seeking Complainant and resolves to a website which promotes and links to game hacking tools in order to get visitors to take online surveys or complete advertising offers.
Respondent registered and is using the disputed domain in bad faith. Respondent uses the domain name to attract Internet traffic and commercially benefit from the goodwill of the WESTINGHOUSE mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Respondent creates this confusion to promote illegal hacking activities. Finally, Respondent had actual knowledge of Complainant’s rights in its WESTINGHOUSE mark because the mark is internationally recognized and registered throughout the world.
B. Respondent
Respondent is a domain name reseller from India. Respondent bought this domain name at auction in February of 2017 and was unaware of Complainant and its rights in the WESTINGHOUSE mark.
Respondent consents to transfer the domain name in exchange for the purchase price and auction fees incurred for the purchase of the <georgewestinghouse.com> domain name.
C. Complainant’s Additional Submission
The Response is deficient under UDRP Rule 5(c) and should be treated as an informal email offering settlement, not as a UDRP Rule 5 Response.
Even if the Response were deemed proper under UDRP Rule 5, Respondent’s claims do not rebut Complainant’s claims that Respondent lacks a legitimate interest in the disputed domain name and registered and is using the domain name in bad faith.
All submissions were considered by the Panel.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <georgewestinghouse.com> domain name.
Complainant registered the WESTINGHOUSE mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 888,963, registered Apr. 7, 1970). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). 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).”). Accordingly, the Panel finds that Complainant has established rights in the WESTINGHOUSE mark.
Complainant next argues that Respondent’s <georgewestinghouse.com> domain name is confusingly similar to Complainant’s mark as it adds the relevant term “george” to the beginning of the fully incorporated mark and appends the gTLD “.com.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Complainant contends the confusing similarity is enhanced by the fact that Complainant’s founder was names “George Westinghouse.” The Panel finds that the <georgewestinghouse.com> domain name is confusingly similar to the WESTINGHOUSE mark under Policy ¶4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 asserts that Respondent has no rights or legitimate interests in the <georgewestinghouse.com> domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its WESTINGHOUSE mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. 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). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name especially where a privacy service has been engaged. A privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. The WHOIS information of record lists “Registration Private”, as the registrant prior to the lifting of the privacy service, and “Abhishek Mahindrakar” as the registrant after the service was lifted. Therefore, the Panel holds that Respondent is not commonly known by <georgewestinghouse.com> per Policy ¶ 4(c)(ii).
Complainant contends that Respondent is not using the <georgewestinghouse.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, <georgewestinghouse.com> resolves to a website which promotes and links to game hacking tools in order to get visitors to take online surveys or complete advertising offers. Using a domain name to promote and link to game hacking tools in order to get visitors to take online surveys or complete advertising offers is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See SNAP Inc. v. Contact Privacy Inc. Customer 0146764045 et al, D2017-0635 (WIPO May 29, 2017) (no rights or legitimate interests where hacking service offered to generate advertising revenue by getting users to complete an advertising survey, for respondent’s financial benefit); see also Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use… The Panel therefore finds that Respondent’s unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).”). Therefore, the Panel concludes that Respondent is not using <georgewestinghouse.com> in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use.
Complainant has proved this element.
Complainant also contends that Respondent’s use of the <georgewestinghouse.com> domain name to offer video game hacking tools amounts to illegal use and is evidence of Respondent’s bad faith. Use of a disputed domain name to promote illegal activity can be evidence of a respondent’s bad faith per Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin, FA 1502001605239 (Forum Mar. 22, 2015) (finding that use of a disputed domain name to aid illegal activities under Complainant’s trademark suggests Respondent’s bad faith); see also Twitter, Inc. v. Alvaro Martins / Domain Admin / Whois Privacy Corp., FA 1703001721606 (holding that use of the disputed domain name to offer instructions on how to hack a <twitter.com> account and offer hacking services is evidence of bad faith). The resolving webpage of the disputed domain name offers video game hacking tools. The Panel agrees that the offering of tools for hacking video games amounts to illegal activity and finds Respondent to have registered and used <georgewestinghouse.com> in bad faith per Policy ¶ 4(a)(iii).
Complainant asserts that its trademark registrations for the WESTINGHOUSE mark existed well before the registration of the disputed domain name. Complainant argues that Respondent therefore has actual knowledge of Complainant's rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, and use of the domain name, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <georgewestinghouse.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: October 17, 2017
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