Garrett Transportation I Inc. v. Oriani / himaa llc
Claim Number: FA2102001933404
Complainant is Garrett Transportation I Inc. (“Complainant”), represented by Lauren Beth Emerson of Leason Ellis LLP, New York, USA. Respondent is Oriani / himaa llc (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <garrettrnotion.com>, registered with NameCheap, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 24, 2021; the Forum received payment on February 24, 2021.
On February 25, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <garrettrnotion.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 March 1, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2021 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@garrettrnotion.com. Also on March 1, 2021, 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 29, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant develops and manufactures various automobile software in the global transportation industry. Complainant has rights in the GARRETT mark through its registration with numerous trademark agencies throughout the world (e.g. Canadian Intellectual Property Office (‘CIPO”) Reg. TMA587,847, registered Aug. 22, 2003; United States Patent and Trademark Office (“USPTO”) Reg. 1,291,846, registered Aug. 28, 1984). The disputed domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the misspelled word/letter sequence “r-n-otion” along with the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its GARRETT mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead hosts parked pay-per-click links on the resolving website.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by hosting parked pay-per-click links on the disputed domain name’s resolving website. The use of the virtually identical “garrettrnotion” in the disputed domain name is an obvious instance of typo-squatting.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on November 17, 2020.
2. Complainant has established rights in the GARRETT mark through its registration with numerous trademark agencies throughout the world (e.g. Canadian Intellectual Property Office (‘CIPO”) Reg. TMA587,847, registered Aug. 22, 2003; United States Patent and Trademark Office (“USPTO”) Reg. 1,291,846, registered Aug. 28, 1984).
3. The disputed domain name’s resolving website features parked pay-per-click links for similar and unrelated services as Complainant’s.
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 mark through its registration with numerous trademark agencies throughout the world (e.g. CIPO Reg. TMA587,847, registered Aug. 22, 2003; USPTO Reg. 1,291,846, registered Aug. 28, 1984). Registration with multiple trademark agencies is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See THE TORONTO-DOMINION BANK v. Lhhon Hoy / Kathleen Kim / Grt Fyo / Leon Ho, FA 1724017 (Forum May 17, 2017) (finding registrations with the USPTO and CIPO are satisfactory demonstrations of Policy ¶ 4(a)(i) rights). Therefore, the Panel finds Complainant has established rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is identical or confusingly similar to the GARRETT mark. Under Policy ¶ 4(a)(i), adding additional letters and generic words related to a Complainant’s business and the “.com” gTLD to a Complainant’s mark, or incorporating a slightly misspelled version of a Complainant’s mark generally renders a disputed domain name identical or confusingly similar to the mark it incorporates. See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.); see also Wiluna Holdings, LLC v. Zhichao Yang, FA 1780211 (Forum May 3, 2018) (“Additionally, each at-issue domain name contains a misspelling or misprint of Complainant’s CLIPS4SALE and CLIPS4SALE.COM trademarks where an extra letter is added to the marks in forming the domain name. Further, there is no doubt that Respondent picked the at-issue domain names precisely because they are easily confused with Complainant trademarks and Complainant’s trademarked <clips4sale.com> website.”). The disputed domain name incorporates Complainant’s GARRETT mark in its entirety and adds the lowercase letters “r” and “n”, followed by the “otion” sequence of letters to give the appearance of the word “motion”, which Complainant argues is a word in the mark of its parent company, GARRETT MOTION. The disputed domain name also adds the “.com” gTLD to the end of the mark. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s GARRETT mark under Policy ¶ 4(a)(i).
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 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 argues that Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its GARRETT mark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name, while lack of evidence demonstrating otherwise may establish that Complainant never authorized Respondent to use its mark in the disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The WHOIS of record identifies Respondent as “Oriani”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its GARRETT mark in the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to host competing and/or unrelated hyperlinks is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant provides a screenshot of the disputed domain name’s resolving website, which features parked pay-per-click links for similar and unrelated services as Complainant’s. Therefore, the Panel finds Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and uses the disputed domain name for bad faith disruption for commercial gain. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to resolve to a website with parked pay-per-click links of competing or unrelated services may demonstrate bad faith disruption for commercial gain. See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”); see also Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)). The Panel recalls Complainant’s screenshots of the disputed domain name’s resolving website, which features similar and unrelated hyperlinks. Therefore, the Panel finds Respondent registered and uses the disputed domain name for bad faith disruption for commercial gain under Policy ¶¶ 4(b)(iii) and (iv).
Complainant also argues that Respondent’s bad faith is evidenced by its typo-squatting with the disputed domain name. Under Policy ¶ 4(a)(iii), registering a disputed domain name with slight typographical differences to divert Internet users who misspell the mark or official domain name may be considered bad faith typo-squatting under Policy ¶ 4(a)(iii). See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)). Complainant contends that Respondent registered the disputed domain name for typo-squatting purposes by taking Complainant’s GARRETT mark, adding the word “motion” to form the mark of Complainant’s parent company, and slightly misspelling the word by replacing the “m” with the letters “r” and “n”. The Panel finds Respondent registered and uses the disputed domain name in bad faith 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 <garrettrnotion.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: April 7, 2021
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