Garrett Transportation I Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2102001933405
Complainant is Garrett Transportation I Inc. (“Complainant”), represented by Lauren Beth 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 <garretmotion.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 February 24, 2021; the Forum received payment on February 24, 2021.
On February 25, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <garretmotion.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 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@garretmotion.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 26, 2021, 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 developer of turbocharging, electric boosting, and automotive software solution technologies in the global transportation industry. Complainant maintains registration in the GARRETT trademark with the United States Patent and Trademark Office (USPTO) (e.g. Reg. No. 1,291,846, registered on Aug. 28, 1984).
The Disputed Domain Name, <garretmotion.com>, is identical or confusingly similar to the GARRETT trademark because it wholly incorporates the trademark and is identical to Complainant’s trade name “Garrett Motion”, aside from the deletion of a letter “t”, to a generic top-level domain (“gTLD”), “.com”.
Respondent does not have any rights or legitimate interests in the Disputed Domain Name because Respondent is not commonly known by the Disputed Domain Name and has not been permitted or authorized to use the GARRETT trademark. Respondent is also not making a bona fide offering of goods or services nor is using <garretmotion.com> for a legitimate noncommercial or fair use because Respondent is using the Disputed Domain Name resolving it to a malware distribution site.
Respondent registered or is using the Disputed Domain Name in bad faith because of the use of the Disputed Domain Name to host a malware distribution site. Further bad faith is shown through the typosquatting behavior where the Disputed Domain Name removes a letter from Complainant’s trademark.
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.
The disputed domain name <garretmotion.com> was registered on February 28, 2020.
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”).
The Complainant claims rights in the GARRETT trademark through its registration with the USPTO. Regsitration of a trademark with the USPTO is sufficient to show that a complainant has rights in that trademark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides evidence of its registration with the USPTO (e.g. Reg. No. 1,291,846. Registered on Aug. 28, 1984). Therefore, the Panel find that the Complainant has rights in the GARRETT trademark under Policy ¶ 4(a)(i).
The Complainant argues that the <garretmotion.com> domain name is identical or confusingly similar to the GARRETT trademark because it incorporates both Complianant’s GARRETT trademark and its trade name, “Garrett Motion”, despite the deletion of a letter, and the addition of a gTLD. The deletion of a letter does not limit the confusingly similairity between a disputed domain name and a complainant’s trademark under Policy ¶ 4(a)(i). See Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018) (“Respondent’s <morganstanle.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and spacing within the mark, and appends the ‘.com’ gTLD.”). In this case, the Panel notes that the Disputed Domain Name includes Complainant’s GARRETT trademark, although with a minor misspelling by deleting a letter “t” from “garrett”. However, this minor amendment makes no difference, and the Panel finds that the Disputed Domain Name is confusingly similar 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 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.”); see also 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).
The Complainant first argues that Respondent is not commonly known by the <garretmotion.com> domain name and that Complainant has not granted authorization to Respondent to use the GARRETT trademark. A respondent may be found not to be commonly known by a disputed domain name, under Policy ¶ 4(c)(ii), where the respondent incorporates a well-known mark of a complainant and the complainant did not authorize the respondent to us the complainant’s marks. See Chevron Intellectual Property LLC v. CHLEO TEMPLE, FA 1731844 (Forum June 16, 2017) (acknowledging the likelihood of a respondent’s lack of legitimate interests in a disputed domain name when the name incorporates a famous mark belonging to another entity). Here, Complainant asserts that is has not authorized Respondent to use the GARRETT trademark or any variant thereof. Additionally, the WHOIS information of record lists the registrant as “Carolina Rodrigues / Fundacion Comercio Electronico.” Therefore, the Panel finds that Respondent is not commonly known by the Disputed Domain Name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent is not using the Disputed Domain Name for a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because <garretmotion.com> is being used to host a malware distribution site. A domain name is definitely not being used to make a bona fide offering of goods or services, nor making a legitimate noncommercial or fair use, under Policy ¶¶ 4(c)(i) and (iii), where the disputed domain name redirects users to a website that attempts to install malicious software. See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”). The Panel notes, that when users try to access the webpage associated with the Disputed Domain Name, a message pops up that states, “The page you are trying to access contains malware”. Thus, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor a making a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel find that while Complainant has not made arguments under Policy ¶ 4(b), such arguments are not required under the Policy - so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Bloomberg Finance L.P. v. Nikita A Paskhalnyy / Private Person, FA 1638757 (Forum Nov. 5, 2015) (the panel noting that Policy ¶ 4(b) factors “are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated under the totality of the circumstances”). The Panel therefore find that Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to establish bad faith.
The Complainant first argues that Respondent registered the <garretmotion.com> domain name in bad faith because of the use of the Disputed Domain Name to host a webpage that distributes malicious software. Bad faith use, under Policy ¶ 4(a)(iii), may be found where the resulting website is used to distribute malicious software. See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”). Here, Complainant’s screenshot of the resulting website suggests that the webpage contains malicious software. Therefore, the Panel finds that the <garretmotion.com> domain name was registered in bad faith, under Policy ¶ 4(a)(iii) because the resulting webpage malicious software.
Complainant next argues that Respondent registered the Disputed Domain Name in bad faith because the Respondent is engaged in typosquatting. Bad faith registration may be found where the respondent introduces typographical errors or misspellings into a trademark hoping that users will inadvertently type the misspelled trademark redirecting users to the confusingly similar domain. See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name”.). Here, Respondent removed a letter “t” from the Complainant’s GARRETT trademark. Respondent was obviously hoping that users would mistype, by omitting a “t” in the Complainant’s trademark and stumble on Respondent’s website that hosted malware. Thus, the Panel finds bad faith registration, under Policy ¶ 4(a)(iii), due to this typosquatting activity.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <garretmotion.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: March 30, 2021
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