Navistar International Corporation v. Jose Luis Sanchez
Claim Number: FA2103001938146
Complainant is Navistar International Corporation (“Complainant”), represented by Jack Nimz, Illinois, USA. Respondent is Jose Luis Sanchez (“Respondent”), México.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trucksnavistarinc.com>, registered with Wix.Com Ltd.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 26, 2021; the Forum received payment on April 5, 2021. The Complaint was received in English.
On April 5, 2021, Wix.Com Ltd. confirmed by e-mail to the Forum that the <trucksnavistarinc.com> domain name is registered with Wix.Com Ltd. and that Respondent is the current registrant of the name. Wix.Com Ltd. has verified that Respondent is bound by the Wix.Com Ltd. 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 12, 2021, the Forum served the English language Complaint and all Annexes, including a Spanish and English Written Notice of the Complaint, setting a deadline of May 3, 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@trucksnavistarinc.com. Also on April 12, 2021, the Spanish and English 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 May 6, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The Panel notes that the Registration Agreement for the disputed domain name is written in Spanish, thereby initially making this the language of the proceedings pursuant to Rule 11(a). However, Complainant requests that this Panel exercise its discretion, under Rules 10(b) and (c) and determine that English be the language of the proceedings. In favor of its request, the Panel notes that the disputed domain name is comprised, in large part, of the NAVISTAR mark preceded by the word “trucks” which does not carry any meaning in the Spanish language. Further, Complainant notes that “Respondent’s infringing website is in the English language” and that this is used to perpetrate fraud on Complainant’s customers. Finally, the Forum has provided notice of this case to the Respondent in both Spanish and English, yet the Respondent has not provided a Response or made any other submission in this case. In light of the above-mentioned circumstances and the delay and further expense that would be caused from requiring that Complainant to submit documents in Spanish, the Panel determines that the remainder of these proceedings may be conducted in English without prejudice to the Respondent.
A. Complainant
Complainant, Navistar International Corporation, is a holding company for the world’s leading companies in truck development. It produces commercial and military trucks, diesel engines, as well as school and commercial buses. Complainant has rights in the trademark NAVISTAR based on registration of the mark with a number of national trademark offices around the world dating back to 1988. Respondent’s <trucksnavistarinc.com> domain name, registered on March 3, 2021, is confusingly similar to Complainant’s NAVISTAR mark because it fully incorporates the mark preceded by the descriptive term “trucks” and followed by the term “inc,” which relates to Complainant’s business name.
Respondent does not have rights or legitimate interests in the <trucksnavistarinc.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted Respondent to use the NAVISTAR mark. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services. Instead, Respondent uses the domain to divert users to Respondent’s website where it passes itself of as Complainant and seeks to solicit payments from visitors to the website.
Respondent registered and uses the <trucksnavistarinc.com> domain name in bad faith. Respondent uses the disputed domain name to pass itself off as Complainant in order to attract consumers and solicit payments from Complainant’s customers.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
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 and evidence 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 and supported 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 asserts rights in the NAVISTAR mark based on registration of the mark with a number of national trademark offices. Registration of a mark with the USPTO is a valid showing of rights in a mark. See Margaritaville Enterprises, LLC v. Neil Wein, FA 1916531 (Forum Nov. 9, 2020) (“It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights”). Complainant provides extensive lists of its registration numbers for the NAVISTAR mark and the Panelist has confirmed a sufficient number of these to accept the validity of Complainant’s assertion.[i] Thus, the Panel finds that Complainant has rights in the NAVISTAR mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <trucksnavistarinc.com> domain name is confusingly similar to Complainant’s NAVISTAR mark because it fully incorporates the mark and adds the descriptive preceding term “trucks” as well as the suffix “inc,” which relates to Complainant’s business name. The addition of generic or descriptive terms to a mark typically does not negate any confusing similarity between a disputed domain name and a mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). Thus, the Panel finds that the disputed domain name is confusingly similar to the NAVISTAR 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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 does not have rights or legitimate interests in the <trucksnavistarinc.com> domain name as Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted Respondent to use the NAVISTAR mark. In considering this issue, WHOIS information may be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (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)). Additionally, lack of a license or other permission to use a mark may further support a claim that a respondent lacks rights in a mark. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.) Here, the WHOIS information identifies the registrant as “Jose Luis Sanchez” and nothing suggests that Respondent is known otherwise or that Complainant has authorized Respondent to use the NAVISTAR mark in any way. As Respondent is not filed a Response or made any other submission in this case, the Panel finds no evidence that Respondent is commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services and instead uses the domain name to divert users to Respondent’s website where it passes itself of as Complainant. Use of a disputed domain name to pass oneself off as a complainant and divert users away from a complainant’s website to a respondent’s own websites is not a bona fide offering of goods or services. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”) Here, Complainant submits emails that detail Respondent’s use of the <trucksnavistarinc.com> website to solicit orders for trucks from Complainant’s customers. The website contains Complainant’s logo, a video promoting its products, images of various truck models, and other elaborate and professional text and graphics such that it appears to be a legitimate website for Complainant. When a customer contacts the Respondent, at the phone number listed on the site, it is asked to make a down-payment of approximately 186,000 Mexican Pesos (about USD $9,350) and arrangements are then made for the customer to take delivery of the purchased truck and pay the balance due. However, when the customer arrives at the designated location, one of Complainant’s actual dealerships, the personnel there have no record of the transaction and Respondent no longer answers its phone.
Based upon the assertions and evidence presented by Complainant, and Respondent’s lack of participation in this case, the Panel finds that Complainant has made an unrebutted prima facie case. By a preponderance of the available evidence, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor is it making a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
With respect to Respondent’s prior knowledge of Complainant’s marks, the Complaint asserts that, “[a]s a result of Navistar’s long and extensive use of its NAVISTAR mark, as well as the substantial sums Navistar has spent in advertising and promoting goods and services under the mark, the NAVISTAR mark has become well-known … ” In support, Complainant submits screenshots from its own <navistar.com> website and its 2020 Annual Report showing its sales data. Furthermore, Respondent’s own website, whose content relates almost exclusively to Complainant and its branded trucks, it is quite clear that Respondent had actual knowledge of the NAVISTAR mark and was specifically targeting them by registering the disputed domain name.
Next, Complainant argues that Respondent registered and uses the <trucksnavistarinc.com> domain name in bad faith because “Respondent uses the Infringing Domain Name to solicit payments from visitors to the website of the Infringing Domain Name for trucks which Respondent has no intention of delivering.” Under Policy ¶ 4(b)(iv), the use of a disputed domain name to pass oneself off as a complainant in furtherance of fraud or a phishing scheme is evidence of bad faith. See Amazon Technologies, Inc. v. jaskima smith, FA 1750160 (Forum Oct. 26, 2017) (finding the respondent registered and used the disputed domain name in bad faith to pass off as the complainant in an attempt to gain personal information from users who mistakenly access the website); see also Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Complainant contends that Respondent uses the disputed domain name to confuse would-be purchasers of NAVISTAR trucks and it provides copies of emails which the details of Respondent’s scheme are discussed. Respondent uses the <trucksnavistarinc.com> website to solicit orders for trucks, takes a deposit of a significant amount of funds from the customer, and then never delivers the promised truck. Respondent has submitted no statement or evidence in this case to explain its actions and so, by a preponderance of the evidence before it, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <trucksnavistarinc.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: May 10, 2021
[i] Complainant submits lists of its trademark registrations but it does not submit copies of any registration certificates. However, under the Panel’s authority to review publicly available records, it has reviewed the databases of certain of the listed national trademark offices and is satisfied that Complainant owns registrations sufficient to satisfy Policy ¶ 4(a)(i).
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