Delphi Technologies IP Limited v. Nette, Nanci
Claim Number: FA2206002002288
Complainant is Delphi Technologies IP Limited (“Complainant”), represented by Thad Chaloemtiarana of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is Nette, Nanci (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <delphiauto.net>, registered with Network Solutions, LLC.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 28, 2022; the Forum received payment on June 28, 2022.
On July 7, 2022, Network Solutions, LLC confirmed by e-mail to the Forum that the <delphiauto.net> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 July 7, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 2022, 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@delphiauto.net. Also on July 7, 2022, 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.
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, Delphi Technologies IP Limited, operates as a global aftermarket business providing automotive solutions. Complainant claims rights in the DELPHI mark through its registration with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”)(e.g., Reg. No. 2,436,360, registered Jan. 14, 1997). Respondent’s <delphiauto.net> domain name is identical or confusingly similar to Complainant’s DELPHI mark as it incorporates the mark in whole, along with the descriptive term “auto” and the “.net” generic top-level domain (“gTLD”) to form.
Respondent lacks rights or legitimate interests in the <delphiauto.net> domain name. Respondent is not commonly known by the disputed domain name. Respondent does not use the domain name in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Rather, Respondent uses the disputed domain name’s resolving page to seek pay per click revenue. Additionally, Respondent inactively holds the disputed domain name.
Respondent registered and uses the <delphiauto.net> domain name in bad faith. Respondent has engaged in a pattern of bad faith registrations. Moreover, Respondent uses the confusingly similar nature of the disputed domain name to attract users to a website that displays hyperlinks for commercial gain. Moreover, the incorporation of Complainant’s well-known mark in the disputed domain name generates initial interest confusion.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <delphiauto.net> domain name.
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 DELPHI mark through its registration with multiple trademark agencies, including the USPTO (e.g., Reg. No. 2,436,360, registered Jan. 14, 1997). Registration with multiple trademark agencies is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). The Panel finds that Complainant has rights in the DELPHI mark under Policy ¶ 4(a)(i) based on its registration with multiple trademark agencies.
Complainant argues that Respondent’s <delphiauto.net> domain name is identical or confusingly similar to Complainant’s DELPHI mark. Under Policy ¶ 4(a)(i), incorporating a mark in its entirety, and adding a descriptive term, is generally not sufficient in distinguishing a domain name from a protected mark. 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.”). Further, the addition of generic top-level domain name is irrelevant when considering whether a disputed domain name is identical or confusingly similar to a protected mark. See Textron Innovations Inc. v. Textron Sistemi di Fissaggio srl, Fa 1732602 (Forum July 6, 2017) (holding that “Respondent’s <textron.net> is identical to Complainant’s TEXTRON mark.”). Respondent’s <delphiauto.net> domain name incorporates the DELPHI mark in whole, along with the descriptive term “auto” and the “.net” gTLD. Additionally, the term “auto” is arguably descriptive of Complainant’s services in the auto industry. The Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark pursuant to 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), 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”). The Panel finds that Complainant has made a prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <delphiauto.net> domain name because Respondent is not commonly known by the disputed domain name, Complainant’s prior rights in the mark precede Respondents registration, and Complainant has not authorized or licensed to Respondent any rights in the DELPHI mark. Information that reveals that a registrant’s name is materially different from the disputed domain name may be used to determine that a respondent is not commonly known by a disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Further, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information and other information on the record lists the registrant for the disputed domain name as “Nanci Nette.” Additionally, there is no evidence to suggest that Respondent was authorized to use the DELPHI mark. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <delphiauto.net> domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. A respondent’s use of a disputed domain name’s resolving website to host hyperlinks to third party-sites in order to generate pay-per-click revenue generally does not qualify as either a bona fide offering of goods and services, nor is it a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). 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). Respondent uses the landing page for the <delphiauto.net> domain name to seek pay-per-click revenue from links to third-party sites. The Panel finds that Respondent does not use the <delphiauto.net> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent does not use the <delphiauto.net> domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. Failure to make active use a domain name generally does not qualify as either a bona fide offer, nor is it a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”). Complainant has attached screenshots of the resolving website for the <delphiauto.net> domain name, which does not resolve to an active website. The Panel finds that Respondent does not use the <delphiauto.net> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(i) and (iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues that Respondent has engaged in a pattern of bad faith registrations that infringe on third party marks. Pursuant to Policy ¶ 4(b)(ii), a pattern of bad faith registrations may be demonstrated by past adverse UDRP decisions. See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). The Respondent, Nanci Nette, has been subject to numerous UDRP decisions ordering the transfer of domain names registered by Respondent. Other Panels have noted that “Respondent’s long history of registering well-known trademarks as domain names and involvement in numerous UDRP proceedings requiring transfer of those domain names is itself strong evidence that Respondent is engaging in bad faith registration and use of the Infringing Domain Name in this proceeding.” See Untitled Entertainment, Inc. v. Nancy Nette, FA1804001782023 (Forum May 14, 2018). The Panel finds that Respondent has engaged in a pattern of bad faith registration that infringe on third party marks.
Complainant contends that Respondent uses its DELPHI mark in the <delphiauto.net> domain name in bad faith, financially benefitting from the confusing similarity between the domain name and Complainant’s mark. A respondent’s use of a domain name that is obviously connected to a complainant’s well-known mark, and redirects users to pay-per-click hyperlinks, indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”); see also Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”). Respondent’s registered domain name incorporates the entirety of Complainant’s DELPHI mark to deceive users with a false impression of affiliation with Complainant, and potentially financially benefits from the confusion by hosting pay-per-click hyperlinks The Panel finds that Respondent uses the <delphiauto.net> domain name with intent to divert Internet users for commercial benefit in bad faith pursuant to Policy ¶ 4(b)(iv) and Respondent registered and uses the domain name in bad faith.
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 <delphiauto.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
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