BorgWarner Inc. v. Catherine Wood / BorgWarner Inc
Claim Number: FA2212002023081
Complainant is BorgWarner Inc. (“Complainant”), represented by Thad Chaloemtiarana of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is Catherine Wood / BorgWarner Inc (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <borgwarner.us>, 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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to Forum electronically on December 7, 2022; Forum received payment on December 7, 2022.
On December 7, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <borgwarner.us> domain name (the 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 9, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of December 29, 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@borgwarner.us. Also on December 9, 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, Forum transmitted to the parties a Notification of Respondent Default.
On January 3, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a Response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant manufactures and distributes automotive parts. It has rights in the BORGWARNER mark based upon its registration of that mark with, among others, the United States Patent and Trademark Office (“USPTO”). Respondent’s <borgwarner.us> Domain Name is confusingly similar to Complainant’s mark as it wholly incorporates the mark, merely adding the “.us” country code top-level-domain (“ccTLD”).
Respondent has no rights or legitimate interests in the Domain Name. It is not affiliated or associated with Complainant and Complainant has not authorized, licensed, or otherwise permitted Respondent to use the mark, Respondent is not commonly known by the Domain Name, and Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use but instead uses it for fraudulent emails impersonating Complainant and for a landing page which features pay-per-click links.
Respondent registered or uses the Domain Name in bad faith. It uses the Domain Name to send fraudulent emails impersonating Complainant and for a landing page which features pay-per-click links. Respondent had constructive and actual knowledge of Complainant’s rights in the BORGWARNER mark when it registered the Domain Name.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision, except where differences in the policies require a different analysis.
In view of Respondent's failure to submit a Response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”); WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The BORGWARNER mark was registered to Complainant with the USPTO (Reg. No. 1,414,891) on October 28, 1986 (USPTO registration certificate included in Complaint Exhibit C). Complainant’s registration of its mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). 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.”); Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <borgwarner.us> Domain Name is confusingly similar to Complainant’s BORGWARNER mark as it wholly incorporates the mark, merely adding “.us” ccTLD. This change does not distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Bittrex, Inc. v. HOUSNTA BENSLEM, FA 1760232 (Forum Jan. 3, 2018) (“[S]ince the disputed domain name differs from the trademark only by the addition of the gTLD “.com” the Panel finds the domain name to be legally identical to the trademark.”). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the BORGWARNER mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following four nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) The respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name;
(ii) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(iii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iv) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) it is not affiliated or connected with Complainant and Complainant has not authorized it to use its mark, (ii) Respondent is not commonly known by the Domain Name, and (iii) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use but instead uses it for fraudulent emails impersonating Complainant and for a landing page which features pay-per-click links. These allegations are addressed as follows:
Complainant does not address or offer any evidence bearing upon the Policy ¶ 4(c)(i) factor. Complainants in usTLD cases can search one or more governmental trademark authorities and report negative results to establish a prima facie case as to Policy ¶ 4(c)(i). Complainant here offered no such evidence. Nevertheless, while it would have been preferable for Complainant to offer evidence bearing specifically upon this element, the evidence that is available is sufficient to establish that Respondent is not the owner or beneficiary of a trade or service mark identical to the Domain Name. The USPTO registration certificate demonstrating Complainant’s rights in the BORGWARNER mark (Complaint Exhibit C) evidences its rights in that mark dating from at least as early as the 1928 first use date shown on that document. Further, the Complainant is a major auto parts manufacturer, and its mark is known throughout the world (list of countries in which its mark is registered submitted as Complaint Exhibit D). It is extremely unlikely that the USPTO or any other governmental trademark authority would register a trademark identical to <borgwarner.us> or any other mark identical or similar to the Domain Name in the name of any person other than Complainant or one of its affiliates, or that Respondent could be the owner or beneficiary of a valid common law trade or service mark identical to the Domain Name. On this evidence, and in the absence of any evidence to the contrary, the Panel finds that Respondent is not the owner or beneficiary of a valid trade or service mark identical to the Domain Name.
Complainant states that Respondent is not connected or associated with Complainant and that Complainant has not licensed Respondent to use its BORGWARNER mark. Before addressing this argument on its merits, the Panel must first resolve the question of identity of the Respondent in this matter. The WHOIS printout submitted as Complaint Exhibit A lists “Catherine Wood / BorgWarner, Inc.” as the registrant of the Domain Name. Complainant states that Catherine Wood is an actual employee of Complainant. It is evident that neither she nor Complainant actually registered the Domain Name, and that the registrant information given to the registrar is false. Rule 1 defines “Respondent” as “the holder of a domain-name registration against which a complaint is initiated” but in cases where the named holder of the registration is falsely listed as either the Complainant or an employee of Complainant, or both, it is neither logical nor appropriate to regard the named registrant as the Respondent. The Panel finds and determines that for the purposes of this Decision the holder of the domain name registration, i.e., the Respondent, is the person who actually registered the Domain Name. All references to Respondent in this Decision mean and refer to that person and not to Catherine Wood or BorgWarner, Inc.
Complainant has specific competence to state that Respondent is not connected or associated with it and that it has not licensed Respondent to use its BORGWARNER mark. This assertion is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name); 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 printout submitted as Complaint Exhibit A lists “Catherine Wood / BorgWarner, Inc.” as the registrant of the Domain Name, but as discussed above, the registrant identity information given to the registrar is false, and there is no evidence before the Panel as to the true identity of the Respondent in this matter. On this evidence, and in the absence of any evidence to the contrary, the Panel finds that the Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(iii).
Complaint Exhibits E, F and G are copies of emails sent from the email address info@borgwarner.us purportedly by one “Catherine Wood,” whose title is stated as Human Resources Manager for Complainant. In all three emails she states that she saw the addressee’s profile on www.indeed.com and expressed interest in talking to the addressee about an employment position at Complainant. Complaint Exhibit F also includes a copy of an email sent by the addressee of that email back to the real Catherine Wood at Complainant notifying her of the fraudulent contact from Respondent. It is clear that by using an email address based upon the Domain Name and posing as an actual employee of Complainant, Respondent is passing off as and impersonating Complainant. Using a confusingly similar domain name to send fraudulent emails is neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”); Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be 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)).[i]
Complaint Exhibit H is a screenshot of the website resolving from the Domain Name. Complainant alleges that it is inactive. It does not purport to offer any goods or services on its own account and this undoubtedly prompted Complainant to characterize it as an inactive site, but it does list a number of hyperlinks to various auto parts vendors and is in fact a pay-per-click site. Using a confusingly similar domain name to attract Internet traffic to a webpage that offers pay-per-click links to goods and services, whether related or unrelated to a complainant’s business, is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iv). McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”).
The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s web site or location or of a product of service on the respondent‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use of the Domain Name, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent is using the confusingly similar Domain Name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website, as described in Policy ¶ 4(b)(iv). Respondent here obtains commercial gain from its use of the Domain Name and the resolving website to generate pay-per-click revenues. Pay-per-click sites are common on the Internet. Under the most common forms of business arrangements relating to these sites, when a visitor to the site clicks on one of the links which appear there, the site sponsor receives compensation from the various web site owners who are forwarded from the site. In most cases, the site sponsor receives compensation based upon the number of hits the downstream web site owners get from being linked to Respondent’s web site. AllianceBernstein LP v. Texas International Property Associates, D2008-1230 (WIPO Oct. 12, 2008) (the domain name resolved to a search directory site with links to third-party vendors and the panel inferred that the respondent received click-through-fees when site visitors clicked on those links); Brownells, Inc. v. Texas International Property Associates, D2007-1211 (WIPO Dec. 12, 2007) (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain). Respondent’s use of the Domain Name is commercial also because the sponsors of the various web sites forwarded from Respondent’s web site benefit from the subsequent interest and purchases of those who visit the sites. UDRP panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. Focus Do It All Group v. Athanasios Sermbizis, D2000-0923 (WIPO Oct. 12, 2000) (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Next, as discussed above, Respondent is using the Domain Name to pass off as Complainant. Policy ¶ 4(b) recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., D-2004-0955 (WIPO Jan. 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and passing off as a complainant, in and of itself, is evidence of bad faith. Hewlett-Packard Development Company, L.P. v. Hyatt, FA1811001818756 (Forum Dec. 28, 2018) (“using a domain name to pose as a complainant to promote a fraudulent scheme has often been held to constitute bad faith”) (citations omitted); 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.”).
Finally, Complainant claims that Respondent had actual and constructive knowledge of Complainant’s rights in the BORGWARNER mark when it registered the Domain Name in November 2022 (WHOIS printout submitted as Complaint Exhibit A shows creation date). Panels have most frequently declined to find bad faith based upon constructive knowledge. 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."). Nevertheless, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name. Complainant had been using its BORGWARNER mark at least as early as the 1928 first use date shown on the USPTO registration certificate included in Complaint Exhibit C, and its mark has been registered in numerous other countries around the world (list of countries in which Complainant’s mark is registered submitted as Complaint Exhibit D). More importantly, Respondent copied that mark exactly into the Domain Name and impersonated Complainant in its emails, even to the extent of naming an actual employee of Complainant. In light of the non-exclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant’s rights in a mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <borgwarner.us> Domain Name be TRANSFERRED TO COMPLAINANT.
Charles A. Kuechenmeister, Panelist
January 5, 2023
[i] The cases cited in this section were decided under the Uniform Dispute Resolution Policy (UDRP), which does not include usTLD Policy ¶ 4(c)(i). The usTLD Policy ¶¶ 4(c)(ii), (iii) and (iv) are identical to UDRP Policy ¶¶ 4(c)(i)(ii) and (iii).
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