Navico Group v. Bartow McDonald
Claim Number: FA2302002031675
Complainant is Navico Group (“Complainant”), represented by Christopher B. Lay of IpHorgan Ltd., US. Respondent is Bartow McDonald (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <navicogroup.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.
Sozos-Christos Theodoulou as Panelist.
Complainant submitted a Complaint to Forum electronically on February 13, 2023; Forum received payment on February 13, 2023.
On February 14, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <navicogroup.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 February 14, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 2023 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@navicogroup.com. Also on February 14, 2023, 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.
A timely Response was received and determined to be complete on February 27, 2023.
On March 3, 2023, Complainant’s Additional Submission was received. On March 6, 2023, Respondent’s Additional Submission was received. Both Additional Submissions comply with Supplemental Rule 7; hence, they are taken into consideration by the Panel.
On March 7, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Sozos-Christos Theodoulou 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 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts that it manufactures and sells marine electronics. Complainant has rights in the NAVICO mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,450,438, registered August 4, 1987). See Amend. Compl. Ex. C-1. Respondent’s <navicogroup.com> domain name is identical or confusingly similar to Complainant’s NAVICO mark as it merely adds the generic word “group” and the “.com” generic top-level-domain name ("gTLD").
Respondent lacks rights or legitimate interests in the <navicogroup.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the NAVICO mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as the disputed domain name resolves to a parked page.
Respondent registered and uses the <navicogroup.com> domain name in bad faith. Respondent’s disputed domain name resolves to a parked page that offers the domain name for sale. Additionally, Respondent was aware of the Complainant’s NAVICO mark at the time of registration. Respondent uses a privacy service to shield its identity. Finally, Respondent was approached by Complainant regarding possible purchase of the disputed domain name and Respondent’s offer was far in excess of its costs, constituting bad faith.
B. Respondent
Respondent asserts ownership in a private investment and advisory firm, Naveco Group, LLC since 2015. Respondent acquired <navecogroup.com> and <navicogroup.com> at that time due to the close phonetics and spelling. Respondent argues that Complainant’s Navico Group was created seven years after Naveco Group was incorporated and the disputed domain name purchased. Further, Respondent is not engaged in the same line of business as Complainant so there is no confusion between the services Respondent provides.
Respondent argues it has rights and legitimate interests in the <navicogroup.com> domain name because it is a close phonetic spelling to Respondent’s business Naveco Group LLC.
Respondent contends it registered and uses the <navicogroup.com> domain name in good faith. Respondent states it did not register the domain name for the purpose of selling the disputed domain name to the complainant, to prevent the owner of the trademark from use, for disrupting the business of a competitor, or to attract for commercial gain internet users to the disputed domain name. Further, Respondent argues Complainant approached Respondent unsolicited to purchase the disputed domain name and Complainant is exhibiting bad faith by attempting to seize control of the disputed domain name.
The Panel notes that the <navicogroup.com> domain name was registered on December 24, 2016. See Amend. Compl. Ex. A.
C. Additional Submissions
Complainant Additional Submission
Complainant argued in response to Respondent that because Respondent’s business entity is named Naveco Group LLC, it supports Complainant’s request for transfer.
Further, Complainant argues that although Respondent states it is not engaged in the same business as Complainant, the disputed domain name is parked on a page that directs to marine supplies, boat supplies and a brand owned by Complainant. Complainant argues that these links demonstrate bad faith since the page is clearly not being used to redirect users that may have mistyped “Naveco” as the Respondent asserts was the purpose of purchasing the disputed domain name.
Lastly, Complainant argues that it is irrelevant that Complainant approached Respondent and offered to purchase the disputed domain name.
Respondent Additional Submission
Respondent argued in response to Complainant’s Additional Submission that Complainant has failed to prove any bad faith on behalf of the Respondent.
Further, Respondent argues that he had never requested from Complainant $50,000/month for a license, as Complainant falsely claimed in its Additional Submission, but that he had suggested a licensing fee of $50,000 per year for a ten year period, instead.
The Panel has been concerned by the fact that the US trademark, which served as basis for the Complaint (U.S. Trademark Registration No. 1450438 “NAVICO”), does not belong to the Complainant Navico Group of Mettawa IL, but to another entity Navico Holding AS of Norway. Such eventual final finding would lead the Panel to reject the Complaint for want of standing.
The Panel, therefore, conducted an independent search and discovered that the two companies are economically linked, as it is shown by the trustworthy sites of Bloomberg and Dun & Bradstreet. The Panel also notes that the Respondent has not raised this issue. Thus, the Panel is satisfied that, for the purposes of these proceedings, the owner of the said mark is in essence the Complainant.
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.
Complainant asserts rights in the NAVICO mark through Complainant’s registration of the mark with the USPTO (e.g. Reg. No. 1,450,438, registered August 4, 1987). See Amend. Compl. Ex. C-1. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Given the Panel’s finding above that the owner of the US trademark is indeed part of the Complainant’s group of companies, the Panel finds Complainant has demonstrated rights in the NAVICO mark per Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s <navicogroup.com> domain name is identical or confusingly similar to Complainant’s NAVICO mark as it merely adds the generic word “group” and the “.com” gTLD. The addition of a generic or descriptive term and a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). The Panel therefore finds the disputed domain name is confusingly similar to Complainant’s mark per 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 contends Respondent lacks rights or legitimate interests in the <navicogroup.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the NAVICO mark. Panels have found when a respondent is not commonly known by a mark, it may lack rights in the disputed domain name. See Gallup, Inc. v. Amish Country Store, FA 96209 (Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark). Complainant provides a screenshot of Respondent’s biography that does not mention Respondent’s business, Naveco Group, LLC and argues therefore, Respondent is not commonly known by this name. See Amend. Compl. Ex. J. Additionally, Complainant asserts there is no other evidence to suggest that Respondent was authorized or licensed any rights in the NAVICO mark. The Panel thus finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <navicogroup.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain name resolves to a parked website that advertises links to third parties that compete with Complainant. Using a disputed domain name to compete with a complainant may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016) (”Respondent uses the domain for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant… The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services.”). Complainant offers a screenshot of the resolving website of the disputed domain name showing hyperlinks for “marine supplies”, “Lowrance Electronics”, and “boat supplies”. See Amend. Compl. Ex. I. The Panel therefore finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Further, Complainant contends in its Additional Submission that by having hyperlinks for “marine supplies”, “Lowrance Electronics”, and “boat supplies” at the disputed domain name, Respondent is directly contradicting Respondent’s own statement that it acquired the disputed domain name to assist users that might misspell Respondent’s business name “Naveco Group” to find the correct webpage. The Panel agrees with this and finds, as a conclusion to this point, that Respondent lacks rights or legitimate interests in the disputed domain name.
Complainant contends Respondent registered and uses the <navicogroup.com> domain name in bad faith because – among others – when contacted by Complainant regarding the possible purchase of the domain name, Respondent countered with a lease offer that exceeded out-of-pocket costs. Panels have found that a respondent that registers and uses a disputed domain name only to offer for sale may evince bad faith registration and use per Policy ¶ 4(b)(i). See Galvanize LLC, dba Galvanize v. Brett Blair / ChristianGlobe Network, FA1405001557092 (Forum June 26, 2014) (finding that the respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(i) because it countered Complainant’s offer to buy the disputed domain name with an offer to sell the disputed domain name of $100,000); see also Aha! – Agentur Fur Handelsmarketing GMBH v. Continue Software GmbH, FA 109376 (Forum May 24, 2002) (holding that “the apparent willingness of Respondent to sell or lease the domain name from the onset” is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i)). Complainant offers email evidence that the Respondent responded to Complainant’s offer by offering to license the disputed domain name in excess of its out-of-pocket costs. See Amend. Compl. Ex. K. The Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(i).
Next, Complainant argues Respondent registered and uses the <navicogroup.com> domain name in bad faith because the website resolves to a parking page that offers the domain name for sale, as well as hyperlinks for businesses that compete with Complainant. Registration of a confusingly similar domain name with the intent to disrupt business by offering links to competing products or services may show bad faith use and registration. 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.”). Complainant provided a screenshot of the parked website of the disputed domain name offering the domain name for sale as well as providing links to marine-related items. See Amend. Compl. Ex. I. The Panel thus finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
Complainant contends Respondent registered and uses the <navicogroup.com> domain name in bad faith, as Respondent used a privacy shield in its registration. Using a privacy service to conceal respondent’s identity may evince bad faith use and registration under Policy ¶ 4(a)(iii). See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). Here too, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Last but not least, the Panel has once again considered Respondent’s argument that it had allegedly acquired the disputed domain name to assist users that might misspell Respondent’s business name “Naveco Group” to find the correct webpage. Even if – for sake of discussion – the Panel accepted this argument, such risk cannot prevail over Complainant’s trademark rights in the disputed domain name since 1996 – a fact that should have been known to the Respondent in 2016 when applying to register the disputed domain name in its name. In sum, the Panel finds that Respondent registered and uses the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <navicogroup.com> domain name be TRANSFERRED from Respondent to Complainant.
Sozos-Christos Theodoulou, Panelist
Dated: March 21, 2023
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