BorgWarner Inc. v. khloe
Claim Number: FA2306002050178
Complainant is BorgWarner Inc. (“Complainant”), represented by Thad Chaloemtiarana of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is khloe (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <job-borgwarner.com>, registered with Google 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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on June 22, 2023; Forum received payment on June 22, 2023.
On June 22, 2023, Google Llc confirmed by e-mail to Forum that the <job-borgwarner.com> domain name is registered with Google Llc and that Respondent is the current registrant of the name. Google Llc has verified that Respondent is bound by the Google 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 June 26, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 17, 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@job-borgwarner.com. Also on June 26, 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.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On July 24, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, 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 made the following contentions.
Complainant BorgWarner Inc. is one of the largest automotive suppliers in the world. Complainant asserts rights in the BORGWARNER mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,412,240, registered October 7, 1986). See Compl. Ex. C. Complainant also asserts common law rights in the BORGWARNER mark. The <job-borgwarner.com> domain name is identical or confusingly similar to Complainant’s mark because the disputed domain name fully incorporates Complainant’s BORGWARNER mark and merely adds the generic term “job”, a hyphen, and the “.com” generic top level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <job-borgwarner.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the BORGWARNER mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent is impersonating employees of Complainant via fraudulent emails. Also, the disputed domain name does not resolve to an active webpage.
Respondent registered and uses the <job-borgwarner.com> domain name in bad faith. Respondent is impersonating employees of Complainant’s company via emails. Respondent is inactively holding the disputed domain name. Lastly, Respondent had actual knowledge of Complainant’s rights in the BORGWARNER mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is engaged in the automotive supply industry.
2. Complainant has established its rights in the BORGWARNER mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,412,240, registered October 7, 1986).
3. Respondent registered the <job-borgwarner.com> domain name on June 10, 2023.
4. Respondent has caused the disputed domain name to be used to impersonate employees of Complainant via fraudulent emails and has not otherwise caused the domain name to resolve to an active webpage.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the BORGWARNER mark (e.g. Reg. No. 1,412,240, registered October 7, 1986). See Compl. Ex. C. Registration of a mark with the USPTO is sufficient in establishing rights in the mark under 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).”). Since Complainant provides evidence of registration of the BORGWARNER mark with the USPTO, the Panel finds that the Complainant has rights in the mark under Policy 4(a)(i).
Complainant also submits that it has common law rights in the BORGWARNER mark. It clearly does, but as it has produced records of numerous registered trademarks, it is not necessary to pursue any further the issue of common law or unregistered trademark rights.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BORGWARNER mark. Complainant submits that Respondent’s <job-borgwarner.com> domain name is identical or confusingly similar to Complainant’s mark. The addition of a generic word, a hyphen, and gTLD fails to distinguish a disputed domain name sufficiently 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.”). Here, the disputed domain name fully incorporates Complainant’s BORGWARNER mark and merely adds the generic word “job”, a hyphen, and the “.com” gTLD. Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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)).
(a) Respondent has chosen to take Complainant’s BORGWARNER mark and to use it in its domain name, adding the generic word “job” and a hyphen which cannot negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <job-borgwarner.com> domain name on June 10, 2023;
(c) Respondent has caused the disputed domain name to be used to impersonate employees of Complainant via fraudulent emails and has not otherwise caused the domain name to resolve to an active webpage;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent lacks rights or legitimate interests in the <job-borgwarner.com> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the BORGWARNER mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, 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 for the disputed domain name lists the registrant as “khloe,” and there is no other evidence to suggest that Respondent was authorized to use the BORGWARNER mark. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <job-borgwarner.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent is using the BORGWARNER mark and the infringing domain name, including email addresses associated with the infringing domain name, to impersonate Complainant and representatives of Complainant falsely. Such attempts to impersonate Complainant demonstrate Respondent’s lack of rights or legitimate interests in the infringing domain name per Policy ¶ 4(a)(ii) and 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). See 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). Here, Complainant provides copies of fraudulent emails sent on behalf of Respondent. See Compl. Ex. E – L. Accordingly, as the Panel agrees, it finds that Respondent lacks rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii) and that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant submits that Respondent fails to use the <job-borgwarner.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use since Respondent is inactively holding the disputed domain name, which does not resolve to an active website. Failure to make an active use of a disputed domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Here, Complainant provides screen captures of the resolving site of the infringing domain name. See Compl. Ex. M. As such, the Panel finds that Respondent fails to use the disputed domain name actively for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, the Panel notes that the provisions of Policy ¶ 4(b) are merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. 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).
Secondly, Complainant contends that Respondent registered and uses the <job-borgwarner.com> domain name in bad faith due to the fact that Respondent used the infringing domain name to impersonate Complainant by sending emails from “janet@job-borgwarner.com”, “elizabeth@job-borgwarner.com”, and ““james@job-borgwarner.com” “falsely representing itself as Complainant in order to perpetrate a scam on unsuspecting individuals seeking employment with Complainant. Such passing off to further Respondent’s commercial fraud, through the use of fraudulent email communications featuring Complainant’s BORGWARNER mark, obviously constitutes bad faith under Policy ¶ 4(a)(iii). See Smiths Group plc v. Snooks, FA 1372112 (Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). Here, Complainant provides copies of fraudulent emails sent on behalf of Respondent. See Compl. Ex. E – L. The Panel agrees and finds that the Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant submits that Respondent’s inactive ownership of the <job-borgwarner.com> domain name serves as evidence of bad faith under Policy ¶ 4(a)(iii). Prior Panels have held that a failure to make aa legitimate active use of a disputed domain name indicates bad faith registration. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Here, Complainant provides screen captures of the site of the infringing domain name. See Compl. Ex. M. The Panel therefore finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Fourthly, Complainant submits that Respondent had actual or constructive knowledge of Complainant’s rights in the BORGWARNER mark prior to registration of the <job-borgwarner.com> domain name. Constructive knowledge is insufficient for a finding of bad faith registration of a disputed domain name; actual knowledge, however, is sufficient for a finding of bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Actual knowledge can be determined in an analysis of the totality of the circumstances surrounding the registration and subsequent use per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant contends that Respondent must have had actual knowledge of Complainant’s rights in the BORGWARNER mark prior to registration of the disputed domain name based upon Complainant’s trademark registrations and Respondent’s use of the disputed domain name to defraud users. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration under Policy ¶ 4(a)(iii).
engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <job-borgwarner.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC, Panelist
Dated: July 26, 2023
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