Bugatti International S.A. v. Devonrick Jefferson
Claim Number: FA1311001531136
Complainant is Bugatti International S.A. (“Complainant”), represented by Susan B. Flohr of Blank Rome LLP, Washington, D.C., USA. Respondent is Devonrick Jefferson (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wearebugatti.com>, registered with Network Solutions, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 21, 2013; the National Arbitration Forum received payment on November 21, 2013.
On November 22, 2013, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <wearebugatti.com> 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 November 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 2013 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@wearebugatti.com. Also on November 22, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 19, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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.
Complainant makes the following contentions:
Respondent did not submit a Response.
1. Respondent’s <wearebugatti.com> domain name is confusingly similar to Complainant’s BUGATTI mark.
2. Respondent does not have any rights or legitimate interests in the <wearebugatti.com> domain name.
3. Respondent registered or used the <wearebugatti.com> domain name 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 pursuant to paragraphs 5(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant states that it uses its BUGATTI mark in connection with a variety of products and services, including the production of luxury automobiles such as the VEYRON, the fastest production automobile in the world. Complainant further asserts that it owns rights in the BUGATTI mark through its registration of the mark with various trademark offices around the world, including the USPTO (e.g., Reg. No. 1,407,200 registered August 26, 1986) and the Chinese SAIC (e.g., Reg. No. 4,510,859 registered November 14, 2008). See Complainant’s Exhibit 2. The Panel notes that it has previously been determined that a complainant’s registration of its mark with numerous trademark authorities around the world sufficiently establishes the complainant’s rights in the mark under the Policy. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”). Therefore, the Panel holds that the numerous trademark registrations for the BUGATTI held by Complainant and listed in Complainant’s Exhibit 2 adequately establish Complainant’s rights in the BUGATTI mark pursuant to Policy ¶ 4(a)(i).
Complainant next alleges that the <wearebugatti.com> domain name is confusingly similar to Complainant’s BUGATTI mark because the domain name fully appropriates the mark and merely adds the generic phrase, “we are.” The Panel also observes that the disputed domain name adds the generic top-level domain (“gTLD”) “.com.” However, the Panel notes that it has previously been determined that a domain name’s inclusion of a gTLD such as “.com” is irrelevant for the purposes of a confusing similarity analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Previous panels have also held that a domain name is confusingly similar to a complainant’s mark where the domain name fully appropriates the mark and merely adds a generic phrase. See, e.g., Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). In the instant proceedings, the Panel analogizes the disputed domain name’s added phrase “we are” to the added phrase “shop for” in Warner Bros., supra and holds that the addition of this phrase does not adequately distinguish the disputed domain name from Complainant’s BUGATTI mark. Therefore, the Panel holds that the <wearebugatti.com> domain name is confusingly similar to Complainant’s BUGATTI mark pursuant to 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant suggests that Respondent is not commonly known by the <wearebugatti.com> domain name under Policy ¶ 4(c)(ii). The Panel notes that previous panels have held that a complainant is not commonly known by a disputed domain name where there is no evidence in the record, including the WHOIS information, to suggest otherwise. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. 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). In the instant proceedings, the Panel notes that the WHOIS information identifies the registrant of the disputed domain name as “Devonrick Jefferson.” The Panel concludes that the WHOIS information suggests that Respondent is commonly known as “Devonrick Jefferson” and not as <wearebugatti.com>. The Panel also concludes that nothing else in the record, including the screenshot of the at-issue website, suggests that Respondent is commonly known as <wearebugatti.com>. Therefore, the Panel holds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant suggests that Respondent lacks rights or legitimate interests in the <wearebugatti.com> domain name under Policy ¶ 4(a)(ii), because Respondent has used the disputed domain to solicit Internet users to participate in its commercial “Member Benefits” programs and thus phish for Internet users’ personal information. See Complainant’s Exhibit 4. The Panel notes that according to a screenshot submitted by Complainant, the at-issue website states, “Mca Is the Company That Provides All Our Members With Top Benefits Package” and provides a link entitled “Learn More Here…” as well as a contact e-mail address of “WeareBuggati@gmail.com.” See id. The at-issue website also appears to urge Internet users to participate in the “Money Network,” “Member Benefits” and “TEAMBUGATTI” programs and suggests that participation in these programs is “A Great Job for College Students, Entrepreneurs, Network Marketers And Anyone With a Dream.” See id. The Panel also observes from Complainant’s Exhibit 4 that the at-issue website displays images of luxury automobiles which are entitled “Bugatti-Grand-Sport-Vilesse” and “Mercury-Cougar-Bugatti-Veyron.” See id. Based on this evidence, Complainant suggests that Respondent has engaged in a scheme to defraud consumers into joining its commercial “Benefits” programs, which presumably require the consumer to disclose personal and/or proprietary information. The Panel notes that previous panels have held that a respondent lacks rights or legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) where the respondent is using the domain name to engage in a phishing scheme, defining phishing as the fraudulent use of a domain name to obtain Internet users’ personal and financial information. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Wells Fargo & Co. v. WhoisGuard, FA 1103650 (Nat. Arb. Forum Dec. 13, 2007) (“There is no dispute that respondent previously used the disputed domain name to obtain personal and financial information from Internet customers of complainant. This fraudulent use [is] known as ‘phishing’”). In the instant proceedings, the Panel reasons that the use of Complainant’s BUGATTI mark and the display of Complainant’s luxury vehicles is likely to deceive Internet users into believing the “Member Benefits” program promoted on the website is sponsored by Complainant. Furthermore, the Panel accepts Complainant’s inference that the disputed domain name is used to ultimately obtain Internet users’ personal and/or financial information. Accordingly, the Panel concludes that Respondent has used the disputed domain name to engage in a phishing scheme, which is evidence that Respondent lacks rights or legitimate interests in the <wearebugatti.com> domain name under Policy ¶ 4(a)(ii).
Complainant first alleges that Respondent has demonstrated bad faith attraction for commercial gain pursuant to Policy ¶ 4(b)(iv), because the disputed domain name leads to confusion with Complainant’s BUGATTI mark and Respondent has profited from this confusion in the form of increased sales of its “Member Benefits” memberships. See Complainant’s Exhibit 4. The Panel recalls that according to screenshots submitted by Complainant, the at-issue website urges Internet users to participate in the “Money Network,” “Member Benefits” and “TEAMBUGATTI” programs and suggests that participation in these programs is “A Great Job for College Students, Entrepreneurs, Network Marketers And Anyone With a Dream.” See id. The Panel also observes from Complainant’s Exhibit 4 that the at-issue website displays images of luxury automobiles which are entitled “Bugatti-Grand-Sport-Vilesse” and “Mercury-Cougar-Bugatti-Veyron.” The Panel notes that a respondent demonstrates bad faith registration and use of a disputed domain name under Policy ¶ 4(b)(iv) where the disputed domain name is obviously connected to a complainant’s mark and is used for the respondent’s commercial gain. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). The Panel further notes that in H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003), the panel found that the respondent had demonstrated bad faith under Policy ¶ 4(b)(iv) by registering and using the disputed domain name to intentionally attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness. See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness). In the instant proceedings, the Panel concludes that the <wearebugatti.com> domain name is obviously connected to Complainant’s BUGATTI mark and thus creates likely confusion with Complainant as to its sponsorship of the resolving website. Furthermore, the Panel concludes that as in H-D Michigan, supra, the at-issue website’s use of Complainant’s marks and images of its luxury vehicles is likely to defraud Internet users, in this case, to join Respondent’s “Member Benefits” programs. For the foregoing reasons, the Panel holds that Respondent has demonstrated bad faith registration and use of the <wearebugatti.com> domain name pursuant to Policy ¶ 4(b)(iv).
Complainant further alleges that Respondent registered the <wearebugatti.com> domain name with actual notice of Complainant’s rights in the mark, because there is a clear link between the BUGATTI mark and the content displayed on the at-issue website. See Complainant’s Exhibit 4. The Panel notes that it has previously been determined that a respondent demonstrates bad faith under Policy ¶ 4(a)(iii) by registering an infringing domain name with actual notice of the complainant and its rights in the appropriated mark. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Previous panels have also held that a respondent’s actual notice of a complainant’s rights in a mark can be inferred where there is a clear link between the complainant’s mark and the content promoted on the disputed domain name’s resolving website. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”). The Panel recalls that according to a screenshot submitted by Complainant, the at-issue website displays images of luxury automobiles which are entitled “Bugatti-Grand-Sport-Vilesse” and “Mercury-Cougar-Bugatti-Veyron.” The Panel thus concludes that as in Pfizer, supra, there is a clear link between Complainant’s BUGATTI mark and the BUGATTI vehicles that are displayed on Respondent’s website. Therefore, the Panel infers that Respondent registered the disputed domain name with actual notice of Complainant’s rights in the BUGATTI mark, which is evidence of Respondent’s bad faith registration and use of the <wearebugatti.com> domain name pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant suggests that Respondent has demonstrated bad faith under Policy ¶ 4(a)(iii) by engaging in a scheme to defraud consumers into joining its commercial “Benefits” programs, which presumably require the consumer to disclose personal and/or proprietary information. It has previously been held that a respondent demonstrates bad faith under the Policy by registering and using a disputed domain name to fraudulently acquire Internet users’ personal and financial information. See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). In the instant proceedings, the Panel reasons that the use of Complainant’s BUGATTI mark and the display of Complainant’s luxury vehicles is likely to defraud Internet users into believing the “Member Benefits” program promoted on the website is sponsored by Complainant. Furthermore, the Panel accepts Complainant’s inference that the disputed domain name is used to ultimately obtain Internet users’ personal and/or financial information. Accordingly, the Panel concludes that Respondent has used the <wearebugatti.com> domain name to engage in a phishing scheme and has thus demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wearebugatti.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 2, 2014
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