Navistar International Corporation v. VistaPrint Technologies Ltd
Claim Number: FA1410001586755
Complainant is Navistar International Corporation (“Complainant”), represented by Brett A. August of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is VistaPrint Technologies Ltd (“Respondent”), Bermuda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <navisttar.com>, registered with TUCOWS, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 24, 2014; the National Arbitration Forum received payment on October 24, 2014.
On October 27, 2014, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <navisttar.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, INC. 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 4, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 24, 2014 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@navisttar.com. Also on November 4, 2014, 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 3, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
A. Complainant
1. Complainant uses the NAVISTAR mark in connection with truck and vehicle development. Complainant has Policy ¶ 4(a)(i) rights in the NAVISTAR mark through trademark registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,498,530, registered Aug. 2, 1988).
2. The <navisttar.com> domain name is confusingly similar to the NAVISTAR mark as it simply adds an additional letter “t” to the mark. The domain name was registered on October 8, 2014.
3. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not licensed or otherwise authorized to use the NAVISTAR mark. Respondent’s use for the disputed domain name is not a bona fide offering of goods or services, nor a legitimate noncommercial of fair use of the domain name.
4. The disputed domain name resolves to a website that states “Websites are FREE at vistaprint.com/websites,” and contains a link to “VistaPrint.” Respondent uses the e-mail string associated with the disputed domain name in connection with fraudulent activities. Respondent used the e-mail address to impersonate Complainant’s Executive Vice President and CFO, and sent instructions to Complainant’s Senior Vice President and Corporate Controller to wire $76,280 to Respondent’s bank account.
5. Respondent has engaged in bad faith use and registration. Respondent is attempting to mislead Internet users to the resolving page where the Respondent promotes a link to “VistaPrint,” from which Respondent commercially benefits.
6. In addition, Respondent’s efforts to use the disputed domain name to impersonate Complainant’s CFO in furtherance of wire fraud evinces bad faith. Respondent’s efforts to pass itself off as Complainant’s CFO also indicates Respondent was familiar with Complainant, and had actual knowledge of Complainant’s trademark rights at the time of domain name registration.
7. Finally, Respondent has engaged in typosquatting, which is further evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the NAVISTAR mark. Respondent’s domain name is confusingly similar to Complainant’s NAVISTAR mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <navisttar.com> domain name, and that Respondent registered and uses the 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 uses the NAVISTAR mark in connection with truck and vehicle development. Complainant claims Policy ¶ 4(a)(i) rights in the NAVISTAR mark through trademark registration with the USPTO (e.g., Reg. No. 1,498,530, registered Aug. 2, 1988). Complainant’s valid trademark holding with the USPTO demonstrates Complainant’s rights in the NAVISTAR mark pursuant to Policy ¶ 4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant argues that the <navisttar.com> domain name is confusingly similar to the NAVISTAR mark as it simply adds an additional letter “t” to the mark. Complainant correctly asserts that the “.com” extension is immaterial to the Policy ¶ 4(a)(i) 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). Respondent’s <navisttar.com> domain name is confusingly similar to the NAVISTAR mark under Policy ¶ 4(a)(i) as the addition of a single replicated letter to the otherwise incorporated mark serves no distinguishing value. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding the respondent’s <microssoft.com> domain name to be confusingly similar to the complainant’s MICROSOFT mark because they differ by only one letter, and “such a small alteration is insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims that Respondent is not licensed or otherwise authorized to use the NAVISTAR mark. In St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), the panel concluded that a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name. As Respondent has failed to submit a response, the only evidence comes from the WHOIS record, which fails to show that Respondent is commonly known by the domain name. The Panel concludes that there is no basis to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next argues that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services, nor a legitimate noncommercial of fair use of the domain name. Complainant asserts that the disputed domain name resolves to a website that states “Websites are FREE at vistaprint.com/websites,” and contains a link to “VistaPrint.” Respondent’s use of a confusingly similar domain name to divert users to services unrelated to Complainant, and likely for commercial gain, does not constitute a Policy ¶ 4(c)(i) bona fide offering or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
To further demonstrate Respondent’s lack of rights and legitimate interests in the subject domain name, Complainant contends that Respondent uses the e-mail string associated with the disputed domain name in connection with fraudulent activities. Complainant explains that Respondent has used the e-mail address to impersonate Complainant’s Executive Vice President and CFO, and send instructions to Complainant’s Senior Vice President and Corporate Controller to wire $76,280 to Respondent’s bank account. Respondent’s use of the e-mail string associated with the disputed domain name in an attempt to impersonate Complainant as part of a wire fraud scheme shows conclusively that Respondent lacks any Policy ¶ 4(a)(ii) rights or legitimate interests in the <navisttar.com> domain name. See Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA 1550388 (Nat. Arb. Forum May 5, 2014) (finding that the respondent lacked rights and legitimate interests in the disputed domain name where the respondent used the domain name to send e-mails to various IT hardware suppliers in an attempt to impersonate the complainant and defraud the suppliers).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent is attempting to mislead Internet users to the subject resolving page where the Respondent promotes a link to “VistaPrint,” from which Respondent commercially benefits. Because Respondent has created an opportunity to profit from the likely of confusion, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
In addition, Complainant argues that Respondent’s efforts to use the disputed domain name to impersonate Complainant’s CFO in furtherance of wire fraud evinces bad faith. Faced with similar allegations of fraud, the panel in National Oilwell Varco, L.P. v. Craig Wood / NOV, FA 1575951 (Nat. Arb. Forum September 22, 2014), wrote, “We are persuaded by the evidence that Respondent’s use of the <nov-inc.com> domain name to commit a commercial fraud while purporting to act in the name of Complainant, all as alleged in the Complaint, demonstrates bad faith in the registration and use of the domain name.” The Panel agrees that Respondent’s efforts to impersonate Complainant’s officers in furtherance of wire fraud against the Complainant is clearly demonstrative of bad faith use and registration under Policy ¶ 4(a)(iii).
Complainant asserts that Respondent’s efforts to pass itself off as Complainant’s CFO indicates Respondent was familiar with Complainant, and had actual knowledge of Complainant’s trademark rights at the time of domain name registration. The Panel agrees that these circumstances demonstrate Respondent knew of Complainant at the time of domain name registration, and therefore determines that a finding of bad faith under Policy ¶ 4(a)(iii) is warranted. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith).
Finally, Complainant argues that Respondent has engaged in typosquatting, which is further evidence of bad faith. The <navisttar.com> domain name merely adds a duplicate letter “t” to the NAVISTAR mark. The Panel holds that Respondent’s behavior amounts to typosquatting which is a recognized indicator of bad faith under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form).
The Panel finds Complainant has satisfied 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 <navisttar.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 15, 2014
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