Navigant Consulting, Inc. v. Bradley Shive / Navigant Technologies
Claim Number: FA1410001587953
Complainant is Navigant Consulting, Inc. (“Complainant”), represented by Craig A. Beaker of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is Bradley Shive / Navigant Technologies (“Respondent”), represented by Mike Rodenbaugh of RODENBAUGH LAW, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <naviganttechnologies.com> and <naviganttech.com>, registered with Register.com, 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.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 31, 2014; the National Arbitration Forum received payment on October 31, 2014.
On November 3, 2014, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <naviganttechnologies.com> and <naviganttech.com> domain names are registered with Register.com, Inc. and that Respondent is the current registrant of the names. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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@naviganttechnologies.com, postmaster@naviganttech.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.
A timely Response was received and determined to be complete on November 24, 2014.
A timely Additional Submission was received from Complainant on November 26, 2014.
A timely Additional Submission was received from Respondent on December 1, 2014.
On December 4, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi 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.
Complainant requests that the disputed domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a global expert services firm offering business consulting and related services in a number industries, including technology, chemicals, construction, energy, legal, and transportation. Complainant uses the NAVIGANT mark to identify its consulting services. Complainant has rights in the NAVIGANT mark through registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,452,419, registered Jun. 24, 2008, filed Jun. 15, 2007). Complainant has used the NAVIGANT mark since 1996 and registered the <navigantconsulting.com> domain name in 1999. The <naviganttechnologies.com> and <naviganttech.com> disputed domain names are confusingly similar to the NAVIGANT mark as the domain names incorporate the mark in full and include the descriptive words “technologies” and “tech,” as well the necessary generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain names. Respondent has acquired no trademark rights relating to disputed domain names. Respondent is not authorized the use the NAVIGANT mark. Even if Respondent is known by the name “Navigant Technologies” Respondent cannot establish any rights or legitimate interests in the disputed domain names. Complainant’s rights in the NAVIGANT mark predate any rights Respondent could claim in the disputed domain name. Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial of fair use. Respondent uses the disputed domain names to divert users away from Complainant’s website to Respondent’s own website offering IT consulting services, project management services, and other related services under the “IT Cottage” and “Navigant Technologies” names. Such offerings are in direct competition with Complainant’s own services. Further, Respondent markets their services to customers in the same industries as Complainant, including Energy, Chemical, Pharmaceuticals, Government, Engineering, and Technology.
Respondent has engaged in bad faith registration and use. Respondent offered to transfer the disputed domain names in exchange for an amount in excess of out-of-pocket expenses, namely for $10,000, after being approached by Complainant. Respondent’s bad faith is demonstrated by its use of the disputed domain names to disrupt and compete with Complainant’s business. Further, Respondent has attempted to divert customers to its own website by creating a likelihood of confusion. Given Complainant’s long standing use of the NAVIGANT mark and distinctive nature, it is highly improbable that Respondent registered virtually identical domain names to the mark without knowledge of Complainant and its trademark rights.
B. Respondent
Respondent offers a variety of professional services relating to informational technology needs. Services offered by Respondent under the Navigant Technologies and IT Cottage trademarks include information technology management and design, network design and virtualization, and server consolidation. Respondent began using the Navigant Technologies name in 2006.
Complainant did not acquire any trademark rights in the word NAVIGANT until January 1, 2011 when it received an assignment of four USPTO registrations. Even these registrations only date back to 2008. Respondent registered the <naviganttechnologies.com> domain name on September 4, 2003, and <naviganttech.com> on December 31, 2007. Complainant’s rights in NAVIGANT do not predate Respondent’s domain name registrations. Complainant has failed to provide evidence of secondary meaning.
The <naviganttechnologies.com> and <naviganttech.com> domain names are not confusingly similar to the NAVIGANT mark. Respondent has added the terms “technologies” and “tech,” which dispel any possibility of confusion. Further, the term “Navigant” is the French translation for the common English term “navigate,” and Respondent chose the name with that in mind. Complainant has not proffered any proof that they offer the sort of “technology” that would compete or be related to Complainant’s IT offerings.
Respondent has been and is commonly known as Navigant Technologies. Respondent filed Articles of Organization in Colorado in January 2006 under the company name Navigant Technologies, LLC, and operated exclusively under that name until 2012 when it partially re-branded its business to IT Cottage. Respondent is well-known to customers and within the IT industry in Houston and Denver by the Navigant Technologies name. Respondent legitimately uses the disputed domain names as the primary gateway for customers to reach Respondent’s business.
Respondent could not have engaged in bad faith registration as its registrations predate Complainant’s demonstrated trademark rights. Further, there is no evidence that Respondent has tried to disrupt Complainant’s business; Respondent does not compete with Complainant. Nor is Respondent attempting to divert customers via likelihood of confusion. Respondent has a different brand, and the parties have co-existed in their respective marketplaces for nine years without actual confusion. Respondent did not register the disputed domain name with knowledge of Complainant. Complainant’s evidence shows Complainant advertised regionally, and supported a vague homepage in 2001. Respondent did not register the disputed domain name with the primary purpose of selling the name to the trademark owner. Respondent’s use of the domain names for its business demonstrates its true motive in registering the domain names.
This dispute is outside the scope of the UDRP. Presently, the issues are more complex than a simple abusive domain name registration. Respondent has been known by the Navigant Technologies name since 2006. As such, there are substantial issues with regard to prior rights, assignment validity, and common law rights.
Respondent requests dismissal based on laches, as well as a finding of bad faith on Complainant’s part for reverse domain name hijacking.
Complainant’s Additional Submission
Complainant is the senior user and right-holder of the NAVIGANT brand as demonstrated by its continuous use since 1999, and assignment of U.S. registration rights. In 2005, Complainant was named one of the 200 Best Run Small Companies by Forbes and one of the 100 Fastest Growing Companies by Fortune Magazine. See Compl. Add’l Sub., at Attached Ex. F. Complainant’s advertising expenditures exceeded $1 million in 2005. When Respondent adopted the name “Navigant Technologies,” Complainant was a half-billion dollar global publicly-traded company with offices in Denver, Colorado, and Houston.
Respondent’s claimed creation date for the <naviganttechnologies.com> domain name of September 4, 2003 serves no evidentiary value here; instead, the WHOIS capture shows Respondent’s association only as of August 16, 2007. See Compl. Add’l Sub., at Attached Ex. V.
In addition, the French term “Navigant” is translated to mean “aviator or flight crew,” not “to navigate” as Respondent claims. See Compl., at Attached Ex. U.
The dispute is not complex and is a case of abusive registration, and therefore the Panel should not abdicate its power. Further, the doctrine of laches does not apply to UDRP cases. As to reverse domain name hijacking, such claim is meritless as Complainant has satisfied all the elements of the Policy.
Respondent’s Additional Submission
Complainant’s additional submission should be disregarded for violating Forum Supplemental Rule 7(f). Further, Respondent’s request for an extension should have been granted as the denial was an abuse of the Forum’s discretion per UDRP Rule 10(b).
Respondent has legitimate rights in the domain names and Complainant has not proved priority or secondary meaning. The evidence provided in Complainant’s additional submission is not probative.
Respondent maintains registration of the <naviganttechnologies.com> domain name on September 4, 2003, and claims the evidentiary value of the DomainTools lookup is misleading.
Complainant’s efforts to mislead the panel further necessitate a finding of reverse domain name hijacking. As to laches, Complainant has not provided any justification for the delay in bringing this complaint. Respondent requests dismissal based on laches.
Complainant owns various registrations for marks containing the term “Navigant”, such as e.g. US trademark registration NAVIGANT, Reg. No. 2714796, Reg. Date May 13, 2003, filed on November 30, 1998 under Serial No. 75596878, covering travel agency services, namely, making reservations and booking conference facilities; arranging [and conducting] business conferences; business travel [and conference planning] services, namely, arranging [and conducting] business meetings for others;] travel management services, namely, assisting others in monitoring and reporting travel expenses and travel programs, in International Class 35. First use/first use in commerce: June 9, 1998. Complainant acquired this registration on April 1, 2011 by assignment from Navigant International, Inc. This assignment also comprised Serial Numbers 77207039 (NAVIGANT), 77207032 (NAVIGANT), and 77207153 (NAVIGANT CONSULTING).
On January 10, 2006, Articles of Organization for Navigant Technologies, LLC, a limited liability company organized under the State of Colorado Revised Statutes, were filed before the Colorado Secretary of State, with Mr. Bradley Shive causing the document to be delivered for filing.
On September 4, 2003, the registration record for the domain name <naviganttechnologies.com> was created. On December 31, 2007, the registration record for the domain name <naviganttech.com> was created.
In June 2012, the Parties engaged in settlement discussions as to Respondent’s use of the terms “Navigant Technologies” and “Navigant.” Discussions between the Parties were terminated, apparently without agreement, in September 2012.
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.
By submitting evidence of its numerous US and foreign trademark registrations, Complainant has shown that it has rights in the NAVIGANT mark. See section on “Findings” above. The Panel is of the view that Complainant’s USPTO registrations evince Policy ¶ 4(a)(i) rights in the NAVIGANT mark. See Remithome Corp v. Pupalla, FA 1124302 (Nat. Arb. Forum Feb. 21, 2008) (finding the complainant held the trademark rights to the federally registered mark REMITHOME, by virtue of an assignment). Also, Complainant demonstrates that it registered the <navigantconsulting.com> domain name in 1999, and continues to use this domain name. See Compl., at Attached Exs. C-D. Complainant also provides evidence of advertisements as well as publications relating to Complainant’s accolades and publicity. See Compl., at Attached Exs. I and F, respectively. In its Additional Submission, Complainant adds that in 2005 it was named one of the 200 Best Run Small Companies by Forbes and one of the 100 Fastest Growing Companies by Fortune Magazine. See Compl. Add’l Sub., at Attached Ex. F. Further, Complainant’s advertising expenditures exceeded $1 million in 2005. See Compl. Add’l Sub., at Attached Ex. T. Complainant asserts that on or before 2006 (when Respondent adopted the name “Navigant Technologies”), Complainant was a half-billion dollar global publicly-traded company with offices in Denver, Colorado, and Houston. Id. In light of the available evidence, the Panel agrees that the NAVIGANT mark has acquired the secondary meaning required for a common law trademark. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”); Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999).
The Panel notes that in the disputed domain names the NAVIGANT mark is incorporated in its entirety, and that the generic or common terms “technology” and “tech”, respectively, are added. It is well established by UDRP panels that the addition in a domain name of generic or common terms does nothing to distinguish a domain name from the mark. Accordingly, the Panel finds that the disputed domain names are confusingly similar to the NAVIGANT mark of Complainant. The first requirement of the Policy is thus met.
The Panel notes that according to the WhoIs records corresponding to the disputed domain names the registrant organization is “Navigant Technologies”, which corresponds to Navigant Technologies, LLC, an entity for which, as shown by Respondent, Articles of Organization were filed on January 10, 2010 with the Colorado Secretary of State. See “Findings” above.
The Panel also notes that Respondent appears to presently be doing business as “IT Cottage”, as can be seen on the home page to which the Internet visitors of the “www.naviganttechnologies.com” and “www.naviganttech.com” websites are being directed. In the Panel’s view, this fact does not negate that Respondent continues to be using the name “Navigant Technologies”, i.e. the name of the registrant organization in the WhoIs records for the disputed domain names, which corresponds to Navigant Technologies, LLC. In the Panel’s view, this use supports a finding that Respondent has shown a legitimate right or interest in the disputed domain names. According to the record before the Panel nothing indicates that Respondent has recognized or admitted that it had no rights to or legitimate interests in the disputed domain names, or that it had agreed that it was not entitled to use the domain names. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the respondent has rights and a legitimate interest in the domain name since the domain name reflects the respondent’s company name); see also World Publ’ns, Inc. v. World Pen, Seattle Pen, Inc., D2000-0736 (WIPO Sept. 14, 2000) (finding that as the respondent registered the trade name "WORLD PEN" in July 1996 and had been conducting business under that name since that date, it had rights or legitimate interests in the disputed domain name).
It has been shown that before Complainant’s registration of its NAVIGANT marks and before receiving a notice of this dispute, Respondent has used the “Navigant Technologies” name to publicly refer to itself and to the services it provides. In fact, Respondent continued to use this name on the “www.naviganttechnologies.com” and “www.naviganttech.com” websites after the 2012 talks with Complainant until presently. On December 17, 2014, the Panel visited both websites [1] and confirmed that Respondent is still posting a “White Paper” under the title “Navigant Technologies” where Respondent provides services under the names “Navigant Technologies” and “Navigant”. This present use coincides with the results of a Panel visit to the Wayback Machine at the “www.archive.org” website also conducted on December 17, 2014, showing that at least on November 20, 2009, February 7, 2011, January 20, 2012, April 18, 2012 and June 26, 2012, under the section “Why Navigant Technology”, Respondent posted a “White Paper” entitled “Navigant Technologies – Why Navigant Is Different!”. From June 14, 2013 onwards the title of the same section in the home page appears to have been re-titled “Why IT Cottage”. However, the title and contents of the “White Paper” continued to refer to “Navigant Technologies” as before.
In the Panel’s opinion, this use of a name corresponding to the disputed domain names appears to be in connection with a bona fide offering of IT services, and thus, to be legitimate. See Digital Interactive Sys. Corp. v. Christian W, FA 708968 (Nat. Arb. Forum July 3, 2006) (concluding that the complainant failed to satisfy Policy ¶ 4(a)(ii) because the respondent provided sufficient evidence to convince the panel that it was using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)); see also Port of Helsinki v. Paragon Int’l Projects Ltd., D2001-0002 (WIPO Feb. 12, 2001) (finding rights or legitimate interests in the <portofhelsinki.com> domain name because the respondent was using the disputed domain name in order to provide information about services available in different ports around the world).
In sum, Complainant failed to demonstrate that Respondent lacks any rights or legitimate interests in the disputed domain names.
Registration and Use in Bad Faith
In light of the Panel finding in the previous section, it is unnecessary to determine whether Respondent has registered or is using the disputed domain names in bad faith. See I4 Solutions, Inc. v. Miani, FA 1153871 (Nat. Arb. Forum April 24, 2008) (finding unnecessary to examine Policy ¶¶ 4(a)(i) and (ii), as Complainant must succeed under all three portions in order to grant the requested relief; thus, a denial under Policy ¶ 4(a)(iii) leads the Panel to decline to analyze the other portions of the Policy); see also Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary).
The Panel is of the view that there is no evidence on the record that Complainant has attempted at reverse domain name hijacking, or that it has used these proceedings in bad faith.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <naviganttechnologies.com> and <naviganttech.com> domain names REMAIN WITH Respondent.
Roberto A. Bianchi, Panelist
Dated: December 17, 2014
[1] As per the Panel visit on December 17, 2014, the “www.naviganttech.com” website in fact redirects to “www.naviganttechnologies.com”.
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