Navistar International Corporation v. N Rahmany
Claim Number: FA1505001620789
Complainant is Navistar International Corporation (“Complainant”), represented by Brett A. August of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is N Rahmany (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <navistardefense.technology> and <navistardefense.systems>, registered with Godaddy 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.
Eleni Lappa as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 21, 2015; the Forum received payment on May 21, 2015.
On May 22, 2015, Godaddy LLC confirmed by e-mail to the Forum that the <navistardefense.technology> and <navistardefense.systems> domain names are registered with Godaddy LLC and that Respondent is the current registrant of the names. Godaddy LLC has verified that Respondent is bound by the Godaddy 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 May 27, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 16, 2015 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@navistardefense.technology and postmaster@navistardefense.systems. Also on May 27, 2015, 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 May 27, 2015.
On June 3, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eleni Lappa as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant, in connection with its business in developing military vehicles, owns the NAVISTAR mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,476,173, registered Feb. 9, 1988), and through various trademark registrations throughout the world and has thereby established its Policy ¶ 4(a)(i) rights. Complainant asserts that Respondent’s <navistardefense.technology> and <navistardefense.systems> domain names are confusingly similar to Complainant’s NAVISTAR mark as they incorporate the above mark entirely and add the descriptive term “defense” as well as the “.technology” or “.systems” generic top-level domain (“gTLD”) suffixes.
Complainant further submits that Respondent has no rights or legitimate interests in the disputed domain names and has not established that he is or has ever been commonly known by the disputed domain names. Complainant also points out that they have not authorized Respondent to incorporate the NAVISTAR mark in any domain name registration and that Respondent has failed to make an active use of the <navistardefense.technology> and <navistardefense.systems> domain names, and has offered them for sale to Complainant in excess of out-of-pocket costs, which demonstrates neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
More specifically, Complainant submits that Respondent has attempted to sell the disputed domain names for twenty-times the amount of the cost to register the names, as per the evidence of Policy ¶ 4(b)(i) from which derives the principle of bad faith registration. Moreover Complainant claims Respondent is a serial cybersquatter who, along with registering the two disputed domain names in the current case, has also registered other infringing domain names in a past UDRP case, demonstrating bad faith as per Policy ¶ 4(b)(ii). Further, Complainant submits that Respondent’s inactive holding of both <navistardefense.technology> and <navistardefense.systems> domain names provides further indication of non-exclusive bad faith as per Policy ¶ 4(a)(iii). Finally, Complainant asserts that Respondent registered the disputed domain names with actual and/or constructive knowledge of the NAVISTAR mark and Complainant’s rights in the mark, as shown by Respondent’s correspondence with Complainant.
B. Respondent
Respondent disputes Complainant’s rights in the NAVISTAR mark as “there [is] at least one more registrant for ‘NAVISTAR’ mark.” Additionally, Respondent argues that there are no trademark registrations for the NAVISTARDEFENSE mark, the NAVISTAR DEFENSE mark, or the NAVISTARDEFENSE.COM mark. Finally, Respondent denies infringing upon any rights which fall under the purview of the Policy.
Complainant is a company which, in connection with its business in developing military vehicles, owns the NAVISTAR mark in various registrations throughout the world, including among else its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,476,173, registered Feb. 9, 1988) and has thereby established its Policy ¶ 4(a)(i) rights. Respondent registered two domain names i.e. <navistardefense.technology> and <navistardefense.systems> both of which incorporate the NAVISTAR mark entirely with the addition of the term “defense” as well as the generic top-level domain (“gTLD”) suffixes “.technology” and “.systems” respectively.
Respondent has not submitted any proof that it has any rights or legitimate interests in the disputed domain names and has not established that he is or has ever been commonly known by the disputed domain names. It is also evident that Respondent does not operate under any authorization or license by Complainant to incorporate the NAVISTAR mark in any domain name registration. A review of the relevant domain name addresses reveals that Respondent has never made any active use of the <navistardefense.systems> and <navistardefense.technology> domain names. Moreover, Respondent has registered the disputed domain names on March 6 and 10, 2015, respectively, and notified Complainant about the registrations on April 10, 2015, and finally on May 11, 2015 offered the disputed domain names for sale to Complainant, for a price in excess of out-of-pocket costs. Based on submitted evidence Respondent appears to have been involved in a past UDRP case [See Lockheed Martin Corporation v. N Rahmany et al., FA 1612646 (Nat. Arb. Forum April 17, 2015) (suspending <lockheedmartin.services> and <lockheedmartin.systems> domain names registered by N Rahmany)] where he was found to be in bad faith as per Policy ¶ 4(b)(ii).
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 has established in full, pursuant to evidence submitted, its rights under Policy ¶ 4(a)(i). Respondent’s <navistardefense.technology> and <navistardefense.systems> domain names are confusingly similar to Complainant’s NAVISTAR mark as they incorporate the mark entirely and merely add the descriptive term “defense” as well as the “.technology” or “.systems” gTLD suffixes. Complainant has provided evidence that the term “defense” relates to its NAVISTAR mark and therefore the disputed domain names create an association with the NAVISTAR mark that likely causes confusion. It is established case law that wherever a term descriptive of a complainant’s business is added to a fully incorporated mark along with a gTLD, a finding of confusing similarity follows under Policy ¶ 4(a)(i). See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002). In light of the above, Respondent’s <navistardefense.technology> and <navistardefense.systems> domain names are clearly confusingly similar to Complainant’s NAVISTAR mark as per Policy ¶ 4(a)(i).
Complainant has made a prima facie case, as per Policy ¶ 4(a)(ii), by submitting a listing of its trademarks and registrations throughout the world, that Respondent lacks rights and legitimate interests in the disputed domain names. As such, the burden has shifted 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
Respondent has failed to submit any evidence that it has any rights or legitimate interests in the disputed domain names, since he has not established that he is owner of any relevant registered rights or that he has ever been commonly known by the disputed domain names. Moreover, Complainant (as the relevant trademark owner) has never authorized Respondent to incorporate the NAVISTAR mark in any domain name registration. Pursuant to the available evidence on the record, as well as the fact that Respondent has not defended himself with regards to Policy ¶ 4(c)(ii), Respondent cannot establish himself as commonly known by the <navistardefense.technology> and <navistardefense.systems> domain names. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006)].
Further, Respondent has no claim of use-based rights on the disputed domain names as he has failed to make any active use of the <navistardefense.technology> and <navistardefense.systems> domain names, and has only offered them for sale to Complainant for a price in excess of out-of-pocket costs, which demonstrates neither a bona fide offering of goods or services, nor a legitimate non-commercial or fair use. The disputed domain names appear to be parked pages, illustrating a clear lack of commercial use on behalf of the registrant. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006); see also Baylor Univ. v. Red Hot Web Gems, Inc., FA 1082178 (Nat. Arb. Forum Dec. 3, 2007). Therefore, Respondent has failed to prove any active use of the disputed domain names and as such has failed to substantiate either a bona fide offering of goods or services as per Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use as per Policy ¶ 4(c)(iii).
Respondent’s offer to sell the disputed domain names to the trademark owner for a price of $495 per domain name, in excess of the applicable official fee of $24.99 per domain name, evidences no rights or legitimate interests. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007). Accordingly, Respondent has no rights and legitimate interests under Policy ¶ 4(a)(ii).
As mentioned above Respondent has no legitimate rights or interests to the disputed domain names linked to his opting to register them. The fact that Respondent has contacted Complainant shortly after the registrations and attempted to sell the disputed domain names for twenty-times the amount of the cost to register the names, indicates that the registrations were made for that purpose and as such is evidence of bad faith registration as per Policy ¶ 4(b)(i). See Am. Online, Inc. v. Prijic, FA 112639. Therefore, Respondent has clearly sought compensation for the <navistardefense.technology> and <navistardefense.systems> domain names in excess of out-of-pocket costs, illustrating bad faith under Policy ¶ 4(b)(i).
The fact that Respondent has previously been involved in similar bad faith registrations, as per relevant UDRP decision [See Lockheed Martin Corporation v. N Rahmany et al., FA 1612646 (Nat. Arb. Forum April 17, 2015) (suspending <lockheedmartin.services> and <lockheedmartin.systems> domain names registered by N Rahmany)] is evidence of a pattern of bad faith domain name registrations, as per Policy ¶ 4(b)(ii). See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005); see also YAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001). Therefore, Respondent has demonstrated bad faith registration under Policy ¶ 4(b)(ii).
In light of the above, Respondent’s inactive holding of both <navistardefense.technology> and <navistardefense.systems> domain names constitutes non-exclusive bad faith as per Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000).
Finally, it is evident that Respondent’s purpose of registering the disputed domain names was to offer them for sale to Complainant, and as such the registrations were made and used in bad faith, as per Policy ¶ 4(b)(i). Respondent’s actual knowledge of Complainant and its rights derives from Respondent’s promptness in corresponding with Complainant, soon after the registration of the disputed domain names, and this clearly leads to the conclusion that Respondent registered the <navistardefense.technology> and <navistardefense.systems> domain names in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <navistardefense.technology> and <navistardefense.systems> domain names be TRANSFERRED from Respondent to Complainant.
Eleni Lappa, Panelist
Dated: June 8th 2015
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