Navigant Consulting, Inc. v. Anthony Tomaska / Magnificent Mile Productions
Claim Number: FA1506001621900
Complainant is Navigant Consulting, Inc. (“Complainant”), represented by Craig A. Beaker of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is Anthony Tomaska / Magnificent Mile Productions (“Respondent”), represented by Steven L. Rinehart, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <navigant.construction>, <navigantchicago.co>, and <naviganttrading.com>, registered with GoDaddy.com, 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.
Ho Hyun Nahm, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 1, 2015; the Forum received payment on June 1, 2015.
On June 1, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <navigant.construction>, <navigantchicago.co>, and <naviganttrading.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 4, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 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@navigant.construction, postmaster@navigantchicago.co and postmaster@naviganttrading.com. Also on June 4, 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 June 8, 2015.
On June 12, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted an Additional Submission to the FORUM which was timely received on June 15, 2015.
Respondent submitted an Additional Submission to the FORUM which was timely received on June 17, 2015.
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 uses the NAVIGANT mark in connection with its business consultation services and financial management services. Complainant holds many trademark registrations, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,452,419, registered June 24, 2008), which demonstrates rights in the mark. Respondent’s <navigant.construction>, <navigantchicago.co>, and <naviganttrading.com> domain names incorporate the NAVIGANT mark fully and merely add either the generic top-level domain (“gTLD”) “.construction” or “.com”, or the country-code top-level domain (“ccTLD”) “.co”, and the geographic descriptor “Chicago” or the descriptive term “trading” to the mark (each of which is descriptive of Complainant and its services), creating confusing similarity.
Respondent has no rights or legitimate interests in the <navigant.construction>, <navigantchicago.co>, and <naviganttrading.com> domain names. Respondent is not commonly known by the disputed domain names or the NAVIGANT mark, although it has claimed in the past to be the principal officer of “Navigant Development, LLC”. Respondent has not been authorized by Complainant to incorporate the NAVIGANT mark in any domain registrations. Also, Respondent’s domain names have resolved to parked pages displaying multiple hyperlinks, which may divert Internet users to competitors of Complainant. See Compl., at Attached Ex. L. Such use constitutes no bona fide offering of goods or services or any legitimate noncommercial or fair use.
Respondent has inactively held the disputed domain names, and had registered and used the domain names with actual or at least constructive knowledge of the NAVIGANT mark and Complainant’s rights in the mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
B. Respondent
The NAVIGANT mark is a generic word in the Latin, French, and many other Romantic languages and means “sailing.” As such, the Complainant’s trademark rights in the term “NAVIGANT” are not enforceable against the disputed domain names. Respondent ‘s disputed domain names are not confusingly similar to the NAVIGANT mark as the terms “construction” and “trading” refer to Respondent’s business in the construction, sale, and lease of new property.
Respondent’s <navigant.construction>, <navigantchicago.co>, and <naviganttrading.com> domain names have not accrued pay-per-click revenue from the hyperlinks included on the parking pages associated with the names.
Complainant has failed to meet its burden of showing Respondent’s bad faith.
The Panel notes from the WHOIS information that Respondent’s <navigant.construction>, <navigantchicago.co>, and <naviganttrading.com> domain names were registered on February 19, 2014, February 7, 2011, and April 4, 2012, respectively.
C. Additional Submissions
1. Complainant’s Additional Submission:
Respondent makes no claim and provides no evidence of bona fide use of the disputed domain dames by Respondent or anyone else. Pay-per-click parking pages, passive holding, and inactive use do not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name and instead demonstrate Respondent’s bad faith. Respondent has been in control of the disputed domain names and the linked content at all relevant times and elected not to instruct the Registrar to remove the pay-per-click parking page, although it had the power to do so.
Navigant Development, LLC lacks standing
In support of this third party’s supposed rights, Respondent cites (1) a business registration for “Navigant Development, LLC”, (2) a Federal Tax ID number, (3) the 2006 receipt for the purchase of domain names <navigant.construction>, <navigantchicago.co>, and <naviganttrading.com> by Magnificent Mile Productions, the Respondent. However, they are inadequate to demonstrate that Navigant Development, LLC ever conducted business or acquired trademark rights in the NAVIGANT mark, there is no evidence that Navigant Development LLC owns disputed domain names, none of which are at issue in this proceeding. Respondent has provided no evidence that Navigant Development, LLC is the current owner or otherwise has made any legitimate use of the name or mark NAVIGANT. Even if it had some type of rights in the name or mark NAVIGANT, Respondent has provided no argument as to why it would be entitled to rely on those rights in defending this action.
Respondent has no valuable basis to dispute Navigant’s rights
A UDRP proceeding is not the proper forum for a collateral attack on the validity of Navigant’s incontestable trademark registrations. As to Respondent’s arguments relating to priority, when Respondent (or Navigant Development, LLC) purportedly adopted the name “Navigant Development” in 2006, Navigant was a half-billion dollar global publicly-traded consulting company with significant media publicity and accolades, and principal office in Chicago. Navigant owns valid federal registrations for the NAVIGANT marks for use with consulting services with dates of first use of at least as early as June 14, 1999. Consequently, Navigant’s federal registrations for the NAVIGANT marks conclusively establish Navigant’s rights long before Respondent’s wrongful domain name registrations in 2011, 2012 and 2014, or Navigant Development, LLC’s purported founding in 2006. Navigant has conclusively established its prior trademark rights in the NAVIGANT marks. Proof of secondary meaning is not required when a party has established registered trademark rights. Navigant’s submitted evidence establishes that it owns “strong trademark rights in the NAVIGANT marks through its extensive advertising and use in the United States and throughout the world.”
Pending Court Proceeding
Respondent notes the existence of pending federal litigation between the parties related to FA1503001611873. No claim in the federal litigation refers to the disputed domain names at issue in this action. Moreover, Respondent does not seek to cancel Navigant’s NAVIGANT trademarks or otherwise advance any argument which would have any bearing on the arguments advanced in the Complaint in this action. The fact that litigation exists between the parties as to another domain name has no bearing on the ability of the Panel to render a ruling as to the domain names at issue here. If the Panel believes, the pending legal proceedings in the district court may have bearing on its decision in this matter, Navigant requests that the panelist suspend this proceeding until the district court issues a final determination on the issue(s) the panel believes must be decided.
2. Respondent’s Additional Submission:
The disputed domain names are not registered in the name of Magnificent Mile Productions, nor does this d/b/s have any relevance to the case. The Respondent, Anthony Tomaska, is listed as the registrant of the disputed domain names as shown in Annex AA hereto, but not as Magnificent Mild Productions. Magnificent Mild Productions was formed in 1993. Respondent registered the domain name and a corporation making use of the “Navigant” word before the Complainant ever applied for trademark registration. The Respondent submits the lease dated April 28, 2006 showing that Navigant Development LLC was entering leases for real property Navigant owned as early as 2006. This is bona fide use of the expression NAVIGANT in 2006. This lease was signed by the Respondent for Navigant Development, LLC by Anthony Tomaska.
The term “Navigant” is a generic Latin word which is further attested by the Latin Dictionary entry annexed as Annex AD.
Respondent contends it had organized a limited liability company in 2006 which bears the name “Navigant Development”, which currently owns real property in that name. See Resp., at Attached Annex A (business entity detail report). A recent UDRP case between the parties in contest here was found in favor of Complainant, resulting in the transfer of the <navigantenergy.com> domain name to Complainant. See Navigant Consulting, Inc. v. Anthony Tomaska / Magnificent Mile Productions, FA 1611873 (Nat. Arb. Forum May 7, 2015) (finding, “Navigant Development and Respondent are not the same entity, so Respondent may not assert any priority claim based on the use, if any, by Navigant Development.”). Respondent submits that this previous decision was based on flawed legal reasoning and application of facts, and that the transfer order in the case was stayed, and the decision in the current case is the subject of de novo review before the U.S. District Court for the District of Illinois (Case No. 15—CV-4505).
In situations where concurrent court proceedings are pending, as is the situation with respect to the instant Complaint, some panels have chosen to proceed with the UDRP filing. See eProperty Direct LLC v. Miller, FA 836419 (Nat. Arb. Forum Jan. 3, 2007) (holding that the panel could decide the dispute under Rule 18(a) of the Policy “since the legal proceedings referred to by the parties appear to be concluded and Orders made. Moreover,… those Orders do not touch directly on the disposition of the disputed domain name or on the parties’ intellectual property rights.”); see also W. Fla. Lighting v. Ramirez, D2008-1122 (WIPO Oct. 2, 2008) (deciding to proceed under the UDRP despite concurrent court proceedings because “the Panel does not find that it is necessary or advantageous to await a judicial determination of the issues raised in the federal litigation in order to reach a decision strictly under the Policy. This administrative proceeding under the Policy concerns only control of the Domain Name, not any of the other remedies at issue in the federal litigation. It is not binding on the court, and it does not preclude the prosecution of any claims, defenses, or counterclaims in the federal litigation”); see also Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (choosing to proceed under the UDRP despite concurrent court proceedings for multiple reasons, including that the proceedings appeared to be filed in a court that did not commonly adjudicate intellectual property issues and that the court proceedings were filed by the respondent on the same day the response in these proceedings was filed).
Complainant contends in its Additional Submission to the effect that the existence of litigation between the parties as to another domain name has no bearing on the ability of the Panel to render a ruling as to the domain names at issue here.
As paragraph 4(k) of the UDRP indicates, the UDRP does not bar either the complainant or the respondent from seeking judicial remedies. Paragraph 18(a) of the Rules gives the panel discretion to suspend, terminate or continue a UDRP proceeding where the disputed domain name is the subject of other pending legal proceedings.
The Panel notes that the pending court case at issue is not for the disputed domain names but for another domain name incorporating the term “NAVIGANT” which is common in the disputed domain names. Furthermore, the registration dates of the disputed domain names are different from that of the domain name in the pending court case. As such, the Panel agrees with Complainant that the existence of litigation between the parties as to another domain name has no bearing on the ability of the Panel to render a ruling as to the domain names at issue here. Therefore, the Panel chooses to proceed with the current proceedings.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names 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.
Complainant uses the NAVIGANT mark in connection with its business consultation services and financial management services. Complainant holds many trademark registrations, including with the USPTO (e.g., Reg. No. 3,452,419, registered June 24, 2008), arguing its Policy ¶ 4(a)(i) rights in the mark. Panels have agreed where valid USPTO registrations exist in a given mark, Policy ¶ 4(a)(i) rights are evidenced through such registrations. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (holding that the complainant’s trademark registrations with the USPTO had established rights in the BLOOMBERG mark).
Complainant argues that Respondent’s <navigant.construction>, <navigantchicago.co>, and <naviganttrading.com> domain names incorporate the NAVIGANT mark fully and merely add either the gTLD “.construction” or “.com”, or the ccTLD “.co”, and the geographic descriptor “Chicago” or the descriptive term “trading” to the mark (each of which is descriptive of Complainant and its services), creating confusing similarity. Panels have agreed that such alterations to an established mark are insufficient in rebutting a finding of confusing similarity. Respondent argues that Respondent’s disputed domain names are not confusingly similar to the NAVIGANT mark as the terms “construction” and “trading” refer to Respondent’s business in the construction, sale, and lease of new property. The Panel finds that such alterations to an established mark are insufficient in rebutting a finding of confusing similarity in that all of them are considered as being descriptive elements. See Canyon Bicycles GmbH v. Domains by Proxy, LLC / Rob van Eck, D2014-0206 (WIPO March 14, 2014) (finding the domain name <canyon.bike> confusingly similar to CANYON without analyzing the .bike [gTLD]); see also Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”); see also Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”); see also BPM Prods., Inc. v. Bog, FA 125814 (Nat. Arb. Forum Nov. 14, 2002) (“Respondent’s addition of “Salem” does not distinguish the domain name from Complainant’s mark because “Salem” is the city where Complainant’s Halloween festival takes place. Therefore, “Salem” has an obvious relationship with the HAUNTED HAPPENINGS mark, and the <salemhauntedhappenings.com> domain name is confusingly similar to the mark.”); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Therefore, in light of available precedent on point with Respondent’s alterations to the NAVIGANT mark, the Panel finds the <navigant.construction>, <navigantchicago.co>, and <naviganttrading.com> domain names to be confusingly similar to the Complainant’s mark under Policy ¶ 4(a)(i).
While Respondent contends that the <navigant.construction>, <navigantchicago.co>, and <naviganttrading.com> domain names are comprised of common and generic/descriptive term and as such cannot be found to be identical/confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain names are identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Respondent emphasizes in its Additional Submission that the NAVIGANT mark is a generic word in the Latin, French, and many other Romantic languages and means “sailing,” and thus the Complainant’s trademark rights in the term “NAVIGANT” are not enforceable against the disputed domain names. The Panel is of the view that not all of the dictionary words are generic. Whether or not a term is generic must be determined in connection with relevant goods or services. The Panel does not think that the term “NAVIGANT” is generic in connection with Complainant’s business consultation services and financial management services.
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 contends that Respondent has no rights or legitimate interests in the <navigant.construction>, <navigantchicago.co>, and <naviganttrading.com> domain names. Complainant posits that Respondent is not commonly known by the disputed domain names or the NAVIGANT mark, although it has claimed in the past to be the principal officer of “Navigant Development, LLC”. See Navigant Consulting, Inc. v. Anthony Tomaska / Magnificent Mile Productions, FA 1611873 (Nat. Arb. Forum May 7, 2015) (finding, “Navigant Development and Respondent are not the same entity, so Respondent may not assert any priority claim based on the use, if any, by Navigant Development.”). Further, Respondent has not been authorized by Complainant to incorporate the NAVIGANT mark in any domain registrations. As such, the Panel finds no basis in the available evidence to find Respondent commonly known by the disputed domain names per Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Next, Complainant alleges Respondent’s domain names have resolved to GoDaddy parked pages displaying multiple hyperlinks, which may divert Internet users to competitors of Complainant. See Compl., at Attached Ex. L (links unreadable). Such use is argued by Complainant to constitute no bona fide offering of goods or services or any legitimate noncommercial or fair use. Panels have agreed that parking pages constitute no rights or legitimate interests. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Therefore, the Panel finds Respondent has established no connection of its disputed domain names with any bona fide offering of goods or services or any legitimate noncommercial or fair use.
Respondent contends in its Additional Submission that Respondent Anthony Tomaska is listed as registrant of the disputed domain names, but not as registrant of Magnificent Mild Productions. It further contends that Respondent Anthony Tomaska registered the domain name and a corporation making use of the “Navigant” word before the Complainant ever applied for trademark registration. The Respondent has submitted the lease dated April 28, 2006 showing that Navigant Development LLC was entering leases for real property Navigant owned as early as 2006. Respondent contends that this is bona fide use of the expression NAVIGANT in 2006. Respondent draws the Panel’s attention to the fact that this lease was signed by Respondent Anthony Tomaska for Navigant Development, LLC.
However, the Panel is of the view that the signed lease by Respondent for a third party Navigant Development, LLC is not sufficient evidence to demonstrate the use of the disputed domain names or “NAVIGANT” a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services in the absence of record as to what extent the name of Navigant Development, LLC had been known and in what manner its business was being conducted before the notice of the dispute. In this regard, the Panel cannot accept the Respondent’s argument that the signed lease for the Navigant Development , LLC by the Respondent is evidence for bona fide offering of goods or services under Policy ¶ 4(c)(i).
Further, Complainant argues that since their inception, the disputed domain names have not been used by Respondent in any fashion other than to resolve to a parking page. Panels have seen failure to make any active use of disputed domain names to constitute no rights or legitimate interests under Policy ¶ 4(a)(ii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Therefore, in light of Respondent’s holding of the disputed domain names without making any use of them (or asserted plans to develop them), the Panel decides no rights or legitimate interests exist under Policy ¶ 4(a)(ii).
The Panel recalls that Respondent emphasizes that the NAVIGANT mark is a generic word in the Latin, French, and many other Romantic languages and means “sailing,” and thus the Complainant’s trademark rights in the term “NAVIGANT” are not enforceable against the disputed domain names thereby indicating that the disputed domain names fall within scope of free and fair use of generic term “NAVIGANT”. As reasoned above, however, the Panel is of the view that the term “NAVIGANT” is not generic in connection with Complainant’s business consultation services and financial management services as well as Respondent’s so-called ‘lease business.’ Therefore, the Panel determines that the use of the disputed domain names incorporating the term “NAVIGANT” does not constitute a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)
The Panel agrees that while Complainant has not made arguments under Policy ¶ 4(b), such arguments are not mandatory under the Policy—so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. 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).
Complainant makes the contention that Respondent has inactively held the disputed domain names, which imputes bad faith registration and use under Policy ¶ 4(a)(iii). Panels have agreed that inactively holding a disputed domain name constitutes bad faith under the Policy. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). Further, as the pages appear to be parked GoDaddy pages, the Panel further decides that such use does not evince any good faith in registration and use of the disputed domain names.
Respondent contends that the disputed domain names <navigant.construction>, <navigantchicago.co>, and <naviganttrading.com> have not accrued pay-per-click revenue from the hyperlinks included on the parking pages associated with the names. Against this allegation, Complainant rebuts that Respondent has been in control of the disputed domain names and the linked content at all relevant times and elected not to instruct the Registrar to remove the pay-per-click parking page, although it had the power to do so. The Panel agrees with Complainant in that Respondent is responsible for the content of the websites resolved by the disputed domain names. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding bad faith registration and use even where the “respondent [was] adamant that he [was] not receiving click-through referral fees generated from the websites at which the Disputed Domains [were] ‘parked’ . . . for a number of reasons, the panel [found] that it [was] irrelevant whether or not respondent [was] personally receiving any of those click-through referral fees . . .”).
Therefore, this Panel finds Respondent registered and used the <navigant.construction>, <navigantchicago.co>, and <naviganttrading.com> domain names in bad faith pursuant to a non-exclusivity analysis of Policy ¶ 4(a)(iii).
Lastly, Complainant also contends that in light of the numerous trademark registrations for the NAVIGANT mark, it is inconceivable that Respondent could have registered the <navigant.construction>, <navigantchicago.co>, and <naviganttrading.com> domain names without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel infers due to the notoriety of the Complainant’s mark at the time of registration of the disputed domain names, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <navigant.construction>, <navigantchicago.co>, and <naviganttrading.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
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