Bechtel Group, Inc. v. Eliza Dushku
Claim Number: FA1508001631725
Complainant is Bechtel Group, Inc. (“Complainant”), represented by Mark A. Steiner of Duane Morris, LLP, California, United States. Respondent is Eliza Dushku (“Respondent”), Albania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <betchel.com>, registered with 2030138 Ontario Inc. dba NamesBeyond.com and dba GoodLuckDomain.com.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 3, 2015; the Forum received payment on August 3, 2015.
On August 4, 2015, 2030138 Ontario Inc. dba NamesBeyond.com and dba GoodLuckDomain.com confirmed by e-mail to the Forum that the <betchel.com> domain name is registered with 2030138 Ontario Inc. dba NamesBeyond.com and dba GoodLuckDomain.com and that Respondent is the current registrant of the name. 2030138 Ontario Inc. dba NamesBeyond.com and dba GoodLuckDomain.com has verified that Respondent is bound by the 2030138 Ontario Inc. dba NamesBeyond.com and dba GoodLuckDomain.com 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 August 5, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 25, 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@betchel.com. Also on August 5, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 28, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Complainant is the holding company for a large group of international construction, procurement, and engineering companies based in the United States, which claims to have completed more than 25,000 projects in over 160 countries on all seven continents. Complainant has registered the BECHTEL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,047,369, registered August 31, 1976), which demonstrates Complainant’s rights in its mark. See Attached Annex 4 for a copy of the above-mentioned USPTO registration and Attached Annexes 5-10 for copies of Complainant’s other numerous USPTO registrations. The <betchel.com> domain name is confusingly similar to Complainant’s mark as it merely transposes two letters of Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.”
Complainant further alleges that Respondent has no rights or legitimate interests in or to the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent initially parked the disputed domain name at Sedo.com where it generated revenue for Respondent. As of July 31, 2015, however, Respondent’s domain name no longer resolved to a website. Instead, the message “This webpage is not available” was displayed. Attached Annex 15 shows screenshots demonstrating that the disputed domain name is no longer available.
Complainant further alleges that Respondent has registered and is using the disputed domain name in bad faith. First, Respondent has engaged in a pattern of registering domain names to prevent trademark and service mark owners from using those domains, thereby engaging in conduct proscribed by Policy ¶ 4(b)(ii). Second, Respondent has registered the domain name to disrupt Complainant’s business. Specifically, Respondent uses the disputed domain name to advertise and promote directly competing products and services. Third, Respondent uses the likelihood of confusion between the disputed domain name and Complainant to attract Internet users for commercial gain. Respondent uses the disputed domain name to post hyperlinks to Complainant’s competitors. Finally, Respondent has failed to make an active use of the disputed domain name, has engaged in the tactic of typosquatting, and had actual and/or constructive knowledge of the disputed domain name at the time of domain name registration, thereby violating Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was registered on April 9, 2002.
As the Respondent has failed for file a Response in this matter; therefore the Panel shall make its determination based on the reasonable and undisputed allegations of the Complainant. As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark, that the Respondent has no rights or legitimate interests in or to the disputed domain name, and that the Respondent has engaged in bad faith use and registration of the disputed domain name.
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.”).
The disputed domain name is confusingly similar to Complainant’s registered trademark. The Complainant has registered the BECHTEL mark with the USPTO (e.g., Reg. No. 1,047,369, registered August 31, 1976) which adequately demonstrates its interest in that trademark for these proceedings.
The Respondent mere misspells Complainant’s trademark and adds the gTLD “.com” to arrive at the disputed domain name.
As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark.
The Panel further finds that the Respondent as no rights or legitimate interests in or to the disputed domain name. Complainant contends that Respondent is not commonly known by the disputed domain name or any derivative of Complainant’s mark. Further, Complainant argues that Respondent is not authorized to use Complainant’s mark. The WHOIS information merely lists “Eliza Dushku” as registrant. Complainant alleges that Respondent falsified the name, phone number, and address listed in the WHOIS information. The documents provided by the Complainant seem to support that conclusion. See Annex 12 for additional information regarding the name, phone number, and address as listed in the WHOIS information. As the Respondent has failed to submit any information for the Panel to consider, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) and, therefore, the Respondent has no rights or legitimate interest in or to the disputed domain name.
Further, Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Specifically, Complainant asserts that Respondent initially parked the disputed domain name by engaging the parking services offered at <sedo.com>, where it generated revenue for Respondent. See Compl., at Attached Annex 13 (<sedo.com> screenshots detailing services offered). Panels have agreed that engaging parking services fails to evince rights or legitimate interests under Policy ¶¶ 4(c)(i) and (iii), especially where a respondent presumably commercially gains as a result of parking. See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)). Further, as of July 31, 2015, however, Respondent’s domain no longer resolved to an active website. Instead, Complainant states that the resolving webpage displayed the message “This webpage is not available.” See Attached Annex 15 for screenshots demonstrating that the disputed domain name is no longer available. Past panels have concluded that there is not a bona fide offering of goods or services or a legitimate noncommercial or fair use where a respondent’s disputed domain name is not used in connection with an active website. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Accordingly, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii) and, therefore, has no rights or legitimate interests in or to the disputed domain name.
Complainant argues that Respondent has engaged in a pattern of registering domain names to prevent trademark and service mark owners from using those domains, thereby engaging in conduct proscribed by Policy ¶ 4(b)(ii). Complainant cites two prior UDRP decisions against Respondent: Starkey Labs, Inc. v. Dushku, D2013-1679, (WIPO November 21, 2013) (for <starkeyhearing.com>); Constant Contact, Inc. v. Dushku, D2013-2216 (WIPO February 10, 2014) (for <constant-contact.com>). Past panels have found a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii) when a respondent was subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Accordingly, the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(ii).
Complainant further alleges that Respondent has registered the domain name to disrupt Complainant’s business per Policy ¶ 4(b)(iii). Specifically, Complainant argues that Respondent used the disputed domain name for a website that features sponsored-link advertisements for websites advertising and promoting directly competing products and services. Attached Annexes 14 and 17 show screenshots of the webpages that, prior to July 31, 2015, resolved from Respondent’s competing hyperlinks and the Respondent’s advertisements. Past panels have found bad faith pursuant to Policy 4(b)(iii) where a respondent’s disputed domain name resolves to websites that list links to competitors of the complainant. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
As such, the Panel finds that Respondent engaged in conduct proscribed by Policy ¶ 4(b)(iii).
Complainant also contends that Respondent uses the likelihood of confusion between the disputed domain name and Complainant to attract Internet users for commercial gain by using the disputed domain name to post hyperlinks to Complainant’s competitors. Past panels have found bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where a respondent’s disputed domain name resolved to a website that displayed links to competing products and services. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Accordingly, the Panel finds that Respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Complainant also argues that Respondent has failed to make an active use of the disputed domain name after July 31, 2015, thereby violating Policy ¶ 4(a)(iii). Complainant argues that Respondent has demonstrated bad faith pursuant to Policy ¶ 4(a)(iii) because the webpage that resolved from the disputed domain name was no longer available as of July 31, 2015. Instead, the message “This webpage is not available” is displayed. A respondent’s non-use of a disputed domain name constitutes bad faith registration and use. See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
As such, the Panel concludes that Respondent demonstrated bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant further alleges that Respondent has engaged in the practice of typosquatting by misspelling Complainant’s mark with the intent to intercept and siphon off traffic from its intended destination. It constitutes bad faith use and registration pursuant to Policy ¶ 4(a)(iii) when a respondent’s disputed domain name merely misspelled the complainant’s mark. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark).
Accordingly, the Panel finds that, as the letters “ch” and “t” in the mark are transposed in the disputed domain name, Respondent has exhibited typosquatting behavior and thereby registered and is using the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent had actual and/or constructive knowledge of the disputed domain name at the time of the domain name registration, thereby violating Policy ¶ 4(a)(iii). Complainant argues that by virtue of its service and trademark registrations with the USPTO, Respondent was deemed to have constructive notice of its mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to Complainant’s fame and notoriety, Respondent had actual knowledge of the mark and Complainant’s rights. 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; see also 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).
Therefore, for the multiple reasons stated above, the Panel finds that Respondent registered and used the disputed domain name in bad faith 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 <betchel.com> domain name transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: September 1, 2015
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