Bechtel Group, Inc. v. Bill Dudley
Claim Number: FA1509001636223
Complainant is Bechtel Group, Inc. (“Complainant”), represented by Mark A. Steiner of Duane Morris, LLP, California, USA. Respondent is Bill Dudley (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <becbtel.com>, registered with Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA.
The undersigned certifies that he as 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 September 2, 2015; the Forum received payment on September 2, 2015.
On September 4, 2015, Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA confirmed by e-mail to the Forum that the <becbtel.com> domain name is registered with Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA and that Respondent is the current registrant of the name. Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA has verified that Respondent is bound by the Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA 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 September 8, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 28, 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@becbtel.com. Also on September 8, 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 October 2, 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.
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
i) Complainant has registered the BECHTEL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,047,369, registered Aug. 31, 1976). The mark is used in connection with construction, repair, and modernization of installations and apparatus for utility, industrial, and commercial companies, governments, and others. The mark is also used in connection with supervisory services to utility, industrial, and commercial companies, governments, and others. Respondent’s <becbtel.com> domain name is confusingly similar to the mark because the domain name only differs by the substitution of the letter “h” for “b,” as well as the addition of the generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests. Respondent is not commonly known as the disputed domain name, nor is Respondent a licensee of Complainant. Further, Respondent is using the domain name to send fraudulent e-mails, through which Respondent poses as Complainant.
iii) Respondent has engaged in bad faith registration and use. Respondent is using the domain name in connection with a fraudulent e-mail scheme aimed at improperly obtaining personal information. Further, Respondent had actual knowledge of Complainant’s trademark rights in the BECHTEL mark at the time the disputed domain name was registered.
B. Respondent
Respondent failed to submit a timely response. The Panel notes that <becbtel.com> was registered on July 27, 2015.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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 has registered the BECHTEL mark with the USPTO (e.g., Reg. No. 1,047,369, registered Aug. 31, 1976). The mark is used in connection with construction, repair, and modernization of installations and apparatus for utility, industrial, and commercial companies, governments, and others. The mark is also used in connection with supervisory services to utility, industrial, and commercial companies, governments, and others. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the <becbtel.com> domain name is confusingly similar to the mark. Complainant notes that the domain name only differs by the substitution of the letter “h” for “b,” which Complainant contends is typosquatting. Further, Complainant correctly notes that the gTLD “.com” offers no distinguishing relief for Respondent. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Prior panels have established instances of typosquatting where the respondent is trying to take advantage of Internet users who happen to make a common spelling error. See Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (holding that typosquatting “diverts Internet users who misspell Complainant’s mark . . . ”). Further, prior panels have found evidence of a confusing similarity where the domain name differs from the mark by only a single letter, thus consisting of typosquatting. See Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typosquatting, which was evidence that the domain name was confusingly similar to the mark). Thus, the Panel finds that the <becbtel.com> domain name is confusingly similar to the mark under Policy ¶ 4(a)(i).
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 asserts that Respondent is not commonly known as the <becbtel.com> domain name, nor is Respondent in possession of licensing rights that would allow him to use the BECHTEL mark in domain names. The Panel notes that “Bill Dudley” is listed as the registrant of record for the disputed domain name. Complainant further argues that “Bill Dudley” is also the name of Complainant’s Chief Executive Office (CEO). Complainant claims that its CEO is not the registrant of the disputed domain name. While it is entirely possible that the registrant could go by the name “Bill Dudley,” Complainant claims that this shows that Respondent has provided misleading or even false Whois information, which is additional evidence that Respondent is not commonly known as the disputed domain name. The Panel further notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
Complainant argues that Respondent has engaged in bad faith registration and use. While Complainant does not make contentions that neatly fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated under the totality of the circumstances. 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); Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Also, Complainant asserts that its trademark registrations for the BECHTEL mark existed well before the registration of the disputed domain name. Complainant argues that Respondent had actual or constructive knowledge of Complainant's rights in the mark. The Panel infers from the fame of the Complainant’s mark and Respondent’s manner of use of the disputed domain name that Respondent had actual knowledge of the mark and Complainant's rights, and thus finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). 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."); 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <becbtel.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: October 12, 2015
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