Navistar International Corporation v. Haris Mamounthat
Claim Number: FA1605001673819
Complainant is Navistar International Corporation (“Complainant”), represented by Brett A. August of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is Haris Mamoun (“Respondent”), Bosnia and Herzegovina.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <navistar.international>, registered with GoDaddy.com, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically May 6, 2016; the Forum received payment May 6, 2016.
On May 9, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <navistar.international> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and 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 11, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 2016, 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@navistar.international. Also on May 11, 2016, 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 June 2, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant’s Contentions in this Proceeding:
Complainant uses the NAVISTAR trademark in connection with its truck development business. Complainant uses the INTERNATIONAL mark in connection with its production of commercial and military trucks. Complainant registered the NAVISTAR brand with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,472,594, registered Jan. 12, 1988), which demonstrates rights in the mark. See Compl., at Attached Ex. B. Complainant also registered the INTERNATIONAL mark with the USPTO (e.g., Reg. No. 2,381,360, registered Aug. 29, 2000). See Compl., at Attached Ex. F. Respondent’s <navistar.international> domain name is confusingly similar to the NAVISTAR and INTERNATIONAL marks as it includes both marks in their entirety and adds only a period between them.
Respondent has no rights or legitimate interests in the <navistar.international> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <navistar.international> domain name. Rather, Respondent is engaged in inactive holding of the domain name.
Respondent’s parking of the <navistar.international> domain name and its subsequent inactive holding of the domain name constitutes bad faith registration and use. Respondent’s combination of Complainant’s NAVISTAR and INTERNATIONAL marks demonstrates that Respondent had actual knowledge of Complainant's rights in the NAVISTAR and INTERNATIONAL marks.
Respondent’s Contentions in this Proceeding:
Respondent did not submit a response. The Panel notes, however, the correspondence in the record in which Respondent consents conditionally to the transfer of the <navistar.international> domain name with the quid pro quo that he receive the amount Respondent paid for the domain name (Correspondence—Respondent, May 25, 2016). The Panel also notes that Respondent registered the <navistar.international> domain name April 23, 2016.
Panel Note: Consent to Transfer:
The Forum received documentation submitted from Respondent to Complainant, which is identified in this proceeding as “Other Correspondence.” In this document, Respondent purports to consent to the transfer of the <navistar.international> domain name if Respondent is refunded the amount it paid for the domain name. The Panel notes that Complainant, the Panel and the Forum are not obligated to accept any such conditioned consent.
Respondent may have consented to transfer the <navistar.international> domain name to Complainant. However, after the initiation of this proceeding, GoDaddy.com, LLC placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. As a result, the Panel finds that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the <navistar.international> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) But the Panel notes: (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
However, here the Panel notes that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel. The Panel finds as well that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
Therefore, the Panel finds that the better course is to analyze the case under the elements of the UDRP.
Complainant established that it has rights to and legitimate interests in the two marks contained within the disputed domain name; Respondent has no such rights or legitimate interests.
Respondent registered a disputed domain name that contains two marks that are Complainant’s protected legal property without consent or permission to use them in a domain name; such disputed domain name is confusingly similar to Complainant’s protected marks.
Respondent registered and used by parking and placing information on the site of 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 Complainant to 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.
Given 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(f), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel 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 (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.”).
Identical or Confusingly Similar:
Complainant uses the NAVISTAR trademark in connection with its truck development business. Complainant uses the INTERNATIONAL mark in connection with its production of commercial and military trucks. Complainant registered the NAVISTAR brand with the USPTO (e.g., Reg. No. 1,472,594, registered Jan. 12, 1988), which demonstrates rights in the mark. See Compl., at Attached Ex. B. Complainant also registered the INTERNATIONAL mark with the USPTO (e.g., Reg. No. 2,381,360, registered Aug. 29, 2000). See Compl., at Attached Ex. F. Registration with the USPTO establishes rights in a trademark, even where the respondent lives in a different country. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man). Therefore, notwithstanding Respondent’s reported residence in Bosnia Herzegovina, the Panel finds that Complainant demonstrated rights in the NAVISTAR and INTERNATIONAL marks under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <navistar.international> domain name is confusingly similar to the NAVISTAR and INTERNATIONAL marks as it includes both marks in their entirety and adds only a period between them, making the INTERNATIONAL mark a top-level domain (“TLD”). Panels have found such alterations to marks to support findings of confusing similarity under Policy ¶ 4(a)(i). See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name). In some situations, panels have actually deemed TLDs to enhance confusing similarity to the extent that they may relate in some fashion to an aspect of a complainant’s business. See Robert Half International Inc. v. Shawn Downey, FA 1603347 (Forum Mar. 11, 2015) (“As compared to the ROBERT HALF INTERNATIONAL dominant portion of Complainant’s related marks, the <roberthalf.international> domain name lacks the space between the terms ROBERT and HALF and replaces the later space, between HALF and INTERNATIONAL, with a period, “.,” thus closely mapping Complainant’s related trademarks.”). The Panel therefore agrees that Respondent’s <navistar.international> domain name is confusingly similar to the NAVISTAR and INTERNATIONAL marks under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to both of Complainant’s protected marks; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 argues that Respondent has no rights or legitimate interests in the <navistar.international> domain name. First, Complainant asserts that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information regarding the <navistar.international> domain name lists “Haris Mamoun” as registrant. Complainant also asserts that it has not given Respondent permission to use its NAVISTAR or INTERNATIONAL marks. The Panel notes as well that Respondent failed to submit a response in this proceeding. Therefore, in light of the available evidence, the Panel agrees that no basis suggests that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (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).
Further, Complainant argues that Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <navistar.international> domain name. Rather, Complainant contends that Respondent is engaged in inactive holding of the domain name. The Panel notes, however, that the record shows that the disputed domain name resolves to a parked website featuring hyperlinks to the websites of Complainant’s competitors, including hyperlinks entitled “Isuzu NPR Engine Parts” and “Used Peterbilt Trucks.” See Compl., at Attached Ex. I. Panels have found that neither inactive holding nor the inclusion of competing hyperlinks constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not 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)); see also Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”); see also Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Whether the Panel finds Respondent to have engaged in inactive holding of the <navistar.international> domain name or finds that Respondent used the domain name to display competing hyperlinks, the Panel agrees that Respondent’s use of the <navistar.international> domain name constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant contends that Respondent’s parking of the <navistar.international> domain name and its subsequent inactive holding of the domain name constitutes bad faith registration and use. The Panel notes, however, that the record shows that the disputed domain name resolves to a parked website featuring hyperlinks to the websites of Complainant’s competitors, including hyperlinks entitled “Isuzu NPR Engine Parts” and “Used Peterbilt Trucks.” See Compl., at Attached Ex. I (stating: “This Web page is parked for FREE, courtesy of GoDaddy.com.”). Panels have found inactive holding to be evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Panels have also deemed a respondent’s purported diversion of Internet users to competitors through competing hyperlinks constitutes bad faith disruption under Policy ¶ 4(b)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (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); see also Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”); see also Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that Respondent made an active use of the domain name by parking it and adding competing hyperlinks and the Panel finds that this is bad faith registration and use under Policy ¶ 4(a)(iii). Since the Panel finds that Respondent hosted competing hyperlinks on a parked website, the Panel finds bad faith disruption under Policy ¶ 4(b)(iii).
Complainant argues that Respondent’s combination of Complainant’s NAVISTAR and INTERNATIONAL marks demonstrates that Respondent had actual knowledge of Complainant's rights in the NAVISTAR and INTERNATIONAL marks. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds here that Respondent had actual knowledge of Complainant's marks and rights in them and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and parked the disputed domain name adding competing hyperlinks to the domain name and that such conduct is bad faith; Complainant satisfied the elements of ICANN 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 <navistar.international> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 17, 2016.
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