Bechtel Group, Inc. v. lucky shank
Claim Number: FA1709001750029
Complainant is Bechtel Group, Inc. (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is lucky shank (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bechtelinc.us>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 21, 2017; the Forum received payment on September 21, 2017.
On September
21, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <bechtelinc.us> domain name is
registered with NameCheap, Inc. and that Respondent is the current registrant
of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap,
Inc. registration agreement and has thereby agreed to resolve domain disputes
brought by third parties in accordance with the U.S. Department of Commerce’s
usTLD Dispute Resolution Policy (the “Policy”)
On September 21, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 2017 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@bechtelinc.us. Also on September 21, 2017, 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 16, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the largest construction and civil engineering company in the United States, and it undertakes construction, procurement and engineering projects worldwide.
Complainant holds a registration for the BECHTEL service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,047,369, registered August 31, 1976, and most recently renewed on October 20, 2005.
Respondent registered the <bechtelinc.us> domain name on April 23, 2017.
The domain name is confusingly similar to Complainant’s BECHTEL mark.
Respondent has not been commonly known by the domain name.
Respondent is not licensed or otherwise authorized to use Complainant’s BECHTEL mark.
Respondent does not make either a bona fide offering of goods or services by means of, or a legitimate noncommercial or fair use of, the domain name.
Rather, the domain name resolves to a blank web page with only one link displayed, which is “cgi-bin/.”
Respondent has no rights to or legitimate interests in the domain name.
The domain name creates confusion among Internet users who are seeking Complainant’s legitimate website as to the possibility of Complainant’s affiliation with it.
Respondent has failed to make any demonstrable preparations to use the domain name legitimately.
Respondent has failed to respond to Complainant’s cease and desist letters.
Respondent knew of Complainant’s rights in the BECHTEL mark when it registered the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered or is being used by Respondent in bad faith.
Given the close similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will, as applicable, draw upon UDRP precedent in rendering its decision in this proceeding.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences it considers appropriate. 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the BECHTEL service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (ForumAugust 11, 2015):
There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) .... Due to Complainant’s … USPTO registration on the principal register …, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <bechtelinc.us> domain name is confusingly similar to Complainant’s BECHTEL service mark. The domain name incorporates the mark in its entirety, merely adding a generic corporate designation “inc,” which describes Complainant’s form of organization, plus the country code Top Level Domain (“ccTLD”) “.us.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum January 21, 2016) (finding that confusing similarity existed where a challenged domain name contained a UDRP complainant’s entire mark and differed only by the addition of a descriptive phrase and a generic Top Level Domain, the differences between the resulting domain name and the trademark from which it was derived being insufficient to differentiate one from the other for purposes of the Policy).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to or legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <bechtelinc.us> domain name, and that Respondent is not licensed or otherwise authorized to use Complainant’s BECHTEL mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “lucky shank,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii).
See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and therefore failed to show that it had rights to or legitimate interests in them as provided in Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as the other evidence in the record, gave no indication that that respondent was commonly known by the domain names, and where a UDRP complainant had not authorized that respondent to register a domain name containing its mark). See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that a respondent was not commonly known by a disputed domain name, and so failed to prove that it had a claim to rights or legitimate interests in that domain name as described in Policy ¶ 4(c)(ii),
where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant contends, without objection from Respondent, that the <bechtelinc.us> domain name resolves in a website that lacks any content. We conclude that, in the circumstances set out in the Complaint, Respondent’s failure to make any active use of the contested domain name makes clear that Respondent is not making either a bona fide offering of goods or services by means of the domain name within the meaning of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of it within the terms of Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in it as provided in those subsections of the Policy. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum September 2, 2004):
Respondent is wholly appropriating Complainant’s mark and is not using the … 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).
The Panel thus finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
Inactive use of a domain name is a form of use. Therefore, Respondent’s inactive use of the <bechtelinc.us> domain name, in the particular circumstances described in the Complaint, is adequate to permit us to conclude, as we do, that Respondent has both registered and uses the domain name in bad faith within the contemplation of Policy ¶ 4(a)(iii). See, for example, Telstra Corp. Ltd. v Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). And, while the record indicates that Respondent has in the six months of its existence made no active use of the domain name, we are persuaded by the evidence that “it is not possible to conceive of any … plausible active use of the domain name by … Respondent that would not be illegitimate….” Telstra, supra. Further to the point, see also VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015):
Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
We are also persuaded by the evidence that Respondent knew of Complainant and its rights in the BECHTEL mark when it registered the <bechtelinc.us> domain name. This further demonstrates that Respondent registered the domain name in bad faith. See, for example, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that that respondent knew of a UDRP complainant's rights in a mark when it registered the domain name).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the usTLD Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <bechtelinc.us> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 19, 2017
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