Textron Innovations Inc. v. Danny Maldonado / Textron
Claim Number: FA1709001750895
Complainant is Textron Innovations Inc. (“Complainant”), represented by Jeremiah A. Pastrick, Indiana, USA. Respondent is Danny Maldonado / Textron (“Respondent”), Colombia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <textron.com.co>, registered with Click Panda - Dominio Amigo SAS.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 27, 2017; the Forum received payment on September 27, 2017.
On September 28, 2017, Click Panda - Dominio Amigo SAS confirmed by e-mail to the Forum that the <textron.com.co> domain name is registered with Click Panda - Dominio Amigo SAS and that Respondent is the current registrant of the name. Click Panda - Dominio Amigo SAS has verified that Respondent is bound by the Click Panda - Dominio Amigo SAS 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 October 3, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 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@textron.com.co. Also on October 3, 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 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Trademark/Service Mark Information: ICANN Rule 3(b)(viii).
Complainant, Textron Innovations Inc. is the owner of the following registrations:
TEXTRON
United States Trademark Registration No. 1090806 issued May 9, 1978 in International Class 12 for, among other goods, SNOWMOBILES, STRUCTURAL PARTS AND FITTED PROTECTIVE COVERS THEREFOR; POWERED SLEDS; RACING CARS AND STRUCTURAL PARTS THEREFOR; ELECTRIC AND GAS GOLF CARTS; INTERNAL COMBUSTION ENGINES AND MUFFLERS FOR LAND VEHICLES; STRUCTURAL AUXILIARY GAS TANKS; SPARK PLUG CONTAINERS AS STRUCTURAL PARTS OF LAND VEHICLES; AIR CUSHION CRAFT AND LANDING GEAR THEREFOR; SURFACE EFFECT SHIPS; ROCKET ENGINES FOR LAND VEHICLES; MISSILE AND SPACECRAFT PROPULSION SYSTEMS; STRUCTURAL ROCKET PROPELLANT TANKS; AIRCRAFT LANDING GEAR AND PARTS THEREOF; HELICOPTERS AND AIRPLANES AND STRUCTURAL PARTS THEREOF; METAL AUTOMOTIVE STRUCTURAL BODY PARTS; DECORATIVE TRIM FOR AUTOMOBILES; AUTO STEERING AND SUSPENSION STUDS; ENGINE CYLINDER BLOCKS, ENGINE CYLINDER HEADS, FLYWHEEL HOUSINGS, MANIFOLDS, CAMSHAFTS, ALL FOR LAND VEHICLES; CLUTCH HOUSINGS; TRANSMISSION HOUSINGS; FARM TRACTORS; WHEELS AND BRAKE DRUMS FOR LAND VEHICLES
TEXTRON
United States Trademark Registration No. 1090737 issued May 9, 1978 in International Class 9 for, among other goods, PRECISION FLUID SYSTEM COMPONENTS AND ASSEMBLIES-NAMELY, SERVOVALVES, PROPELLANT VALVES, CONTROL VALVES, ACTUATORS, FILTERS, SWITCHES, REGULATORS, GAUGES, VESSELS; FUEL SYSTEM CONTROL VALVES AND MEASUREMENT APPARATUS; FIRE SUPPRESSION AND CONTROL UNITS; GAS METERS AND REGULATORS AND PARTS THEREOF; PRESSURE REGULATORS; NUMERICAL CONTROL UNITS FOR MACHINE TOOLS; NUMERICAL CONTROLS FOR TURRET LATHES; ELECTRONIC AND HYDRAULIC MACHINE TOOL CONTROL UNITS; OPTICAL DUPLICATORS; OPTICAL COMPARATORS; SPECTACLES; EYEGLASSES; EYEGLASS FRAMES AND PARTS THEREOF; CASES FOR HOLDING SPECTACLES AND EYEGLASSES; LENSES; OPHTHALMIC LENS AND LENS BLANKS; OPTICAL MACHINERY USED FOR ADJUSTING AND TESTING LENSES AND LENS MOUNTINGS FOR EYEGLASSES AND SPECTACLES- NAMELY, LENS MARKERS, LENS TESTING UNITS, GAUGERS AND GAUGE RACKS, AND PARTS FOR ALL OF THE FOREGOING; OPTICAL INSTRUMENTS AND DEVICES FOR TESTING AND EXAMINING EYES, SPECTACLES, EYEGLASSES, AND PARTS THEREFOR; PERSONAL SAFETY PRODUCTS AND EQUIPMENT FOR HEARING, EYE, RESPIRATORY, AND HEAD PROTECTION-NAMELY, INDUSTRIAL SAFETY GOGGLES, FACE SHIELDS, MAGNIFYING LENS FOR WELDERS' HEADGEAR, WELDERS' HELMETS, SAFETY HATS AND CAPS, WELDING GLOVES, AND RESPIRATORS; ELECTRICAL RACEWAY PRODUCTS AND SYSTEMS-NAMELY, METAL RACEWAYS, FLOOR BOXES, UNDERFLOOR DUCTS, FLOOR FITTINGS, JUNCTION BOXES, SERVICE POLES; ADAPTORS; ELBOWS; OFFSETS; ] INERTIAL INSTRUMENTS; ELECTROMAGNETIC DEFENSE UNITS; AEROSPACE ANTENNAS; ELECTRO OPTICS; HIGH ENERGY LASER BEAM SYSTEMS; DIGITAL WATCH MODULES; DIGITAL FREQUENCY SYNTHESIZERS; OSCILLATORS, CRYSTALS AND FILTERS; TEMPERATURE INDICATORS; VOLTMETERS, PRECISION TIMERS AND STOPWATCHES; THERMOCOUPLE INDICATORS; COUNTERS; TRACKING COMPARATORS; DIGITAL PRESETS; REMOTE DISPLAYS; FREQUENCY METERS; TACHOMETERS; TAPE- PROGRAMED ELECTRONIC UNIT FOR CHECKING THE OPERATING SYSTEM OF A DIESEL ELECTRIC LOCOMOTIVE. ] ELECTRONIC DEFENSE DETECTION UNIT FOR AIRCRAFT SERVICE FITTINGS, BEING PARTS OF GAS AND WATER METERS.
TEXTRON
United States Trademark Registration No. 1090704 issued May 9, 1978 in International Class 7 for, among other goods, MOTORS (NOT FOR LAND VEHICLES); CENTRIFUGAL PUMPS, THERMOPLASTIC PUMPS, HEAVY DUTY TRASH PUMPS, DIAPHRAGM PUMPS, PRESSURE PUMPS, ELECTRICAL SUBMERSIBLE PUMPS; ELECTRIC GENERATORS; CHAIN SAWS; CONCRETE VIBRATORS; DEMOLITION SAWS; ABRASIVE WHEELS; COMPACTION UNITS; ENGINE CYLINDER BLOCKS; GREY, ALLOID AND DUCTILE IRON CASTINGS FOR ENGINE BLOCKS; ENGINE CYLINDER HEADS; GEARS; PRECISION BALL, ROLLER AND SLIDING BEARINGS AND BEARING ASSEMBLIES FOR ORIGINAL EQUIPMENT AND THE REPLACEMENT MARKET, EMPHASIZING AEROSPACE, BUSINESS MACHINES, CONSTRUCTION, FARM EQUIPMENT AND MACHINE TOOL INDUSTRIES; VERTICAL MILLING MACHINES; POWER GRINDERS; HYDRAULIC DUPLICATORS; TOOL CHANGERS; HAND FEED GRINDERS; AUTOMATIC FASTENING MACHINES AND PARTS THEREOF; RIVETING MACHINES; MINE TOOL BITS FOR POWER OPERATED EQUIPMENT; COLD AND HOT HEADING MACHINES; HEADERS; THREADERS; METAL FORMING PRESSES; TRANSFER PRESSES; ROLLING MILLS; HOBBING MACHINES; PRECISION SURFACE GRINDERS; CYLINDRICAL AND THREAD GRINDERS; TURRET LATHES; TRACER LATHES; MACHINE TOOLS-NAMELY, WIRE DRAWING MACHINES, EYELET MACHINES, MACHINES FOR FORMING METAL PARTS; COLD AND HOT FORMING MACHINERY, AND PARTS THEREOF; ROCKET ENGINES (NOT FOR LAND VEHICLES); MISSILE AND SPACECRAFT PROPULSION ENGINES; ACTUATORS; [ STAPLING, NAILING AND WIRESTITCHING MACHINES FOR INDUSTRIAL FASTENING, PACKAGING AND CONSTRUCTION; MACHINERY FOR MAKING CORRUGATED AND SOLID FIBRE SHIPPING CONTAINERS-NAMELY, COIL AND BELT POWER NAILERS, EXPLOSIVE ACTIVATED NAILERS FOR CONCRETE, CLINCH NAILERS, SHEETERS, AND COMPLETE NAILERS FOR INDUSTRIAL USE AND FOR THE CONSTRUCTION INDUSTRY; POWDER-ACTUATED FASTENING TOOLS; WIRE STITCHING, STAPLING, AND TACKING MACHINES; PNEUMATIC POWERED NAILERS AND STAPLERS FOR CONSTRUCTION AND INDUSTRIAL PURPOSES. WIRE STITCHING MACHINES FOR THE GRAPHIC ARTS INDUSTRY; POWDER ACTUATED TOOLS USED BY THE PLUMBING, ELECTRICAL AND GENERAL COMMERCIAL CONSTRUCTION INDUSTRY; INTERNAL COMBUSTION ENGINES; MANIFOLDS, CAMSHAFTS, MUFFLERS (NOT FOR LAND VEHICLES); OPTICAL MACHINERY USED FOR MANUFACTURING AND FINISHING LENSES AND LENS MOUNTINGS FOR EYEGLASSES AND SPECTACLES-NAMELY, BLOCKERS, CLEANERS, EDGERS, GENERATORS, LAP CUTTERS, GRINDERS, PATTERN MAKERS, RECLAIM TANKS AND SURFACERS AND PARTS FOR ALL OF THE FOREGOING
TEXTRON
Colombia trademark registration numbers 209167, 209168 and 208893.
These registrations are incontestable under U.S. and international trademark law and are conclusive evidence of Complainant’s exclusive right to use the TEXTRON mark in the U.S. and in Italy for the goods covered by the registrations.
FACTUAL AND LEGAL GROUNDS. ICANN Rule 3(b)(ix).
This Complaint is based on the following factual and legal grounds:
Complainant, Textron Innovations Inc., is the owner of the TEXTRON marks that it licenses to Textron Inc. (“Textron”). Textron Innovations Inc. is an affiliate of Textron.
Textron Inc. (NYSE: TXT) is not only one of the world's best known multi-industry companies, it is a pioneer of the diversified business model. Founded in 1923, Textron has grown into a network of businesses with total revenues of $13.8 billion (Textron is ranked 200th on the FORTUNE 500 list of largest U.S. companies), with approximately 35,000 employees with facilities and presence in 25 countries, serving a diverse and global customer base. Textron’s companies include some of the most respected global brands in transportation, including Bell Helicopter, E-Z-GO golf carts and Cessna aircraft. Textron operates a web site at textron.com that features information regarding the company, its products, businesses and subsidiaries.
Textron utilizes the Textron.com top-level domain for its email address, such that a real Textron email extension is @textron.com.
Complainant Textron became aware of the domain Textron.com.co in August 2017 when it was reported to Textron that the domain textron.com.co was being utilized as part of a “phishing” scam in which the Textron.com.co domain is connected to fake job postings. Respondents to these fake job postings were subsequently solicited for payments for things such as “trainings” connected to the fake positions and “visa services” that the scammers indicate are necessary parts of the job application process.
Additionally, both the registration of the domain textron.com.co as well as the scammers’ responses to job applicants utilize the name “Danny Maldonado”. It is likely that this is no coincidence as Mr. R. Danny Maldonado is the President and CEO of Textron Financial. Impersonating Mr. Maldonado as part of this phishing scam is no doubt an attempt to give this enterprise an additional veneer of legitimacy.
Needless to say, Textron is promptly filing this UDRP upon learning of this domain and its nefarious purposes in order to protect both Textron and its intellectual property as well as to protect other consumers and business partners of Textron from the potential harm that this domain may be used to cause.
[a.] Language of Proceeding. ICANN Rule 11
Complainant acknowledges that the domain registrar agreement provided by the registrar of the disputed domain is in Spanish which, according to ICANN Rule 11, would suggest that these proceedings be undertaken in Spanish. However, ICANN Rule 11 also imparts upon the Panel the authority to determine otherwise should the circumstances of the administrative proceeding so dictate. Furthermore, ICANN Rule 10(b) and 10(c) require that: (1) the Panel ensure that that Parties are treated equally and given fair opportunity to present their cases (ICANN Rule 10(b)); and (2) that the Panel ensure that the administrative proceeding takes place expeditiously (ICANN Rule 10(c)).
Abundant authority exists to support the undertaking of this proceeding in English and Complainant hereby formally requests that the Panel exercise its authority under ICANN Rule 11 to accept Complainant’s filings in English and allow this administrative proceeding to proceed in English.
First, the circumstances of this UDRP support a finding that Respondent is familiar with and can competently communicate in English. In registering the Textron.com.co domain Respondent targeted a U.S.-based company, utilized English in its domain registration (even utilizing “Sandiego, CA” as its city and state) and incorporated English words/trademarks in its domain. For authority supporting a conclusion that targeting a U.S. company/trademark and registering a domain in English support a proceeding being undertaken in English see, for example, Citigroup Inc. v. Chen Ying Quan / 陈应全 / ying quan chen, FA1701001714851 (Forum March 13, 2017); AbbVie Inc. v. Yang Ke / GMG International Limited, FA1702001717945 (Forum April 7, 2017); and Morgan Stanley v. Domain Admin / Whois protection, this company does not own this domain name s.r.o., FA1701001715021 (Forum March 12, 2017).
In addition to Respondent’s presumed proficiency in English based upon the circumstances above, Complainant also requests that the Panel exercise its authority under ICANN Rule 11 and allow these proceedings to be undertaken because of the added burden and expense that translating the proceedings into Spanish would impart upon the Complainant as well as the added time and inefficiency that undertaking these proceedings in Spanish would add to the process. As noted above, Complainant is a U.S.-based company and, correspondingly, undertakes its business activities in English. Complainant is not familiar with the Spanish language and does not speak or write in Spanish. Requiring that these proceedings be undertaken in Spanish would impart substantial burden and additional costs upon the Complainant and substantially slow the process, which is antithetical to the stipulations of ICANN Rules 10(b) and 10(c). For authority supporting a conclusion that requiring Complainants to undertake proceedings in a language foreign to them would be overly-burdensome, costly and unfair see, for example, The Hain Celestial Group, Inc. v. Chen Yu, FA1611001704285 (Forum January 4, 2017); Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006); and Les Echos v. Zhao Zhong Xian, FA1702001716753 (Forum March 30, 2017).
Based upon the foregoing, Complainant believes that the evidence on the record supports a conclusion that allowing these proceedings to be undertaken in English would align with the policy objectives of ICANN Rules 10(b) and 10(c) and hereby requests that the Panel exercise its authority under ICANN Rule 11 and allow these proceedings to continue in English.
[b.] Confusing similarity.
ICANN Rule 3(b)(ix)(i); ICANN Policy ¶4(a)(i).
The domain name Textron.com.co is confusingly identical to Complainant’s registered Textron marks. Respondent is simply utilizing the Textron name/mark with Colombia’s top level domain (“ccTLD”) .com.co. It is well-settled that a domain name, which utilizes a trademark along with an additional descriptive, generic term (in this case the ccTLD om.co) does not mitigate the confusing use of the trademark. See, for example, Lockheed Martin Corp. v. Burnup, FA1307001508768 (Forum, Aug. 13, 2013), finding the addition of generic or descriptive term, “stock” to Lockheed Martin insufficient to defeat confusing similarity; Giorgio Armani S.p.A Swiss Branch, Mendriso v. Chung, Case No. D2013-0821 (“adding purely descriptive words which define the product or service offered via the website serves only to compound similarity when used in conjunction with a mark to which the Complainant has rights.”); Victoria’s Secret v. Erno Lokhorst, FA0101000096556 (Forum March 5, 2001) finding victoriassecretoutlet.com to be confusingly similar to Complainant’s VICTORIA’S SECRET trademark; and ULTA Salon, Cosmetics & Fragrance Inc. v. ultabeautyoutlet.com, FA1505001619434 (Forum June 25, 2015) finding the domain ultabeauty-outlet.com confusingly similar to Complainant’s ULTA BEAUTY mark.
In light of Complainant’s long-standing registration and use of the Textron marks in connection with a wide variety of goods, it is clear that the domain name Textron.com.co is confusingly similar to Complainant’s registered TEXTRON marks.
[c.] Rights to or Legitimate Interests.
ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).
Respondent has no rights or legitimate interests in the disputed domain name. Despite the fact that, according to the Whois report, Respondent has incorporated the Textron mark into its name (at least for the purposes of registering this domain) this fact alone does not confer any legitimate rights or interests in the Textron.com.co domain upon Respondent, especially in light of the fact that:
1. Respondent is utilizing the domain in bad faith to conduct phishing scams and impersonate Textron executives.
2. Complainant’s Textron marks are so well-known that the only plausible inference that can be derived from Respondent’s registration of the disputed domain name is that Respondent registered the disputed domain name to take advantage of and intentionally trade on the goodwill associated with Complainant’s marks. See, Morgan Stanley v. Stanley Morgan, FA1701001715028 (Forum March 9, 2017). This inference is compounded by the fact that Respondent is utilizing this domain in order to post falsified Textron job listings in furtherance of a phishing scam and impersonate Textron executives.
3. Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services or for any legitimate or fair use because the disputed domain name does not resolve to an active website. The passive holding of a domain name does not show a legitimate use or bona fide offering of goods or services. See Teachers Ins. and Annuity Ass’n of Am. v. Wreaks Commc’ns Group, D2006-0483 (WIPO June 15, 2006) (“passive holding of a domain name does not constitute ‘legitimate non- commercial or fair use’”); and TMP Int’l, Inc. v. Baker Enters., FA 204112 (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)”).
4. Complainant has not licensed nor otherwise permitted any organization to utilize its TEXTRON mark in connection with any goods or services or to own any domain names incorporating the TEXTRON mark. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
It is clear that Respondent has no legitimate rights in the domain name at issue and that his purpose for registering the Textron.com.co domain is to utilize this domain, and emails associated therewith, as part of scams that involve impersonating Textron personnel and extracting payment from victims of this scam.
[d.] Registered and Used in Bad Faith.
ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii).
The facts of record support a finding that Respondent both registered and is using the domain name at issue in bad faith under Policy ¶4(b)(iii) and 4b(iv) in that Respondent:
(1) registered the domain Textron.com.co with knowledge of Complainant’s rights in the TEXTRON marks;
(2) is using the Textron.com.co domain name intentionally to disrupt the business of Complainant; and
(3) is using the domain name in an intentional attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website.
With regard to bad faith registration in violation of Policy ¶4(b)(iii) See Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); Cerberus Capital Management, L.P. v. Jake Newton, Id., (“Complainant argues that Respondent’s attempt to use the <cerberuscapitallp.com> domain name to pass itself off as Complainant in emails constitutes bad faith. The Panel agrees that such fraudulent activity via the disputed domain name lends evidence to support a finding of bad faith registration and use pursuant to Policy ¶4(a)(iii)”); SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA 1581255 (Forum Oct. 29, 2014) (“Respondent’s use of the domain name’s e-mail suffix for fraudulent purposes illustrates Policy ¶4(a)(iii) bad faith.”); and Zillow, Inc. v. Ryan G Foo / PPA Media Services FA 1502001604451 (Forum March 19, 2015) (“This use of a domain name for phishing disrupts the business of Complainant within the meaning of Policy ¶4(b)(iii) and is evidence of bad faith registration and subsequently of bad faith use.”).
Additionally, past panels have found that registration of a confusingly similar domain with knowledge of a Complainant’s rights in a mark constitute bad faith under Policy ¶4(b)(iii). See, for example, Bluegreen Corp. v. eGo, FA 128793 (Forum Dec. 16, 2002) finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights; and ULTA Salon, Cosmetics & Fragrance Inc. v. ultabeautyoutlet.com, FA1505001619434 (Forum June 25, 2015) concluding that Respondent had actual knowledge of Complainant’s rights and therefore registered its domain in bad faith.
Furthermore, Panels have concluded that Respondent’s failure to make an active use of a disputed domain name is evidence of its bad faith registration, use and/or passive holding under Policy ¶4(a)(iii). See, for example, Morgan Stanley v. nashan, FA1612001706094 (Forum January 23, 2017) and Coachella Music Festival, LLC v. Titus Watson, FA1610001699866 (Forum December 2, 2016).
As for bad faith registration in violation of Policy ¶4(b)(iv), See SPTC, Inc. and SPTC Delaware, LLC v. Robert Seid / Chicago Title Trust, FA FA1503001608982 (Forum April 20, 2015) – “Past panels have found that a respondent’s “passing off” is evidence of bad faith pursuant to Policy ¶4(b)(iv). The Panel likewise finds that Respondent’s use of the<sothebysvacationsales.com> domain name constitutes bad faith use under Policy ¶4(b)(iv)”.
In summary, it cannot be disputed that Complainant has long standing and well- recognized rights and goodwill in its TEXTRON marks and that the Textron.com.co domain name at issue is confusingly similar to the TEXTRON marks. Respondent has no legitimate rights in the Textron.com.co domain name. Respondent has registered and is using the Textron.com.co domain to post fake job listings and impersonate Textron employees for identify theft or other nefarious purposes. The aforementioned conduct constitutes bad faith use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 prove the following three elements to obtain an order cancelling or transferring a domain name:
(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(f), 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 (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.”).
Supported Language Request
Complainant requests this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Spanish language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are:
1. WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language,
2. filing of a trademark registration with an entity which shows an understanding of the English language, and
3. any evidence (or lack thereof) exhibiting Respondent’s understanding of the English language included in the Registration Agreement.
See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). The Panel may weigh the relative time and expense in enforcing the Spanish language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). In this case, the domain name was registered using the name of one of Complainant’s employees. Respondent’s address is listed in California (although the country is listed a Columbia instead of the United States of America). Respondent could not do that without having a working knowledge of English.
Pursuant to UDRP Rule 11(a), the Panel finds sufficient persuasive evidence has been adduced by Complainant to suggest Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides the proceeding should be in English.
Complainant claims rights in the TEXTRON mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,090,704, registered May 9, 1978). Registration with the USPTO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i), even if Respondent is located in another country. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶4(a)(i)). Complainant has rights in the TEXTRON mark.
Complainant claims Respondent’s <textron.com.co> is identical to Complainant’s mark because it merely appends the ccTLD “.com.co” to the fully incorporated TEXTRON mark. A domain name that adds a ccTLD to a fully incorporated mark is identical to the mark (and not merely confusingly similar). See CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (holding, “The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶4(a)(i).”). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Respondent’s <textron.com.co> is identical to Complainant’s mark (and not merely confusingly similar).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its TEXTRON mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name is evidence of lacking of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶4(c)(ii) that a respondent is not commonly known by a disputed domain name. Absent information in the record to the contrary, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record for the <textron.com.co> domain name lists “Danny Maldonado” as the registrant. Respondent is not commonly known by the domain name under Policy ¶4(c)(ii).
Complainant claims Respondent is not using the domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. The <textron.com.co> resolves to an inactive website. Using an identical domain name which does not resolve to an active website is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)).
Complainant claims Respondent is using the <textron.com.co> as an email suffix to further a phishing scheme. Using a domain name to conduct an email phishing scheme is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1403001550388 (Forum May 5, 2014) (“Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant's website. The Panel found that such actions precluded a bona fide offer or fair use.”). Respondent uses the email address “hr@textron.com.co” to promote fraudulent job postings and lure email recipients into providing personal information and payment, under the guise of Complainant’s Human Resources Vice President, Cathy Streker, and the President and CEO of Complainant’s subsidiary. Respondent is not using the domain name in connection with any bona fide offering of goods or services, or legitimate noncommercial or fair use pursuant to Policy ¶¶4(c)(i) and (iii).
It seems obvious Respondent registered the disputed domain name using a nom de plume. Respondent has taken no action to publicly associate itself with the domain name. Therefore, Respondent cannot acquire any rights to the domain name by virtue of simply registering it.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using the domain name in bad faith under Policy ¶4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the TEXTRON mark. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein constitutes bad faith under Policy ¶4(b)(iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Here, Complainant passed itself off as Complainant’s Human Resources Representative and its subsidiary’s CEO. That is clearly not a good faith use of the disputed domain name. Respondent registered and used the domain name in bad faith under Policy ¶4(b)(iv).
Complainant demonstrated Respondent engages in phishing scams by impersonating Complainant’s executives. Using a domain name to conduct a phishing scheme disrupts a complainant’s business and is evidence of bad faith registration and use. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶4(a)(iii).”). Here, Respondent used the <textron.com.co> domain name to send fraudulent emails luring recipients to reply with personal information and financial payments. That certainly constitutes bad faith registration and use.
Complainant claims Respondent is not making an active use of the <textron.com.co> resolving webpage. A respondent’s failure to make an active use of a disputed domain name’s resolving webpage is evidence of bad faith. See Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith). However, domain names can be used in a number of ways other than simply hosting a web site:
1. an email server.
2. An ecommerce “backend.”
Respondent has made none of these claims in this case. While Respondent has used the domain name as an email server, that does not count because it was used to pass-off Respondent as Complainant (and conduct phishing). Respondent has acted in bad faith under Policy ¶4(a)(iii).
Complainant claims Respondent had actual knowledge of Complainant’s rights in the TEXTRON mark. Actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (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). A respondent’s actual knowledge of a complainant’s marks can be proven through the respondent’s use of the domain name. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Using Complainant’s mark to conduct a phishing scheme by impersonating actual employees of Complainant’s company and fraudulently offer employment opportunities with Complainant’s business certainly constitutes bad faith registrant and use. Respondent had actual knowledge of Complainant’s rights in the TEXTRON mark at the time of registration and while using the domain name.
Respondent registered the disputed domain name using a non de plume, which violates the UDRP. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut that presumption.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <textron.com.co> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, November 6, 2017
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