International Truck Intellectual Property Company, LLC v. andrea salazar / asociados sa de cv
Claim Number: FA1807001798111
Complainant is International Truck Intellectual Property Company, LLC (“Complainant”), represented by Brett A. August of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is andrea salazar / asociados sa de cv (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <international-mexico.com>, registered with Network Solutions, Llc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 23, 2018; the Forum received payment on July 23, 2018.
On July 24, 2018, Network Solutions, Llc confirmed by e-mail to the Forum that the <international-mexico.com> domain name is registered with Network Solutions, Llc and that Respondent is the current registrant of the name. Network Solutions, Llc has verified that Respondent is bound by the Network Solutions, Llc 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 July 27, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 2018 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@international-mexico.com. Also on July 27, 2018, 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 20, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn appointed 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, an intellectual property holding company, is a subsidiary of Navistar International Corporation, one of the world’s leading companies in truck development whose roots date back to 1831. Complainant has rights in the INTERNATIONAL mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 914,621, registered June 8, 1971). Respondent’s <international-mexico.com> domain name is confusingly similar to Complainant’s mark as it adds the geographic designation “mexico” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <international-mexico.com> domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS information identifies Respondent as “Andrea Salazar.” Complainant also has not authorized, licensed, or otherwise permitted Respondent to use the mark for any purpose. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to display images appropriated from Complainant’s own website in attempts to pass itself off as Complainant to confuse Internet users.
Respondent registered and uses the <international-mexico.com> domain name in bad faith. Respondent passes itself off as Complainant to perpetrate fraud on its visitors by inducing them to send money as a deposit for an INTERNATIONAL truck, when in fact no such trucks exists. Further, given Respondent’s use of Complainant’s images on its website, Respondent clearly had actual knowledge of Complainant’s rights in the INTERNATIONAL mark prior to registering the infringing domain name.
B. Respondent
Respondent failed to submit a response in this proceeding. The Panel notes that Respondent registered the <international-mexico.com> domain name on May 29, 2018.
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(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.”).
Complainant claims rights in the INTERNATIONAL mark through its registration of the mark with the USPTO (e.g. Reg. No. 914,621, registered June 8, 1971). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 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) and its vested interests in a mark.”) Accordingly, the Panel finds that Complainant has established rights in the INTERNATIONAL mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <international-mexico.com> domain name is identical or confusingly similar to Complainant’s mark as it adds the geographic designation “mexico”. The Panel also notes that the domain name adds a hyphen, and finds that neither of the changes in this registered mark sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that the <international-mexico.com> domain name is confusingly similar to the INTERNATIONAL mark under Policy ¶4(a)(i).
Complainant contends that Respondent has no rights or legitimate interests in the <international-mexico.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. 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). The WHOIS identifies “andrea salazar / asociados sa de cv” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the INTERNATIONAL mark. Panels interpret such assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1620789 (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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the <international-mexico.com> domain name under Policy ¶ 4(c)(ii).
Complainant next argues that Respondent also doesn’t use the <international-mexico.com> domain name for any bona fide offering of goods or services or a legitimate noncommercial or fair use, because it attempts to pass off as Complainant for its own commercial gain. Passing off as a complainant can evince a lack of rights and legitimate interests in a domain name. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). Complainant provides screenshots of the resolving webpage associated with the disputed domain name, which show images of trucks and offers them for sale. Complainant also provides printouts from its own webpage, which displays images also located at the disputed domain. As such, the Panel agrees with Complainant and finds that Respondent attempts to pass off as Complainant, failing to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent registered and uses the <international-mexico.com> domain in bad faith by attempting to pass off as Complainant to perpetrate fraud on its visitors by inducing them to send money as a deposit for an INTERNATIONAL truck, when in fact no truck exists. Attempting to pass off as a complainant to further a fraudulent scheme can evince bad faith per Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness). As noted above, Complainant provides screenshots of the resolving webpage associated with the disputed domain name, which shows images of trucks and offers them for sale. Complainant also provides printouts from its own webpage, which displays images also located at the disputed domain. Complainant provides evidence that the truck images are displayed as a means to fraudulently acquire money from unsuspecting Internet users. Accordingly, the Panel agrees that Respondent attempts to pass off as Complainant for commercial gain, and holds that Respondent registered and uses the disputed domain name in bad faith.
Further, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the INTERNATIONAL mark at the time of registering the <international-mexico.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince 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). Complainant contends that, given Respondent’s use of Complainant’s images on its website, Respondent clearly had actual knowledge of Complainant’s rights in the INTERNATIONAL mark prior to registering the infringing domain name. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Thus, Complainant has also satisfied 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 <international-mexico.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: August 28, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page