Pilot Travel Centers LLC v. Lagos Benin
Claim Number: FA1908001858552
Complainant is Pilot Travel Centers LLC (“Complainant”), represented by Seth L. Hudson of Clements Bernard Walker PLLC, North Carolina, USA. Respondent is Lagos Benin (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <www.pilottrevelcenter.com>, registered with Web4Africa Inc..
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 August 22, 2019; the Forum received payment on August 22, 2019.
On August 29, 2019, Web4Africa Inc. confirmed by e-mail to the Forum that the <www.pilottrevelcenter.com> domain name is registered with Web4Africa Inc. and that Respondent is the current registrant of the name. Web4Africa Inc. has verified that Respondent is bound by the Web4Africa Inc. 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 August 30, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 2019 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@www.pilottrevelcenter.com. Also on August 30, 2019, 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 September 23, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 is well-known in the gasoline service industry operating in 43 states with more than 400 locations. Complainant has rights in the PILOT TRAVEL CENTERS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,232,994, registered Mar. 16, 1999). Respondent’s <pilottrevelcenter.com> domain name is confusing similar to Complainant’s mark. Respondent incorporates the mark in its entirety and substitutes the “a” in travel with an “e” and removes the “s” on the end.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel notes that the <pilottrevelcenter.com> domain name was registered on March 21, 2019.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims to have rights in the PILOT TRAVEL CENTERS mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for the PILOT TRAVEL CENTERS mark (e.g. Reg. No. 2,232,994, registered Mar. 16, 1999). Therefore, the Panel finds that Complainant has adequately shown rights in the mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <pilottrevelcenter.com> domain name is confusing similar to Complainant’s mark. Registration of a domain name that contains a complainant’s mark, with small typographical changes, does not distinguish the disputed domain name from the mark per Policy ¶ 4(a)(i). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“The [<morganstonley.com> and <morganstainley.com>] Domain Names are confusingly similar to Complainant’s marks, as they fully incorporate the MORGAN STANLEY mark, varying it only by subtle misspellings, omitting a space between the words.”) See also Lockheed Martin Corporation v. toyosei maruyama, FA 1620489 (Forum July 7, 2015) (“Simply removing the letter ‘s’ from a mark in the creation of a domain name still creates a confusingly similar domain name.”). Here, Respondent incorporates the mark in its entirety and substitutes the “a” in travel with an “e” and removes the “s” on the end. Therefore, the Panel finds that Respondent’s disputed domain name is confusing similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent lacks rights or legitimate interest in the <pilottrevelcenter.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the PILOT TRAVEL CENTERS mark or register domain names using Complainant’s mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Lagos Benin” and there is no other evidence to suggest that Respondent was authorized to use the PILOT TRAVEL CENTERS mark or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name fails to resolve to an active webpage. Failure to make use of a disputed domain name is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”). Here, Complainant has failed to provide evidence or screenshots of Respondent’s resovling domain name. Therefore, the Panel finds that whether Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
Complainant additionally agrues that Respondent is using the disputed domain name in assoication with an email address in furtherance of a phishing scheme to obtain internet user’s personal information. Use of an email address associated with a disputed domain name to obtain internet user’s personal information is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“Passing off as a complainant through e-mails is evidence that a respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) & (iii).”). Here, Complainant has provided an email chain wherein Respondent attempts to pass off as an employee of Complainant in hope of obtaining personal and financial information. Complainant also provides a communication from a law firm in which Respondent attempted to pass off as Complainant and apparently sent the firm a fraudulent check. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii)
Complainant argues that Respondent registered and used the <pilottrevelcenter.com> domain name in bad faith as Respondent attempts to impersonate Complainant. Use of an email address associated with a disputed domain name to impersonate an employee of complainant may constitute evidence of bad faith per Policy ¶¶ 4(b)(iii) and/or (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). Here, Complainant has provided an email chain wherein Respondent attempts to pass off as an employee of Complainant in an attempt to obtain personal and financial information. Complainant provides a communication from a law firm in which Respondent attempted to pass off as Complainant and sent the firm an apparently fraudulent check. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iii) and (iv).
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 <www.pilottrevelcenter.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: October 3, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page