The Complainant is International Truck Intellectual Property Company, LLC, of Warrenville, Illinois, United States of America, represented by Partridge IP Law P.C., United States of America.
The Respondent is B, BB of Barrington, Illinois, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2011. On April 5, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2011. The Respondent filed its Response on May 3, 2011. The Respondent also sent an email to the Center on April 7, 2011, prior to the formal commencement of proceedings, respecting which the Complainant on April 20, 2011 submitted an unsolicited Reply Brief.
The Center appointed William Towns as the sole panelist in this matter on May 19, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. Due to exigent circumstances, the date for the Panel to submit its decision to the Center was extended to June 7, 2011. 4. Factual Background
The Complainant is owned by Navistar, Inc., and is the holding company for all International Truck intellectual property. International Truck, formed in 1902, is a well known producer of medium trucks, heavy trucks, and other service vehicles. International Trucks products, parts and services are sold in the United States of America through a network of dealers and through dealers in some 90 other countries around the world, including Canada, Mexico and Brazil.
The Complainant is the owner of valid and subsisting United States trademark registrations for INTERNATIONAL and SCOUT. The Complainant’s predecessor has used the INTERNATIONAL mark in commerce since 1907, and first registered the mark with the United States Patent and Trademark Office (USPTO) in 1971. The Complainant’s SCOUT mark was registered with the USPTO in 2004, and has been used in commerce since 1991. The Complainant also is the owner of numerous domain names incorporating the INTERNATIONAL mark, including , which was registered in May 1996.
The disputed domain name was registered by the Respondent on February 8, 2011. The disputed domain name was initially registered on June 4, 1999. Based on historic WhoIs records submitted by the Complainant, the earliest identified registrant of the disputed domain name was Scout International Inc.1 Subsequently, according to historic WhoIs records, the domain name registrant information has been changed on several occasions: first to list TLC Handwash and Detail as the registrant; then to list B, M, MNM Corp. as the registrant; and then again in July 2009, at which time the Respondent was first identified as the registrant.
The record reflects that prior to the Respondent’s registration of the disputed domain name , the Complainant had been contacted by a certain M. Basso of MNM Corp. on January 19, 2011, and solicited to purchase the disputed domain name . In the course of continuing communications, Mr. Basso represented that he was one of “multiple partners” who acquired the disputed domain name “15 plus years ago” for a business to promote unsigned musicians, known as “Scout International”. This business venture, according to Mr. Basso, was not successful. As noted above, the Respondent registered the disputed domain name on February 8, 2011, after approaching the Complainant regarding the possible acquisition of the domain name.
The disputed domain name currently resolves to a parking page on which the disputed domain name is offered for sale to the public. The disputed domain name currently resolves to a parking page featuring advertising links related to automobile and trucks, and truck parts and accessories, including both the Complainant’s products and those of its competitors. Based on archived pages of the “www.” website submitted by the Complainant, the disputed domain name also has been used with parking pages containing advertising links for trucks, truck parts and accessories at least as far back as 2007. 5. Parties’ Contentions A. Complainant
The Complainant maintains that it has established trademark rights in INTERNATIONAL and SCOUT (the “Complainant’s Marks”) through registration and long and extensive use of the marks worldwide. The Complainant further observes that its registrations of these marks on the USPTO’s principal register have become incontestable as a matter of law. The Complainant asserts that the disputed domain names deliberately combine the Complainant’s Marks and are confusingly similar to the Complainant’s Marks.
According to the Complainant, the Respondent lacks rights or legitimate interests in the disputed domain names. The Complainant avers that the Respondent is not related to or affiliated with the Complainant and has not been authorized to use the Complainant’s Marks. The Complainant contends that the Respondent has not used either of the disputed domain names in connection with a bona fide offering of goods or services. According to the Complainant, the circumstances surrounding the Respondent’s registration of the disputed domain name demonstrate that the Respondent deliberately registered this domain name for the purpose of selling it to the Complainant for an amount greatly in excess of documented out-of-pocket expenses. The Complainant argues that the Respondent had actual or constructive notice of the Complainant’s rights in the INTERNATIONAL and SCOUT marks when registering each of the disputed domain names. In view of this, the Complainant urges that neither the Respondent’s use of the disputed domain names with pay-per-click parking pages featuring links to trucks, truck products and accessories, nor the offering of the disputed domain names for sale, can serve to establish rights or legitimate interests in the disputed domain names.
In view of all of the foregoing, the Complainant maintains that the Respondent registered and is using the disputed domain names in a bad faith attempt to exploit and profit from the goodwill associated with the Complainant’s Marks. The Complainant argues that the disputed domain name has been transferred to multiple registrants since first being acquired by Scout International, which was dissolved in 2001, and that the Respondent did not take possession of this disputed domain name until its registration in 2009. The Complainant maintains that the Respondent cannot rely on the purported good faith registration of the domain name by the initial registrant, and further contends that all use of the domain name since April 2003 has been in bad faith. B. Respondent
The Response asserts that the disputed domain names at all times have been owned by M. Basso and M. McKegney, and merely registered under Mr. Basso’s various businesses. 2 The Respondent maintains that the disputed domain name was registered only after it became clear that the Complainant was not interested in purchasing the disputed domain name . According to the Response, at that point the Respondent considered resurrecting the past business venture known as Scout International, and registered the domain name to be used along with . However, the Respondent then decided not to reopen this past business, at which time, according to the Response, the domain name became available for purchases along with the domain name.
The Respondent denies that the disputed domain names were registered in bad faith or that they are being used in bad faith. According to the Respondent, the content of the websites to which the disputed domain names resolve is controlled by the registrar, Network Solutions. Further, the Respondent argues that there are many instances of “Scout” and “International” being used on the Internet.3 6. Preliminary Procedural Issues: Supplemental Submissions
The Policy and the Rules demonstrate a strong preference for single submissions – that is, the Complaint and the Response. See, e.g., Parfums Christian Dior S.A. v. Jadore,WIPO Case No. D2000-0938; Plaza Operating Partners, Ltd. v. Pop Data Technologies, Inc. and Joseph Pillus,WIPO Case No. D2000-0166. Panels typically have allowed supplemental submissions in extraordinary circumstances, such as discovery of new evidence, issuance of new statutes or case decisions, or arguments by the respondent that the complainant could not reasonably have anticipated. See Tiara Hotels & Resorts LLC v. John Pepin,WIPO Case No. D2009-0041.
Prior to formal commencement of proceedings, the Respondent on April 7, 2011 submitted to the Center an email addressing the merits of the Complainant’s contentions – essentially an informal response to the Complaint. Subsequently, and after the formal commencement of proceedings, the Complainant on April 20, 2011, submitted to the Center a Reply Brief, in which the Complainant sought to respond to the Respondent’s April 7, 2011 email – first, to dispute the claim that Respondent at all times has been the underlying owner of the disputed domain name , and second, to correct a statement attributed to a representative of the indicating that Navistar no longer uses the “scout” name. The Complainant submitted historic WhoIs registrant data regarding the disputed domain name , and documentation reflecting the Complainant’s continuing use of the SCOUT mark.
Given the Respondent’s submission prior to the formal commencement of proceedings what is essentially a response to the Complaint, the Panel might have determined to disregard the Respondent’s premature response as untimely; however, of its own accord the Complainant chose to reply. The Panel has elected to accept both of these submissions. The Panel also considers that the Respondent had an adequate opportunity to incorporate any reply to the Complainant’s supplemental submission in the formal Response filed on May 3, 2011. Accordingly, in the interest of fairness, and for purposes of reaching a decision in this case, the Panel will consider all of the submissions of the Parties. 7. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that domain names should be either cancelled or transferred:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
Cancellation or transfer of the disputed domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain names are confusingly similar to the Complainant’s Marks. The first element of the Policy stands essentially as a standing requirement. The threshold inquiry under the first element of the Policy is largely framed in terms of whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. This is commonly tested by comparing the mark and the disputed domain name in appearance, sound, meaning, and overall impression. Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011. In this case, each of the disputed domain names combines the Complainant’s INTERNATIONAL and SCOUT marks, and based on such a comparison the Panel finds that the disputed domain names are confusingly similar to the Complainant’s Marks.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The disputed domain names are confusingly similar to the Complainant’s Marks. The Respondent is using one of the disputed domain names to attract Internet users to a pay-per-click parking site with links to third-party websites offering truck parts and accessories, including those of the Complainant’s competitors. The other disputed domain name resolves to a website on which the domain name is offered for sale, and the Respondent has attempted to sell to the disputed domain name to the Complainant. It is undisputed that the Respondent has not been authorized by the Complainant to use the Complainant’s Marks.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In this case, the Respondent argues that “scout” and “international” are common or descriptive words widely used on the Internet. A number of panels have concluded that a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant, at least in circumstances indicating that the respondent was not aware or reasonably should not have been aware of the complainant’s rights in the mark. See, e.g., National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424. Where a respondent registers a domain name consisting of “dictionary” terms because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304. But the domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark. Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964. See also Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062.
On the record of this case, the Respondent has not demonstrated to the satisfaction of this Panel that it registered either of the disputed domain names based on a good faith belief that their value was based on their attraction as “dictionary” terms. Nor does the record reflect the Respondent’s use of the disputed domain names consistent therewith. The Respondent specifically targeted the Complainant as a purchaser for the disputed domain name , and the Respondent registered the second disputed domain name only after having contacted the Complainant for this purpose. These circumstances support a strong inference that the Respondent understood that the value of the disputed domain names was tied to the Complainant’s INTERNATIONAL and SCOUT marks. Further, the historical presence on the Respondent’s website at “www.” of paid advertising links related to the products and services in which the Complainant and its competitors’ trade is significant. In the Panel’s view, such historic use effectively undermines any credible suggestion that the Respondent only recently became aware of the Complainant’s trademark rights.
In reaching its decision, this Panel follows the line of UDRP panel decisions recognizing that the transfer of a domain name amounts to a new registration, requiring the issue of registration in bad faith to be evaluated at the time the current registrant took possession of the disputed domain name. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, supra; iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658],WIPO Case No. D2007-1438; Surcouf v. Shen Kaixin,WIPO Case No. D2009-0407; Daimler AG v. William Wood,WIPO Case No. D2008-1712. Although the Respondent alleges that it has always been the underlying owner of the disputed domain name , the evidence of record does not clearly establish an unbroken chain of underlying ownership. Cf. Intellogy Solutions, LLC v. Craig Schmidt and IntelliGolf, Inc.,WIPO Case No. D2009-1244 (respondent made “compelling showing” that domain name transfer did not effect material change in beneficial ownership, including respondent’s continued use of domain name with bona fide offering of goods and services).4 Nor is it clear from the record that the multiple changes in the relevant WhoIs registrant data were not made to conceal the Respondent’s true identity or for the purpose of frustrating assessment of liability in relation to registration or use of the disputed domain name . See No Zebra Network Ltda v. B, Inc.,WIPO Case No. D2009-1071(transfer of domain name to respondent from its parent company after notice of dispute considered a new registration notwithstanding affiliation). See generally WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 3.7.
There is in fact scant evidence in the record regarding the original registrant’s actual or intended use of this disputed domain name . It is nonetheless clear from the record that the use made of this disputed domain names by the Respondent does not qualify as use of the disputed domain names based on their generic or descriptive qualities. In light of the foregoing, the Panel finds that the Respondent has not met its burden to come forward with evidence of use or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. Nor is there any persuasive evidence that the Respondent has commonly been known by the either of the disputed domain names.
In the absence of persuasive evidence in the record to the contrary, the Panel concludes that the Respondent most likely acquired the disputed domain names in order to trade on the initial interest confusion between the disputed domain names and the Complainant’s Marks, and attract Internet users to the Respondent’s websites. See Aubert International SAS and Aubert France SA v. T Co.,WIPO Case No. D2008-1986 (and decisions cited at paragraph 6.18 therein). In such circumstances, neither the Respondent’s use of the disputed domain names to generate pay-per-click advertising nor the offering of the disputed domain names for sale qualifies as a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e g., Barceló Corporación Empresarial, S.A. v. Hello Domain,WIPO Case No. D2007-1380; First American Funds, Inc. v. Ult.Search, Inc,WIPO Case No. D2000-1840 (for offering under paragraph 4(c)(i) to be considered bona fide, domain name use must be in good faith under paragraph 4(a)(iii)). See also Trade Me Limited v. Vertical Axis Inc,WIPO Case No. D2009-0093.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. The Panel finds unpersuasive the Respondent’s argument that it should not be held accountable for the content of the websites to which the disputed domain names resolve. It is by now a well recognized principle under the UDRP that a domain name registrant ultimately is responsible for the content on its website. See, e.g., Grundfos A/S, supra; Grisoft, s.r.o. v. Original Web Ventures Inc.,WIPO Case No. D2006-1381; Jappy GmbH v. Satoshi Shimoshita,WIPO Case No. D2010-1001. In the overall circumstances of this case, is there nothing that suggests to this Panel that the use of the disputed domain names as reflected in the record is anything other than the use that the Respondent intended.
Based on the record before it, the Panel concludes that the Respondent registered and has used the disputed domain names with the bad faith intent to profit from and exploit the goodwill associated with the Complainant’s Marks. See Aubert International SAS and Aubert France SA v. T Co., supra. The Respondent acquired one or both of the disputed domain names in bad faith under paragraph 4(c)(1) for the purpose of offering the domain names for sale to the highest bidder. Further, the Respondent intentionally has used both disputed domain names in bad faith for commercial gain, to attract Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark within the purview of paragraph 4(c)(iv) of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 8. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names and be transferred to the Complainant.
William R. Towns
Sole Panelist
Dated: June 7, 2011
1 The administrative contact was identified as “Scout International, LLC”. Business records maintained by the Illinois Secretary of State, and submitted by the Complainant, reflect that this entity was formed on August 6, 1999, and dissolved involuntarily on January 29, 2001.
2 The Response and the Respondent’s email of April 7, 2011 both were submitted by M. McKegney, who identified herself in other communications with the Center as Mr. Basso’s wife.
3 Although not mentioned in the formal Response, in the Respondent’s email of April 7, 2011, the Respondent indicated that during discussions regarding possible purchase of the disputed domain name , a Navistar employee named R. Wiley indicated that the Complainant was no longer using the “scout” name.
4 The Respondent, for example, stated that Mr. Basso was but one of “multiple partners” comprising the original WhoIs registrant, an obvious inconsistency with the Respondent’s claim of exclusive ownership. Nor does the record clearly establish the relationship between the second WhoIs registrant, TLC Handwash and Detail, and the Respondent.
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