The Complainant is Navistar International Corporation, United States of America (“United States”) (“Complainant”), represented internally.
The Respondent is c/o whoisproxy.com, United States / Name Redacted (“Respondent”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2020. On May 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 19, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 21, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 22, 2020.
The Center verified that the Complaint together with the amended Complaint (hereinafter 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2020. The Center received a third party’s communications by email on June 10, 2020 and on June 15, 2020. Respondent did not submit any response. Accordingly, the Center notified the Commencement of Panel Appointment Process on June 24, 2020.
The Center appointed M. Scott Donahey as the sole panelist in this matter on June 29, 2020. 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.
4. Identity of RegistrantIn this case, the Center received a communication from a company whose address corresponded to that listed in the disputed domain name registration and whose former chief executive officer (“CEO”) bore the same name as that listed as the registrant in the disputed domain name registration. The attorney for the company contacted its former CEO, and the attorney reported that the former CEO had denied making the registration. The attorney then requested that an assessment be made as to whether the name related to another individual of the same or similar name.
It is impossible for the Panel to determine the actual identity of the registrant, or whether in fact the name is purely fictitious. The registration merely lists the name and address furnished by the registrant.
Accordingly, to avoid any confusion that might arise in the present case, the name given to the Registrar has been redacted. See Footnote 1.
5. Factual BackgroundComplainant is a holding company for a conglomerate of companies involved in truck and vehicle development. Complainant’s predecessors date back to 1831, when Cyrus McCormick invented the first dependable mechanical reaper. In 1902, McCormick Harvesting Machine Company merged with Deering Harvester Company to form International Harvester Company. In 1986, the company changed its name to Navistar. Complaint, Annex D.
Presently Complainant’s business has expanded into many lines of business, most involving trucks and diesels. Complaint, Annex E. In 2019, Complainant had net sales and revenues exceeding USD 11 billion. Complainant has more than 12,000 active employees worldwide and has been ranked number 308 among the U.S. Fortune 5000. Complaint, Annex F.
Complainant is the holder of the NAVISTAR trademark in the United States and in countries around the world, including the United States Trademark Registration No. 1472594, registered on January 12, 1988. Complaint, Annexes B and C.
The disputed domain name was registered on March 9, 2020. Complaint, Annex A. Respondent is using the disputed domain name in an email address to send emails in the name of Complainant’s Portfolio Management Supervisor to customers of Complainant to inform them of the need to send future payments to a bank account that Respondent would create or had created. Complaint, Annex G.
6. Parties’ Contentions A. ComplainantComplainant contends that the disputed domain name is confusingly similar to its NAVISTAR trademark, that Respondent has not rights or legitimate interests in respect of the disputed domain name, and that Respondent has registered and is using the disputed domain name in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
7. Discussion and FindingsA Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe disputed domain name consists of Complainant’s well-known trademark with an “i” inserted next to the “i” in Complainant’s NAVISTAR trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s well-known mark.
B. Rights or Legitimate InterestsWhile the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad FaithRespondent is using the disputed domain name as part of an email address in which Respondent sends emails in the name of one of Complainant’s employees to Complainant’s customers, requesting the customer to send monies due and owing to Complainant to a new account at an email address which utilizes the disputed domain name. The Panel finds that Respondent has registered and is using the disputed domain name in bad faith.
8. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name
M. Scott Donahey
Sole Panelist
Date: July 6, 2020
1 The Respondent appears to have used the name and contact details of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted,
WIPO Case No. D2009-1788.