WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Truck Intellectual Property Company, LLC v. Eighty Business Names
Case No. D2011-0430
1. The Parties
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 Eighty Business Names of West Bay, Grand Cayman (KY), GT, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The Disputed Domain Name <internationalscout.com> is registered with Rebel.com Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2011. On March 7, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 9, 2011, 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 March 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 6, 2011.
The Center appointed Alistair Payne as the sole panelist in this matter on April 15, 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.
4. Factual Background
The Complainant is owned by Navistar, Inc. and is the holding company for all International Truck intellectual property. International Truck was formed in 1902 and is a leading producer of medium trucks, heavy trucks and service vehicles. International Truck’s products, parts and services are sold through a network of nearly 1,000 dealer outlets in the United States, Canada, Brazil, and Mexico and more than 60 dealers in 90 countries throughout the world.
The Complainant owns several United States Trademark Office trademark registrations for the trademark INTERNATIONAL, the earliest registered in 1971 under number 914621 for retail services for trucks and truck parts and a separate trademark registration for the trademark SCOUT (2814919) registered in 2004 in particular for truck parts. The Complainant also owns a number of domain names including <internationaltruck.com> which was registered on May 15, 1996.
The Disputed Domain Name was registered by the Respondent on May 1, 2004.
5. Parties’ Contentions
The Complainant submits that it or its group companies and predecessors have used the INTERNATIONAL trade mark in relation to its truck, severe service vehicle and related parts business since 1902 and the SCOUT mark subsequently and as a consequence of long and widespread use through 60 dealers in 90 countries worldwide its business has developed a substantial reputation and renown.
It says that the Disputed Domain Name is confusingly similar to the INTERNATIONAL and SCOUT marks because it incorporates in its entirety International's INTERNATIONAL and SCOUT marks. See eBay, Inc. v. Progressive Life Awareness Network., WIPO Case No. D2001-0068 (March 16, 2001) (finding that the domain name <gayebay.com> incorporated the complainant's mark in its entirety and holding it to be confusingly similar to complainant's EBAY mark); Auxilium Pharmaceuticals, Inc. v. Kumar Patel, NAF Claim No. 642141 (April 6, 2006) (finding <auxilium-pharmaceuticals.com> confusingly similar to complainant's AUXILIUM name and mark). Moreover, because the Respondent combines International’s two marks in the Disputed Domain Name this only enhances the possibility that the public will be confused as to the Disputed Domain Name’s source, sponsorship and affiliation. See Pfizer Inc. v. NA, WIPO Case No. D2005-0072 (April 12, 2005) (ordering the transfer of <pfizerviagra.com> to complainant), MasterCard International Incorporated v. Miguel Gila, WIPO Case No. D2008-1968 (March 3, 2009) (ordering the transfer of <pricelessmastercard.com> to complainant).
The Complainant says that the Respondent is not affiliated or related to International in any way, nor is Respondent licensed by International or otherwise authorized to use the INTERNATIONAL or SCOUT marks. Further the Respondent is not generally known by the Disputed Domain Name and has not acquired any trademark or service mark rights in the name or mark. It submits that the Respondent is not making a bona fide offering of goods or services under the Disputed Domain Name and is merely using it to bring Internet users to its website where there are links, some of which are related to the Complainant and many of which are not. As a result, the Complainant submits that the Respondent’s use of the Disputed Domain Name for such a purpose is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Name and therefore the Respondent has no rights or legitimate interests in the Disputed Domain Name.
As far as bad faith is concerned the Complainant says that the Disputed Domain Name is deliberately used for commercial gain to attract Internet users to Respondent’s website based on a likelihood of confusion with Complainant’s INTERNATIONAL and SCOUT marks which satisfies the requirements of paragraph 4(b) (iv) of the Policy. Both the use of the Complainant’s marks to attract Internet users to a website from which the Respondent gains click through revenue as and the act of offering links to competing websites amounts to bad faith.
Further the Complainant says that at the time the Disputed Domain Name was registered, International had made substantial use of its INTERNATIONAL and SCOUT marks in the United States through the <internationaltruck.com> domain name as well as other domain names incorporating the International mark and there could be no reason for the Respondent’s registration other than that it was deliberately attempting to profit unfairly from the Complainant’s trademarks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated ownership of several United States Trademark Office trademark registrations for the word mark INTERNATIONAL and in particular the earliest of these having been registered in 1971 under number 914621 for retail services for trucks and truck parts. The Complainant also owns a separate trademark registration in the United States Trademark Office for the word mark SCOUT, registered in 2004 in particular for truck parts. The Panel accepts also the Complainant’s submissions as to the established nature of the Complainant’s INTERNATIONAL mark and the degree of renown attaching to it as a consequence of long use through many countries worldwide.
It is well established by previous UDRP panels that the wholesale incorporation of a trademark into a domain name without an adequate distinguisher potentially renders the domain name confusingly similar for the purposes of the Policy. In this case the degree of confusing similarity is only exacerbated by the incorporation of the Complainant’s renowned INTERNATIONAL trade mark together with its SCOUT mark, into the Disputed Domain Name, without any other distinguishing factor. Previous UDRP panels have held similarly, for example, in Pfizer Inc. v. NA, supra, in which the panel ordered the transfer of <pfizerviagra.com> to the complainant and MasterCard International Incorporated v. Miguel Gila, supra. in which the panel ordered the transfer of <pricelessmastercard.com> to the complainant.
As a result the Panel finds that the Complaint succeeds in relation to the first element of the Policy.
B. Rights or Legitimate Interests
There is no evidence before the Panel that the Respondent is making a bona fide offering of goods or services under, or is generally known by the Disputed Domain Name. Further there is no suggestion that the Complainant has in some way authorized or permitted the Respondent to use its marks in the Disputed Domain Name or that its use constitutes legitimate noncommercial use.
The Panel accepts the Complainant’s submission that the Respondent is merely using the Disputed Domain Name to bring Internet users to its website where there are links, some of which are related to the Complainant and many of which are not. Also for the reasons set out below in relation to the third element of the Policy the Panel considers that the Respondent’s registration and use of the Disputed Domain Name is in bad faith and it therefore has no rights or legitimate interests in the Disputed Domain Name.
Consequently, the Complaint succeeds in relation to the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel accepts the Complainant’s submission that at the date of registration of the Disputed Domain Name being May 1, 2004, the Complainant’s INTERNATIONAL and SCOUT marks were well established, in particular as a consequence of use in the Complainant’s own website at <internationaltruck.com> since 1996. Considering also the renown attaching to the Complainant’s INTERNATIONAL mark by that date (based on the its substantial use throughout a dealership network in 90 countries since 1902), the Panel infers from these circumstances and the Respondent’s failure to explain itself, that the Respondent knew of the Complainant’s interests and chose purposefully to incorporate the INTERNATIONAL and SCOUT marks into the Disputed Domain Name.
The inference that the Respondent purposefully registered the Disputed Domain Name is only reinforced by its use for a website which offers click through links to websites belonging to some of the Complainant’s competitors. Although, some panels have found that the use of a click through revenue raising website is not per se evidence of bad faith where there is no suggestion that the Respondent in any way influenced the advertising site, in all the circumstance as described above this does not appear to be the case here. In this case the Respondent appears to have intentionally used the Complainant’s marks in the Disputed Domain Name and has failed to explain this use, or the inclusion of click through links to the Complainant’s competitors from its website. As a result the Panel accepts that Complainant’s submission that the requirements of paragraph 4 (b)(iv) of the Policy are fulfilled in this case and that the Respondent has intentionally used the Disputed Domain Name for commercial gain to attract website users to its website by creating a likelihood of confusion as to the source, sponsorship or affiliation of the website.
Accordingly, the Panel finds that the Complainant has demonstrated sufficient evidence of the Respondent’s registration and use of the Disputed Domain Name in bad faith and that the Complaint succeeds in relation to the third element of the Policy.
For 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 <internationalscout.com> be transferred to the Complainant.
Dated: April 29, 2011