WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NovAtel Inc. v. Ann Clarke
Case No. D2019-0257
1. The Parties
The Complainant is NovAtel Inc. of Calgary, Alberta, Canada represented by Carr Intellectual Property Law, United States of America (“United States”).
The Respondent is Ann Clarke of Mumbai, India.
2. The Domain Name and Registrar
The disputed domain name <nova-tel.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2019. On February 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 1, 2019, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2019. The Respondent did not submit any formal response. On February 27, 2019 a third party sent an email to the Center stating that they need more time to review the documents and that the disputed domain name was registered for their subsidiary in Singapore.
The Center sent an email communications to the Parties and to the third party informing that the due date for the response has passed and that the Center would forward to the Panel any response (if submitted later), being in the Panel’s discretion whether to consider such a response.
Accordingly, the Center notified the Commencement of Administrative Proceeding on February 4, 2019.
The Center appointed Kaya Köklü as the sole panelist in this matter on March 4, 2019. 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 a company that specializes in global navigation satellite system products and services. The Complainant was founded in 1992 and is since then an international provider of positioning products that utilize satellite signals to deliver successful global positioning solutions.
The Complainant owns various trademark registrations for its NOVATEL mark across the world, including United States Trademark Registration 2,468,649, registered with the United States Patent and Trademark Office on July 17, 2001 and European Union Trademark Registration 000651984, registered with the European Union Intellectual Property Office on February 9, 2000. Its NOVATEL marks cover protection for various goods, inter alia in Class 09, such as navigation and positioning transceiver and GPS receivers.
The Spanish Patent and Trademark Office acknowledged the NOVATEL mark as being a well-known and famous mark (cf. Annex G to the Complaint).
The Complainant also owns and operates domain names, which incorporate its trademark NOVATEL, such as <novatel.com>.
The Respondent is apparently an individual from India.
The disputed domain name was registered on October 3, 2018.
At the time of the decision, the disputed domain did not resolve to an active website. According to the evidence provided by the Complainant, the disputed domain name resolved to a parking page with pay-per-click links.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is identical to its NOVATEL trademark.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is rather argued that the disputed domain name falsely suggests that there is some official or authorized link with the Complainant.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
In the email communication of February 28, 2019 sent to the Center by a third person different from the Respondent, it was asked for an extension of the deadline to reply, but in the end, no one submit any further response.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Yet, it is noted that an independent search by visiting the Internet site linked to the disputed domain name has been performed by the Panel. The competence of the Panel to perform such independent search is undisputed and in line with previous UDRP decisions, e.g., Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038.
Further, it is stated that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered trademark rights in the mark NOVATEL by virtue of various trademark registrations.
The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered NOVATEL trademark, as it fully incorporates the Complainant’s trademark separated only by a hyphen. As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, further additions generally do not prevent a finding of confusing similarity. The mere addition of a hyphen does not, in view of the Panel, serve to prevent a finding of confusing similarity between the disputed domain name and the Complainant’s NOVATEL trademark.
B. Rights or Legitimate Interests
The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
While the burden of proof on this element remains with the complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production of relevant evidence shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any relevant evidence to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).
In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s trademark NOVATEL in a confusingly similar way within the disputed domain name.
There is no indication in the current record that the Respondent is commonly known by the disputed domain name, particularly as the disputed domain name has apparently yet not been actively used except for a parking page with pay-per-click links. Furthermore, even considering the communication received by the third party, the Respondent has failed to demonstrate any of the other non-exhaustive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name.
As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel is of the opinion that the Respondent had the Complainant’s NOVATEL trademark in mind when registering the disputed domain name, in particularly as the Complainant is apparently a leading and known company for navigation products. The Panel notes in this regards that a quick internet search of the term “novatel” would have revealed the existence of the Complainant and its NOVATEL marks.
Furthermore, the Panel finds that the Respondent’s failure to properly respond to the Complainant’s contentions additionally supports the conclusion that it has registered and is using the disputed domain name in bad faith. The Panel believes that, if the Respondent did in fact have legitimate purposes in registering and using the disputed domain name, it would have probably responded.
The fact that the disputed domain name is currently inactive does not prevent a finding of bad faith registration and use.
All in all, the Panel believes that the indications within the case file suggest that the disputed domain name was registered and is used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, paragraph 4(a)(iii) 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, <nova-tel.com> be transferred to the Complainant.
Date: March 16, 2019