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International Truck and Engine Corporation v. Domains by Proxy, Inc./LG Mia [2005] GENDND 1933 (17 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

International Truck and Engine Corporation v. Domains by Proxy, Inc./LG Mia

Case No. D2005-0991

1. The Parties

The Complainant is International Truck and Engine Corporation, Warrenville, Illinois, United States of America.

The Respondent is Domains by Proxy, Inc., Scottsdale, Arizona, United States of America/LG Mia, Miami, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <cxtinternational.com> (the “Domain Name”) is registered with Go Daddy Software, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2005. On September 16, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 17, 2005, the Registrar transmitted by email to the Center its verification response. In its response, the Registrar advised the Center that the Respondent behind the Domains by Proxy, Inc. was LG Mia.

The Center advised the Complainant that the Complaint would need to be amended to reflect LG Mia as the registrant and the Respondent in this proceeding. The Complainant filed an Amendment to the Complaint on September 22, 2005, to reflect this change.

The Center verified that the Complaint together with the Amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Amendment to the Complaint, and the proceedings commenced on September 28, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was October 18, 2005. The Respondent did not submit a response. The Center noted this default on October 19, 2005.

On October 24, 2005, the Center invited the undersigned Panelist to serve as a single member panel in this proceeding. The Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. The Center sent a “Notification of Appointment of Administrative Panel and Projected Decision Date” by e-mail to the parties on October 27, 2005.

Having reviewed the entire record submitted for this proceeding, the Panel concurs with the Center’s findings that the Complaint and the Amendment are in compliance with the Policy, Rules and Supplemental Rules and that the Panel was properly constituted and appointed.

4. Factual Background

The Complainant bases the Complaint on the following U.S. registrations owned by the Complainant or International Truck Intellectual Property Company, LLC, a wholly owned affiliate of the Complainant (hereinafter referred to individually and collectively as the “Complainant”):

- U.S. Registration No. 2,381,360 (first use and first use in commerce dates of 1907 and 1912; issued August 29, 2000) for the mark INTERNATIONAL for trucks, tractors, buses, and structural parts therefor; engines for light, medium and heavy-duty trucks, tractors and buses and structural parts therefor (international class 012); and repair and maintenance of trucks, buses, engines for land vehicles (international class 037);

- U.S. Registration No. 2,511,869 (first use and first use in commerce dates of February 23, 2000; issued November 27, 2001) for the mark INTERNATIONAL & Design for internal combustion engines for machine and boat operation, and replacement parts therefor (international class 007); motor vehicles, namely trucks, buses, chassis therefor, engines for land vehicles, namely, trucks and buses and replacement parts therefor (international class 012); dealerships in the field of trucks and buses and parts therefor (international class 035); repair and maintenance services for trucks, buses, chassis therefor, and engines for land vehicles, namely trucks buses and chassis therefor (international class 037); providing the leasing of new or used vehicles (international class 039);

- U.S. Registration No. 2,717,741 (first use and first use in commerce dates of November 2000; issued May 20, 2003) for the mark INTERNATIONAL & Design for a variety of goods in international classes 006, 014, 016, 018, 020, 021, 024, 025 and 028;

- U.S. Registration No. 2,697,930 (first use and first use in commerce dates of February 23, 2000; issued March 18, 2003) for engines not for land vehicles (international class 007);

- U.S. Registration No. 2,791,287 (first use and first use in commerce dates of April 2001; issued December 9, 2003) for the mark INTERNATIONAL & Design for mud flaps for vehicles (international class 012); and floor mats for vehicles (international class 027); and

- U.S. Registration No. 2,874,866 (first use and first use in commerce dates of April 2001; issued August 17, 2004) for the mark INTERNATIONAL & Design for mud flaps for vehicles (international class 012).

The Complainant also bases the Complaint on its common law rights in the mark CXT and the following pending applications:

- U.S. Application Serial No. 78/436,159 (first use date of September 12, 2004, and first use in commerce date of September 13, 2004; filed June 16, 2004) for the mark CXT for land vehicles, namely trucks and structural parts therefore (international class 012);

- U.S. Application Serial No. 78/566,481 (first use and first use in commerce dates of October 24, 2004; filed February 14, 2005) for the mark CXT for toy trucks (international class 028); and

- U.S. Application Serial No. 78/569,854 (first use and first use in commerce dates of September 13, 2004; filed February 17, 2005) for the mark CXT (Stylized) for land vehicles, namely trucks and structural parts therefor (international class 012).

Printouts from the U.S. Patent and Trademark Office website evidencing the existence of the above registrations and applications were submitted as Annexes D and E, respectively, to the Complaint. The Complaint also makes reference to the Complainant being the owner of U.S. Registration Nos. 2,759,245, 2,724,861, 2,656,862, 2,461,049, and 914,621 for the mark INTERNATIONAL. However, the Complainant did not attach to its Complaint any evidence of the existence of these registrations. A review of U.S. Patent and Trademark Office records reveals that the Complainant is the listed owner of all but one of these registrations cited in the Complaint. The sole exception is U.S. Registration No. 2,724,861 for the mark OUTDOORPLAY, which is registered to Outdoor Play, Inc.

The Domain Name in issue was registered on September 15, 2004, by Domains by Proxy, Inc. Upon the Complaint being filed regarding the Domain Name, the registration for the Domain Name was then changed to LG Mia. The website currently accessible at the Domain Name frames another website located at “www.cxtministries.org” and operated by the CXT Ministries of Uganda. A copy of the whois information for the Domain Name showing Domains by Proxy, Inc., as the registrant was attached as Annex A to the Complaint. A review of the current whois information for the Domain Name shows LG Mia, as the registrant of the Domain Name.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it has used the mark INTERNATIONAL in commerce since 1907 for various automotive and truck services. The Complainant also asserts that it has used the mark CXT in interstate commerce since 2004 for a brand of truck manufactured and sold by the Complainant. The Complainant asserts that it has expended significant resources advertising and promoting its marks and maintains an extensive Internet presence. The Complainant asserts that its CXT brand for truck and sport utility vehicle services is strongly associated with the Complainant and has received significant press coverage from media outlets including CNN, MSNBC, The London  Times, Motor Trend and USA Today. Copies of the news articles discussing the CXT brand were attached as Annex I to the Complaint.

The Complainant asserts that the combination of the marks CXT and INTERNATIONAL is associated exclusively with the Complainant and has no independent meaning, and that the Domain Name, therefore, is not one that the Respondent would legitimately choose unless it was seeking to create an impression of an association with the Complainant. The Complainant further asserts that the Respondent is not a licensee or subsidiary of the Complainant and that the Respondent has never been authorized to use the Complainant’s marks. The Complainant asserts that there is no evidence of 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. The Complainant asserts that the Respondent has never been commonly known by the Domain Name, and that the initial registrant of the Domain Name is Domains by Proxy, Inc., a domain reseller which has been the subject of previous UDRP proceedings.

The Complainant asserts that the Respondent registered the Domain Name on September 15, 2004, two days after the Complainant publicly announced the introduction of its new CXT brand on September 13, 2004. A copy of the Complainant’s press release dated September 13, 2004, was submitted as Annex J to the Complaint.

The Complainant asserts that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather, the Complainant asserts that the Respondent registered the Domain Name for commercial gain in order to misleadingly divert consumers and to tarnish the Complainant’s marks.

The Complainant contends that the Respondent’s registration of the Domain Name was done in bad faith. The Complainant asserts that by using the Domain Name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Complainant asserts that the Respondent used the Domain Name to sell truck related products in competition with the Complainant. The Complainant asserts that the Respondent’s website included two of the Complainant’s copyrighted images of its CXT products. The Complainant asserts that the Respondent included a survey on the website asking how likely visitors would be to purchase truck related merchandise from the site. Further, the Complainant asserts that the Respondent was offering to host commercial advertising on the website for $50 per month. The Complainant asserts that the Respondent used the Complainant’s name, marks and description on the website which was titled “CXT International truck world’s biggest pickup truck”. The Complainant asserts that the Respondent also embedded the Complainant’s marks and descriptors -“CXT International truck world’s biggest pickup truck”- in the website meta description and meta keywords. The Complainant further asserts that the Respondent’s actions clearly indicate an intent to create a likelihood of confusion and deceive visitors visiting the website associated with the Domain Name.

The Complainant asserts that it sent a cease and desist letter on September 6, 2005, to the Respondent, explaining the Complainant’s right to the Domain Name and requesting that the Respondent promptly transfer the Domain Name to the Complainant. The Complainant asserts that on September 6, 2005, the same day that the Respondent received the cease and desist letter, the Respondent immediately changed the website at the Domain Name and promptly posted the Complainant’s letter on the website and added a disclaimer stating that the website was not affiliated with the Complainant. The Complainant asserts that undermining the disclaimer, and highlighting the Respondent’s bad faith, is the fact that the second version of the Respondent’s website retained the title “CXT International truck world’s biggest pickup truck”.

The Complainant asserts that the Respondent’s website, version 2, continued to offer the survey involving the purchase of truck related merchandise. The Complainant asserts that the Respondent’s website, version 2, also continued to solicit offers to purchase the Domain Name. The Complainant asserts that the posting of the letter and the comments that the Complainant was unfairly trying to force the Respondent to transfer the Domain Name appears to have been intended to coerce the Complainant into purchasing the Domain Name from the Respondent. Underscoring the coercive and harassing nature of the Respondent’s conduct towards the Complainant, according to the Complainant, is an email that the Respondent sent to the Complainant on September 6, 2005. The Complainant asserts that the Respondent’s email called the Complainant’s cease and desist letter a threat and stated that the Respondent would “forward your email to the AP and many Internet and trade/industry publications which may shed an (sic) less that complementary light on International’s use of such tactics”. The Complainant asserts that the Respondent’s website, version 2, also attempted to fraudulently claim that the sale of the Domain Name was tied to hurricane relief efforts.

The Complainant further asserts that on September 8, 2005, it sent a letter to Tripod, the company providing hosting services for the Respondent’s website, stating that the content posted on the Respondent’s website violated Tripod’s Terms and Conditions. In response to the Complainant’s September 8, 2005 letter, the Complainant asserts that Tripod investigated the Respondent’s conduct, and determined that the Respondent was harassing the Complainant and causing damage to the Complainant in violation of Tripod’s Terms and Conditions. On September 9, 2005, the Complainant asserts that Tripod terminated the Respondent’s account and replaced the website’s content with a page holder containing a notice stating that the website was removed because it violated Tripod’s Terms and Conditions. The Complainant asserts that on September 13, 2005, the Respondent replaced this website with a web page from its affiliated company, GoDaddy.com, advertising GoDaddy.com’s services and providing links to truck related commercial sites for competitors of the Complainant.

The Complainant asserts that the Respondent is engaging in the same conduct which a previous panel found demonstrates that the Respondent is acting in bad faith to benefit from misdirected traffic in search of information about the Complainant. The Complainant asserts that in response to the Respondent’s new website, the Complainant sent a cease and desist letter to GoDaddy.com demanding that GoDaddy.com remove the newly added GoDaddy.com content which infringed upon the Complainant’s marks. The Complainant asserts that GoDaddy.com, an ICANN accredited registrar, refused to comply with the Complainant’s lawful demand to remove this new website content.

The Complainant asserts that the Respondent’s website included a disclaimer that the site was not associated with the Complainant. The Respondent’s disclaimer stated: “Please be advised that this site in no way repreents [sic] itself as having an [sic] connection with international truck company [sic].” The Complainant asserts that previous panels have held that such disclaimers by a respondent are meaningless and the need to include a disclaimer demonstrates that the Respondent in this case was well aware that visitors to the site would believe that the site was associated with the Complainant. The Complainant further asserts that the Respondent’s misleading of Internet users with the specious disclaimer coupled with the Respondent’s continued use of the Complainant’s marks and descriptors, including the title: “CXT International truck world’s biggest pickup truck”, constitutes an independent basis for finding bad faith registration and use in violation of the Policy.

The Complainant asserts that the Respondent has a history of cyberflying and has acted in concert with the ICANN accredited Registrar, GoDaddy.com – a company affiliated with the Respondent and in breach of paragraph 8(a) of the Rules – to transfer domain names subsequent to the receipt of notice of UDRP Complaints but before formal commencement of the proceedings in an attempt to evade prosecution and to escape and obstruct the UDRP jurisdiction and waste the Complainant’s time and money. The Complainant asserts that previous panels have held that cyberflying and similar deceptive practices constitute an independent ground for bad faith registration and use.

B. Respondent

No response was received from the Respondent with respect to this proceeding.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the domain name holder has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

The Panel can rule in a complainant’s favor only after the complainant has proven that the above-listed elements are present.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided sufficient evidence to establish that it is the owner of and has rights in the marks INTERNATIONAL and CXT.

Particularly, the Complainant owns several trademark registrations for the marks INTERNATIONAL and INTERNATIONAL and Design for use in connection with a variety of automotive and truck-related goods and with each having first use dates that well pre-date the registration date of the Domain Name. The Complainant has also presented evidence of its pending trademark applications for and common law rights in the mark CXT as well as evidence showing the Complainant’s use of its INTERNATIONAL mark in combination with its CXT mark, i.e., INTERNATIONAL CXT.

A review of the second-level domain of the domain name <cxtinternational.com> shows that the Complainant’s marks INTERNATIONAL and CXT are incorporated in the domain but are in reverse order when compared to the Complainant’s use thereof. Such a combination, however, does not prevent a finding that the Domain Name in issue is confusingly similar to these marks. Accordingly based on the uncontested evidence submitted by the Complainant establishing its ownership and rights in the marks, the Panel concludes that the Domain Name is confusingly similar to the Complainant’s marks and that paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panel to be proven based on her evaluation of all of the evidence presented, can demonstrate the holder’s rights to or legitimate interests in the Domain Name. These circumstances include:

(i) before any notice to the holder of the dispute, the holder’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 holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or

(iii) the domain name holder 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.

No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services. Rather, the uncontested evidence shows that the Complainant had announced its new line of CXT trucks just two days prior to the Respondent registering the Domain Name in issue. The Respondent then proceeded to create a website with pictures of the Complainant’s CXT trucks along with metatag portions containing the phrase “cxt international truck world’s biggest pickup truck”, as well as an offer to sell the Domain Name. The Respondent’s subsequent actions in this dispute of offering part of the proceeds from a sale of the Domain Name as monetary assistance to hurricane relief efforts, adding a disclaimer to its website and routing the Domain Name to a ministry site in Uganda do not change its previous activities into being bona fide or legitimate with regard to its use of this Domain Name. Accordingly, based upon the uncontested evidence, the Respondent’s use cannot constitute a bona fide offering of goods or services.

Nor can such patently commercial use constitute a legitimate noncommercial or fair use of the Domain Name. Moreover, the Respondent has presented no evidence of being commonly known by the Domain Name or any portion thereof, as an individual, business or otherwise. Rather the evidence submitted by the Complainant supports the finding that the Respondent registered the Domain Name in issue with knowledge of the Complainant’s marks and for the purpose of trying to capitalize on the confusion that this Domain Name would create with regard to the Complainant’s marks and the Complainant’s use thereof. The Panel therefore concludes that the Respondent has no rights or legitimate interests in the Domain Name and that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has 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 holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 website or location or of a product or service on the holder’s website or location.

Based upon the uncontested evidence, the Panel finds that the Respondent had knowledge of the Complainant’s marks CXT and INTERNATIONAL and its rights therein at the time the Respondent registered the Domain Name. This finding is supported by the evidence showing that: (1) the Complainant’s mark INTERNATIONAL has a strong reputation in the field of trucks and related goods and services, has been used for nearly 100 years, and is the subject of numerous federal registrations for trucks and related goods and services; (2) the Complainant’s use of the mark CXT in interstate commerce since 2004 for a brand of truck manufactured and sold by the Complainant and its common law rights associated therewith; (3) the introduction of the Complainant’s CXT trucks was announced just two days before the Domain Name was registered; (4) the Domain Name incorporates the Complainant’s CXT and INTERNATIONAL marks; (5) the Respondent placed photographs of the Complainant’s trucks on its website and used metatags containing the phrase “cxt international truck world’s biggest pickup truck”; (6) the Respondent placed a survey on its site asking users whether they would purchase truck-related merchandise from the site; (7) the Respondent replaced its original site with a parking page that contained links to, among other things, truck-related commercial websites; and (8) the Respondent solicited others to purchase advertising on its website. The Panel accordingly finds that the Respondent, by using the Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks. The Panel also finds that the Respondent registered and used the Domain Name to create initial interest confusion among Internet users who visit the Respondent’s site as to the source, sponsorship, affiliation, or endorsement of the site and the products and services offered on the site for its own apparent commercial gain.

The Complainant has further asserted that the Respondent acquired the Domain Name in bad faith primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration. To support these assertions, the Complainant has provided evidence that the Respondent offered the sale of the Domain Name on its website, which at one point stated that “[o]ffers under $150,000 will not be considered” and that “50% of the sale price will be donated to Hurricane Katrina relief”. Additionally, the Complainant provided evidence of an email exchange where the Respondent requested that the Complainant “forward an offer and I will consider it seriously”. Based on the evidence submitted, the Panel further finds that the Respondent acquired the Domain Name in bad faith primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration.

The Panel therefore concludes that paragraph 4(a)(iii) of the Policy has been satisfied in that the Respondent has registered and used the Domain Name in bad faith.

7. Decision

Based upon the above, the Panel accordingly requires that the registration of the domain name <cxtinternational.com> be transferred to the Complainant.

Marylee Jenkins
Sole Panelist

Dated: November 17, 2005