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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NovAtel Inc. v. CONG TY TNHH

Case No. D2019-1954

1. The Parties

The Complainant is NovAtel Inc., Canada, represented by Carr Intellectual Property Law, United States of America.

The Respondent is CONG TY TNHH, Switzerland.

2. The Domain Name and Registrar

The disputed domain name <novattel.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2019. On August 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 13, 2019, 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 the Complainant on August 15, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 16, 2019.

The Center verified that the Complaint together with the amended 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 August 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2019.

The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on September 17, 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 specialized in GNSS (Global Navigation Satellite System) products and systems. The Complainant markets and distributes its products under the NOVATEL mark and maintains its website at the domain name <novatel.com>, registered since September 4, 1995.

The NOVATEL mark was first used by the Complainant at least as early as June of 1992 and registered with the United States Patent and Trademark Office on July 17, 2001, registration No. 2,468,649, in class 09 for the following goods: navigation and positioning transceivers, receivers, antennas, integrated circuits, circuit boards, data processors, instruments, computer hardware, firmware, GPS receivers in various configurations for use in global positioning systems, world-wide ground reference stations and related space based satellite systems, having use in surveying, tracking, positioning, locating, mapping, measuring, communicating and other telemetry-enabled measuring and locating.

The Respondent registered the disputed domain name on August 23, 2018.

The disputed domain name currently does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is confusingly similar to the Complainant's NOVATEL mark, considering that the disputed domain name contains the NOVATEL mark in its entirety, causing a likelihood of confusion as to the source and/or sponsorship of the disputed domain name.

The Complainant further alleges that the registration of the disputed domain name can be considered as a case of typosquatting, as the repeated letter “t” does not significantly affect the appearance or pronunciation of the disputed domain name and does not mitigate the confusing similarity between the disputed domain name and the Complainant’s NOVATEL trademark.

In addition, the Complainant affirms that the designation of a generic Top-Level Domain (“gTLD”) such as “.com” does not prevent the conclusion that the disputed domain name and the NOVATEL mark are confusingly similar, as noted in prior panels’ decisions.

Moreover, the Complainant argues that the Respondent lacks rights and legitimate interests in respect of the disputed domain name since the Respondent is neither commonly known by the name “novatel” nor is affiliated with the Complainant. The Complainant also alleges that the Respondent does not own any trademark rights related to the “novatel” term.

The Complainant also claims that its NOVATEL trademark registration precedes the registration of the disputed domain name, and the Complainant has never authorized, consented to, or licensed the NOVATEL mark to the Respondent.

The Complainant adds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and has made no reasonable preparations to use the disputed domain name.

In regard to bad faith in registration and use of the disputed domain name, the Complainant alleges that the non-use of the disputed domain name does not prevent a finding of bad faith. The Complainant argues that it is implausible that the Respondent was unaware of the NOVATEL mark when registering the disputed domain name, given that the Complainant has been using the NOVATEL mark for over twenty-six (26) years.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy establishes three elements, specified in paragraph 4(a), that must be established by the Complainant to obtain the requested relief. These elements are:

(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.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

Ownership of a trademark registration is generally sufficient evidence that a Complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1. As disclosed through Annex D of the Complaint, the Complainant is the owner of trademark registrations for the NOVATEL mark, since 2001.

In this sense, the disputed domain name incorporates, in its entirety, the NOVATEL mark, with the addition of an extra “t”, which does not prevent the confusing similarity with the Complainant’s NOVATEL mark. The addition of an extra “t” can, in fact, be considered as a case of typosquatting, a practice by which a registrant registers a domain name consisting of a common, obvious, or intentional misspelling of a trademark, see WIPO Overview 3.0, section 1.9.

Moreover, the use of the gTLD “.com” is irrelevant in order to establish identity or confusing similarity between the disputed domain name and the Complainant’s trademark (see Topvintage.nl BV v. DOMAIN ADMIN, WIPO Case No. D2017-1019 (“[t]he various generic Top-Level Domains (“gTLDs”) in each of the disputed domain names are commonly disregarded for the purposes of comparison in cases under the Policy on the grounds that they are required for technical reasons only”); see also Volkswagen AG v. Todd Garber, WIPO Case No. D2015-2175).

Thus, the Panel concludes that the Complainant has established the first condition of paragraph 4(a) of the Policy.

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, can demonstrate the Respondent’s rights to or legitimate interests in the disputed 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 of this dispute, the Respondent was using or was making demonstrable preparations to use the disputed domain name in connection with any type of bona fide offering of goods or services or that the Respondent has been commonly known, as an individual, business or otherwise, by the disputed domain name.

The uncontested evidence shows that the Complainant had well-known rights in its NOVATEL mark at the time of the registration by the Respondent of the disputed domain name and that the Respondent nevertheless registered it.

In this regard, it is important to note that the Complainant has never authorized, licensed or permitted, in any way, the Respondent to register or use the disputed domain name, which entirely incorporates the Complainant’s NOVATEL mark.

Considering the evidence on file, and considering that the Respondent failed to send a Response to the Complaint, the Panel finds that there are no elements suggesting that the Respondent has or might have had rights or legitimate interests in respect of the disputed domain name.

The Panel, therefore, concludes that the Respondent has no rights or legitimate interests in the disputed domain name and, therefore, the condition established at 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.

In light of the above and considering the Complainant’s allegations, the Panel understands that there are no indicative elements of any of the circumstances described above.

However, considering that the listed scenarios are non-exclusive and merely illustrative, and that the Complainant was able to prove the passive holding of the disputed domain name – which reproduces the entirety of the NOVATEL mark, registered by the Complainant since 2001, the Panel finds that the third element has been established.

In regard to the doctrine of “passive holding”, from the inception of the UDRP, previous panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. According to section 3.3 of the WIPO Overview 3.0, “[w]hile panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

In the present case, the Panel understands that the NOVATEL mark is distinctive, considering that it is a non-dictionary word and has been used by the Complainant for over 26 years, reason why the Respondent should have been aware of the Complainant’s trademark rights related to the NOVATEL mark when it registered the disputed domain name. Furthermore, the Respondent did not reply to the Complaint and there is no evidence to find a good-faith registration or use in regard to the disputed domain name. The Respondent has not made any active use of the disputed domain name, which does not resolve to a website.

In addition, the disputed domain name incorporates the NOVATEL mark in its entirety, having only added an extra “t”, which is considered by the Panel as typosquatting, and which also contributes to the finding of bad faith registration (see Redbox Automated Retail, LLC d/b/a Redbox v. Milen Radumilo, WIPO Case No. D2019-1600, “[t]yposquatting itself is evidence of relevant bad faith registration and use”).

Therefore, the Panel finds that the Complainant has established the third element of paragraph 4(a)(iii) of the Policy.

7. Decision

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, <novattel.com>, be transferred to the Complainant.

Luiz E. Montaury Pimenta
Sole Panelist
Date: September 25, 2019

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