national arbitration forum

 

DECISION

 

RockAuto, LLC v. Kamil Wszola / Blueconnex Inc.

Claim Number: FA1204001440497

 

PARTIES

Complainant is RockAuto, LLC (“Complainant”), represented by Jim Taylor of RockAuto, LLC, Wisconsin, USA.  Respondent is Kamil Wszola / Blueconnex Inc. (“Respondent”), Ontario.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <rockauto.co>, registered with Register.com.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 23, 2012; the National Arbitration Forum received payment on April 27, 2012.

 

On April 24, 2012, Register.com confirmed by e-mail to the National Arbitration Forum that the <rockauto.co> domain name is registered with Register.com and that Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On May 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 21, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@rockauto.co.  Also on May 1, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on May 1, 2012.

 

On May 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

The domain name is identical to the trademarked name except for the removal of the final letter “m” (“.co” instead of “.com”)

 

There is no evidence Respondent used the domain name in connection with a bona fide offering of goods or services or that Respondent (as an individual, business, or other organization) has been commonly known by the domain name.

 

Respondent is not 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 [sic].  The opposite is true.

 

Respondent is using the domain name to divert consumers to http://www.autopartsway.com/index.cfm?aid=05e1e7e9 – the website of Complainant’s competitor.  Acting on behalf of this competitor, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site.

 

B. Respondent

Respondent contends as follows:

 

Back in 2010 I hired a domain consultant to purchase domains which were not used by anyone and could be beneficial to our business.  The domain in question is one of the domains purchased at that time.

 

I do not see why RockAuto, LLC has an issue with how we use this domain, since their trademark specifically covers the RockAuto.com domain and not rockauto.co. In order to end this dispute quickly, I will gladly stop forwarding the domain to any automotive parts website effective immediately and close the dispute.

 

FINDINGS

Complainant has, and had, trademark rights in the at-issue domain name at all times relevant to this proceeding. The at-issue domain name is identical to Complainant’s ROCK AUTO trademark.

 

The at-issue domain name was registered on July 20, 2010.

 

Complainant has not licensed or otherwise authorized Respondent to use its ROCK AUTO mark.

 

The website referenced by the domain name displays links to Complainant’s competitors.

 

Notwithstanding Respondent’s proclamation that he would immediately stop forwarding the domain name to Complainant’s competitors, as of the date of this decision the at-issue domain name continues to reference a webpage containing links to websites that appear to be Complainant’s competitors.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

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

 

Identical and/or Confusingly Similar

Respondent’s at-issue domain name is confusingly similar to a mark in which Complainant has trademark rights.

 

Complainant shows that it registered RAROCKAUTO.COM (Reg. No. 2,866,795 registered July 27, 2004) with the USPTO. Complainant’s trademark registration is sufficient for the Panel to find that Complainant has rights in the RAROCKAUTO.COM mark pursuant to Policy ¶ 4(a)(i). See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO).  Complainant’s USPTO registration is sufficient evidence of a “mark in which the complainant has rights” even considering that Respondent may be located in a jurisdiction other than that of the relevant trademark’s registrar. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Although Complainant alleges that Respondent’s <rockauto.co> domain name is identical to its trademarked name, it is not. There are subtle, albeit insignificant, differences between Complainant’s mark and the domain name. For one, the at-issue domain name omits the letters “r” and “a” found at the beginning of Complainant’s mark. However, these alterations do not prevent finding confusing similarity under Policy ¶4(a)(i). See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the complainant’s STATE FARM mark); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the addition of the letter “c” to the complainant’s SAFLOK mark does not distinguish the <saflock.com> domain name from the mark under Policy ¶ 4(a)(i)). Additionally the top level domain is different that than the Complaint’s mark. But changing the generic top-level domain name “.com” to the country-code top-level domain “.co” is immaterial for the purposes of Policy ¶4(a)(i) since top-level domain names are entirely disregarded under Paragraph 4(a)(i). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”)

 

Therefore, Respondent’s <rockauto.co> domain name is confusingly similar to Complainant’s RAROCKAUTO.COM mark according to Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Respondent lacks rights and interests in respect of the <rockauto.co> domain name.

 

Under Policy ¶ 4(a)(ii), Complainants must first make out a prima facie case that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights and legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).

 

There is no evidence in the record showing that Respondent has been commonly known by the at-issue domain name, nor does Respondent make such a claim. Additionally, WHOIS information for the disputed domain name lists the registrant as “Kamil Wszola / BLUECONNEX Inc.”  Kamil Wszola / BLUECONNEX Inc. does not nominally relate to, or otherwise identify, the at-issue domain name.  See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). The Panel thus finds that the Complainant is not known by the domain name under to Paragraph 4(c)(ii).

 

Furthermore, the record fails to show that the at-issue domain name is used in connection with a bona fide offering of goods or services or that Respondent is making a legitimate noncommercial or fair use of the domain name.  Without proffering supporting documentation, Complainant alleges that Respondent uses the at-issue <rockauto.co> domain name to divert consumers to a competitor’s <autopartsway.com> website.  Respondent’s failure to deny Complainant’s assertion in its Response acts to admit Complainant’s allegation by silence. The use of Respondent’s confusingly similar domain name to divert Internet users to a competitor’s website does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).

 

In conclusion, the evidence presented is sufficient to make out a prima facie case showing that Respondent lacks rights and interest in respect of the at-issue domain name and there is nothing in the Response or otherwise before the Panel that contradicts the conclusion that Respondent lacks rights and interests in respect of the domain name pursuant to Policy ¶4(a)(ii).

 

Registration and Use in Bad Faith

The at-issue domain name was registered and is being used in bad faith.

 

Respondent’s claim that he received the domain name from a third party consultant to benefit his business does not insulate Respondent from his ultimate responsibility for the registration and use of a domain name that is exclusively in his possession and control, such as the at-issue domain name. Nor does it alter his rights or duties regarding such domain name pursuant to his operative registration agreement with the domain name’s registrar.

 

Clearly, the third party purchaser that Respondent refers to acted as Respondent’s actual agent. It is black letter law that an agent’s principal, here Respondent, is generally bound by any obligations created by his agent.

 

Therefore, Respondent registered and uses the <rockauto.co> domain name to divert consumers to Complainant’s competitors via a page containing numerous links thereto, not some third party. Since the links appear to be pay-per-click links, the Panel concludes that Respondent’s interest in registering and using the at-issue domain name is commercial.

 

Therefore, it is apparent that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with the Complainant’s mark by falsely indicating, at least as a matter of initial interest, that Complainant is a source, sponsor, affiliate and/or endorser of Respondent’s website. These circumstances indicate that Respondent has registered and uses the disputed domain name in bad faith pursuant to Policy ¶4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).

 

Furthermore, Respondent states in his Response that he intends to “immediately” remove any links to Complainant’s competitors contained on his <rockauto.co> website. Respondent thereby admits that links to Complainant’s competitors do in fact exist. Nevertheless, Respondent fails to make good on his promise.

 

Paragraph 4.5 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions states the consensus view of UDRP panels regarding a panel’s independent review of a website linked to an at-issue domain name:

 

A panel may visit the internet site linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name. The panel may also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision. 

 

See http://www.wipo.int/amc/en/domains/search/overview2.0/#45 (May 16, 2012). Numerous cases support this conclusion and the Panel has, in its discretion, examined Respondent’s <rockauto.co> website.

 

The Panel’s review of Respondent’s website shows that despite Respondent’s claimed intention to purge the <rockauto.co> website of links to Complainant’s competitors, the website nevertheless still contains numerous offending links. Therefore, the Panel concludes that Respondent is duplicitous and that he deliberately and knowingly used and uses his <rockauto.co> website against the admitted rights of Complainant and in bad faith. What’s more, Respondent’s prevarication is additional independent evidence that Respondent registered and is using the at-issue domain name in bad faith pursuant to Policy 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <rockauto.co> domain name be TRANSFERRED from Respondent to Complainant.

 

Paul M. DeCicco, Panelist

Dated:  May 17, 2012

 

 

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