Wheel Pros LLC v. ISAAC GOLDSTEIN / POSTE RESTANTE
Claim Number: FA1607001685691
Complainant is Wheel Pros LLC (“Complainant”), represented by Lisa Reichenthal, California, USA. Respondent is ISAAC GOLDSTEIN / POSTE RESTANTE (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rockstarwheels.com> (‘the Domain Name’) registered with eNom646, Inc.
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.
Dawn Osborne of Palmer Biggs Legal as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 27, 2016; the Forum received payment on July 27, 2016.
On July 29, 2016, eNom646, Inc. confirmed by e-mail to the Forum that the <rockstarwheels.com> domain name is registered with eNom646, Inc. and that Respondent is the current registrant of the name. eNom646, Inc. has verified that Respondent is bound by the eNom646, Inc. 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 August 3, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 2016 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@rockstarwheels.com. Also on August 3, 2016, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 29, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant’s Submissions can be summarized as follows:
The Complainant is one of the largest aftermarket wheel companies in the world. It sells to about 30 companies worldwide. Since at least 2005 it has provided consumers with goods under the mark ROCKSTAR and owns registrations for this mark in, inter alia, the United States.
The Domain Name is confusingly similar to the Complainant’s ROCKSTAR mark because the only difference is the term ‘wheels’ at the end which the Complainant sells.
Respondent is not known by the name ‘rockstar’. It is not an agent or licensee of the Complainant. Respondent has connected the Domain Name to a website that contains a commercial search engine and a list of third party hyperlinks known as ‘payperclick’ links to unrelated goods.
The Respondent registered the Domain Name because it is confusingly similar to the Complainant’s ROCKSTAR mark and would likely attract many of the Complainant’s customers and would create confusion as to the affiliation between Complainant and Respondent. The links on the web site attached to the Domain Name benefit the Respondent as it receives click through revenue when Internet users click on any of the links. If a respondent profits from diversionary use of a complainant’s mark when the Domain Name resolves to commercial sites and the Respondent fails to contest the complaint, it may be concluded that the Respondent is using the Domain Name in bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent has had approximately twenty UDRP decisions against him which found that he is engaging in cybersquatting or typo squatting. Panellists have found this to be evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). The Respondent owns many domain names similar to famous brands such as Marlboro, Wells Fargo, Beyoncé, Chase Online and JC Penny.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of trade mark registrations for the mark ROCKSTAR for wheels in, inter alia, the United States with first use in commerce recorded as 2004.
The Domain Name registered in 2016 has been connected to a pay per click site offering wheels not of the Complainant’s manufacture.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Identical and/or Confusingly Similar
The Domain Name consists of the Complainant's ROCKSTAR mark, the generic word ‘wheels’ and the gTLD .com
Panels have held that adding a term that is descriptive of a complainant’s products and a gTLD to a complainant’s mark in a domain name is confusingly similar to a complainant‘s mark pursuant to Policy ¶ 4(a)(i). See Gillette Co. v RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the addition of the term ‘batteries’ which described the Complainant’s product and the gTLD .com were insufficient to distinguish the domain name duracellbaterries.com from the complainant’s DURACELL mark).
gTLDs do not serve to distinguish the Domain Name from a mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v. Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Respondent does not appear to be commonly known by the Domain Name and is not making a legitimate non-commercial or fair use of the name. The Respondent is not authorized by the Complainant to use its ROCKSTAR mark. The site appears to be set up for commercial benefit to compete with the Complainant using the latter's intellectual property rights to make a profit by pointing to third party links competing with the Complainant. See ALPITOUR SpA v. Albloushi, FA 888651 (Forum Feb. 26, 2007) (rejecting the Respondent's contentions of rights and legitimate interests because the respondent was merely using the domain name to operate a web site containing links to various competing commercial web sites which the panel did not find to be bona fide use in relation to goods and service under the Policy).
As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent's use of the site is commercial and he is using it to make a profit from linking to third party web sites in a confusing manner. The Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site. See Dovetail Ventures LLC v. Klayton Thorpe, FA 1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy 4(b)(iv) where it used the disputed domain name to host a variety of hyperlinks unrelated to the complainant’s business through which the Respondent presumably gained).
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy. The Panel notes the Respondent owns many domain names that appear to be typo squatted versions of famous brands. However in light of the above finding it is not necessary to consider further possible grounds of bad faith in this case.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rockstarwheels.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: September 5, 2016
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