Dominic Vetere v. DAVE CARRIER / DC FINANCE INC
Claim Number: FA1612001707259
Complainant is Dominic Vetere (“Complainant”), Canada. Respondent is DAVE CARRIER / DC FINANCE INC (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <parts4lessupull.com>, registered with eNom, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 13, 2016; the Forum received payment on December 13, 2016.
On December 14, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <parts4lessupull.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 December 16, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 5, 2017 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@parts4lessupull.com. Also on December 16, 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 January 16, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.
1. Complainant is in the auto parts business. Complainant uses the PARTS 4 LESS U-PULL mark and logo in conjunction with the operation of its business. Complainant has not registered the mark, but Complainant’s business is registered with the Government of Ontario, Canada (e.g., Reg. No. 1847349, registered Mar.12, 2015). See Compl., at Attached Annex C. Complainant has established secondary meaning in the mark through marketing campaigns and thousands of satisfied customers. Respondent’s <parts4lessupull.com> is confusingly similar to Complainant’s PARTS 4 LESS U-PULL mark because it incorporates the mark in its entirety, while eliminating the hyphen and adding the “.com” generic top-level domain
(“gTLD”).
2. Respondent has no rights or legitimate interests in the disputed domain name. Additionally, Respondent no longer has any connection to the Complainant’s company. Respondent claimed ownership of the domain name and attempted to sell it to Complainant for $5,000. Respondent has not made a bona fide offering of goods or services, nor has a legitimate non-commercial interest in the domain name. Respondent is taking control of the website to sell it to or damage Complainant’s business.
3. Respondent registered and is using the disputed domain name in bad faith. While Respondent allegedly created a company website for Complainant’s business use, the subject domain name <parts4lessupull.com> and an associated webpage were registered in Respondent’s name and personal business. Respondent has allegedly been using the misleading website to redirect users to competitor’s websites. See Compl., at Attached Annex G–J. Additionally, Registrant had actual knowledge of Complainant mark and logo because Respondent was a former business partner in the company.
1. Respondent did not submit a response.
1. Respondent’s <parts4lessupull.com> domain name is confusingly similar to Complainant’s PARTS 4 LESS U-PULL mark.
2. Respondent does not have any rights or legitimate interests in the <parts4lessupull.com> domain name.
3. Respondent registered or used the <parts4lessupull.com> domain name in bad faith.
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.”).
Complainant is in the auto parts business. Complainant uses the PARTS 4 LESS U-PULL mark and logo in conjunction with the operation of its business. Complainant claims it has not registered the mark, but Complainant’s business is registered with the Government of Ontario, Canada (e.g., Reg. No. 1847349, registered Mar.12, 2015) See Compl., at Attached Annex C. Complainant argues that it has established common law rights in the PARTS 4 LESS U-PULL mark through acquiring secondary meaning in the mark. Complainant states that it has established secondary meaning in the mark through marketing campaigns and thousands of satisfied customers. See Compl., at Attached Ex. Q. The Panel finds Complainant’s contentions to be sufficient and concludes that Complainant has established common law rights by showing the PARTS 4 LESS U-PULL mark has taken on a secondary meaning in association with Complainant’s business. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”).
Complainant argues that Respondent’s <parts4lessupull.com> is confusingly similar to Complainant’s PARTS 4 LESS U-PULL mark because it incorporates the mark in its entirety, while eliminating the hyphen and adding the “.com” gTLD. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel finds that Respondent’s <parts4lessupull.com> is confusingly similar to Complainant’s PARTS 4 LESS U-PULL mark.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain
names.”).
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. To support this argument, Complainant argues that Respondent no longer has any connection to the Complainant’s company. Panels have held that former employees of a company no longer hold any rights or legitimate interests in the company’s mark. See Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) (finding that a former employee does not acquire rights or legitimate interests in a domain name identical to the former employer's trademark).
Additionally, Complainant argues that Respondent has not made a bona fide offering of goods or services, nor has a legitimate non-commercial interest in the domain name. To support this argument, Complainant states that Respondent claimed ownership of the domain name and attempted to sell it to Complainant for $5,000. See Correspondence at Client. Complainant further argues that Respondent allegedly has taken control of the website to sell it to or damage Complainant’s business. See Id. Panels have held that respondents holding domain names to sell them to complainants evince no legitimate claim or rights to the disputed domain name. See Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark).
Complainant argues that Respondent registered and is using the disputed domain name in bad faith. While Respondent allegedly created the company website for Complainant’s business use, Complainant avers that the domain name and associated webpage were registered in Respondent’s name and personal business instead of Complainant’s company. See Compl., at Attached Annex E. Additionally, Registrant had actual knowledge of Complainant mark and logo because Respondent was a former business partner in the company. Panels have found bad faith when respondents register domain names with the knowledge of a previous employers’ mark. See DINOFLEX Mfg. Ltd. v. Recreational Tech. Indus. Ltd., FA 292846 (FORUM Aug. 17, 2004) (“The Panel finds that Respondent registered and used the Disputed Domain Name in bad faith since Respondent wilfully registered the name despite its knowledge of Complainant’s rights in the PLAYTILES mark, which can be inferred from the involvement of Mr. Damberg in the industry and as a past or current employee of Complainant and Respondent respectively.”). Therefore, the Panel in the instant case finds that Respondent acted in bad faith under Policy ¶ 4(a)(iii).
Next, Complainant argues that Respondent has allegedly been using the website to redirect users to competitor’s websites to disrupt Complainant’s business. See Compl., at Attached Annex G–J. Panels have held that a respondents domain name that redirects to a complainant’s competitor disrupts the complainant’s business in bad faith under Policy ¶ 4(b)(iii). See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Aizhenhua / Aizhenhua, FA140700157872 (Forum Sept. 17, 2014) (finding that because the complainant operated in the field of automobile parts and services and the respondent was using the disputed domain name to display hyperlinks to companies that operate in the same field, the respondent was disrupting the complainant’s business, demonstrating bad faith according to Policy ¶ 4(b)(iii)). Thus, the Panel finds that Respondent’s disruption of Complainant’s business evinces bad faith under Policy ¶ 4(b)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <parts4lessupull.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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