JHR Electric Transports LLC v. yazan saleh
Claim Number: FA1804001781621
Complainant is JHR Electric Transports LLC (“Complainant”), represented by Thomas W. Galvani of Thomas W. Galvani, P.C., Arizona, USA. Respondent is yazan saleh (“Respondent”), represented by Jibrael S. Hindi, Florida, USA
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ewheelsusa.com>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
M. KELLY TILLERY, ESQUIRE as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 12, 2018; the Forum received payment on April 12, 2018.
On April 13, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <ewheelsusa.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 April 18, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 2018 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@ewheelsusa.com. Also on April 18, 2018, 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 9, 2018.
On May 16, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed M. KELLY TILLERY, ESQUIRE 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’s Contentions
Complainant began using the EWHEELS® mark in commerce in 2010 in connection with electric transport vehicles. Complainant has rights in the EWHEELS® mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,294,086, registered Sep. 26, 2017, filed July 25, 2016). Respondent’s <ewheelsusa.com> domain name is nearly identical and confusingly similar to Complainant’s mark as it contains Complainant’s mark in its entirety and merely adds the geographic term “usa.”
Respondent has no rights or legitimate interests in the <ewheelsusa.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to confuse users and redirect these users to Respondent’s website where it offers competing goods.
Respondent registered and uses the <ewheelsusa.com> domain name in bad faith. Respondent registered and is using the domain name to profit from consumers’ confusion with respect to the mark by offering competing goods. Finally, Respondent must have had knowledge of Complainant’s mark at the time it registered the domain name due to Complainant use of the mark in commerce since at least as early as 2010.
B. Respondent’s Contentions
Respondent does not dispute that Complainant has Federal Trademark rights in the EWHEELS® mark. Respondent also does not dispute that the term “usa” does little to mitigate confusion.
Respondent does have rights and legitimate interests in the subject domain name. First, Respondent formed EWHEELSUSA INC and began conducting business in connection with a bona fide offering of goods or services under the <ewheelsusa.com> website long before Complainant gave any notice to Respondent of this dispute on September 8, 2017. Second, the domain name at issue is virtually identical to Respondent’s corporate name, EWHEELSUSA INC. Thus, Respondent is commonly known by the domain name as it is conducting business under the name. Finally, Respondent adopted the <ewheelsusa.com> domain name because of the highly descriptive nature of the term “ewheels” with respect to hoverboards – a product that is substantially different from Complainant’s mobility scooters in terms of price, target consumer and intended use.
Respondent did not register or use the domain name in bad faith. Complainant’s arguments that Respondent registered the domain name in bad faith are based on pure speculation and conclusory allegations. None of the 4(b) factors apply in this proceeding, as Respondent has never sold a domain name, Respondent did not register the domain name to prevent Complainant from reflecting its mark in a domain name, Respondent does not compete with Complainant, and Respondent did not register the domain name to attract users seeking Complainant. Further, Respondent never believed it needed Complainant’s authorization to use a descriptive name to identify its hoverboard business. Finally, Respondent never knew of Complainant prior to registering the <ewheelsusa.com> domain name.
Respondent registered the <ewheelsusa.com> domain name on March 11, 2017.
1) Complainant has met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent's Domain Name is identical or confusingly similar to a Trademark in which Complainant has rights.
2) Complainant has not met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent has no rights or legitimate interest in respect of the Domain Name.
3) Complainant has not met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent's domain name has been registered and is being used 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.
Complainant claims rights in the EWHEELS® mark through use since 2010 in commerce and by virtue of its registration of the mark with the USPTO (Reg. No. 5,294,086, registered Sep. 26, 2017, filed July 25, 2016). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark.”) Complainant has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Rights in a mark date back to the filing date. See ADP, LLC v. Dennis Shifrin / Streamline, FA 1732114 (Forum June 13, 2017) (“the relevant date for Complainant’s mark is the filing date.”). Accordingly, the Panel finds that Complainant has established rights in the EWHEELS® mark dating back at least to the filing date of July 25, 2016 for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <ewheelsusa.com> domain name is identical or confusingly similar to Complainant’s mark as it contains Complainant mark in its entirety and merely adds the geographic term “usa.” The domain name adds the generic top-level domain (“gTLD”) and that neither changes a Complainant’s mark sufficiently or distinguishes a domain name for the purposes of Policy ¶4(a)(i). See Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015) (“the ‘usa’ portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that the <ewheelsusa.com> domain name is confusingly similar to the EWHEELS® mark under Policy ¶4(a)(i).
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the <ewheelsusa.com> domain name. Relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies Respondent “yazan saleh” as the Registrant. There is no evidence to show that Respondent has ever been known by the EWHEELS mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (respondent not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). There is also no evidence that Respondent has ever been affiliated with Complainant, ever been known by the domain name prior to its registration, and/or that Complainant gave permission to use the mark in any manner. Accordingly, the Panel finds that Respondent is not commonly known by the <ewheelsusa.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the domain name to confuse users and redirect these users to Respondent’s website where it offers competing goods. Using a confusingly similar domain name that resolves in a webpage that directly competes with a complainant generally fails to constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (Complainant provides freelance talent services, and Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use).
The resolving webpage shows a commercial website with the title “EWHEELSUSA” and appears to offer electronic transportation devices for sale, that do not compete with those of Complainant.
Respondent contends that the domain name at issue is virtually identical to Respondent’s corporate name, EWHEELSUSA INC. and thus, Respondent is commonly known by the domain name as it is conducting business under the name. Respondent, however, is yazan saleh, an individual, not the (or his) corporation which offer the sale of hoverboards and two models of foldable scooters for kids. As such, the Panel finds that Respondent is not commonly known by the domain name for the purposes of Policy ¶ 4(c)(ii).
Respondent further, argues that it formed its EWHEELSUSA INC. company and began conducting business in connection with a bona fide offering of goods or services under the <ewheelsusa.com> website long before Complainant gave any notice to Respondent of this dispute on September 8, 2017. Making legitimate business offerings under an at-issue domain name, especially when the goods do not compete with a complainant, can be used to show a use in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. See SPS Commerce, Inc. v. Registration Private / Domains By Proxy, LLC, FA 1724583 (Forum May 24, 2017) (“Indeed, much of Respondent’s evidence goes beyond demonstrable preparation and establishes actual use of the Domain Name in connection with a bona fide offering of e-commerce services. In addition to the branding focus groups, marketing expenditure, and developing case studies and other digital content, Respondent actually offered e-commerce services via the Domain Name website. The Panel thus finds that Respondent has rights and legitimate interests in the Domain Name.”); see also VIP ME ENTERPRISES LLC LIMITED LIABILITY COMPANY NEVADA v. frank ma / Vipshop (US) Inc., FA 1702016 (Forum Dec. 20, 2016) (“Respondent contends that the Domain Name is used for a legitimate offering of on-line retail services featuring women’s fashion apparel which is unrelated to Complainant’s use of the VIPME mark. On that basis, the Panel considers that Respondent has sufficiently demonstrated rights or legitimate interests in the Domain Name through its use.”).
Respondent markets to an entirely different consumer than Complainant, and offers vastly different products than those offered by Complainant. As such, the Panel agrees, and finds that Respondent does have rights and legitimate interests in the domain name for the purposes of Policy ¶¶ 4(c)(i) and/or (iii).[i]
Complainant argues that Respondent registered and uses the <ewheelsusa.com> domain name in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering competing goods or services. Using a disputed domain name that trades upon the goodwill of a complainant for commercial gain can evidence bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Respondent’s use alone under these circumstances is not sufficient to prove bad faith registration or use under Policy ¶ 4(b)(iv).
Further, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the EWHEELS mark at the time of registering the <ewheelsusa.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evidence bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant produces no evidence of actual knowledge but contends that Respondent “must have had knowledge of Complainant’s mark” at the time it registered the domain name due to Complainant use of the mark in commerce since at least as early as 2010. The Panel cannot, based on this record, find that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii) based upon that alone.
The Panel finds that Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
Respondent’s registration of the <ewheelsusa.com> domain predates Complainant’s first claimed rights in the EWHEELS mark and thus, Complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).
The Panel concludes that Respondent has rights or legitimate interests in the <ewheelsusa.com> domain name pursuant to Policy ¶ 4(a)(ii), and the Panel finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).
Respondent argues that Complainant’s arguments are based on speculation and conclusory allegations. Respondent further claims that none of the 4(b) factors apply in this proceeding, as Respondent has never sold a domain name, Respondent did not register the domain name to prevent Complainant from reflecting its mark in a domain name, Respondent does not compete with Complainant, and Respondent did not register the domain name to attract users seeking Complainant. Conclusory arguments by a complainant are generally insufficient for a finding of bad faith under the Policy. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)). The Panel agrees that Complainant’s arguments are not supported by any conclusive evidence, and declines to hold that Respondent registered the <ewheelsusa.com> domain name in bad faith.
Further, Respondent avers that it never believed it needed Complainant’s authorization to use a descriptive name to identify its unrelated hoverboard business. Using generic/descriptive terms in a domain name, where the goods offered are unrelated to those offered by a complainant, can be used to refute bad faith arguments by a complainant. See Build-A-Bear Workshop, Inc. v. Pallone, FA 874279 (Forum Mar. 1, 2007) (“A respondent does not register or use a disputed domain name in bad faith if the terms of a complainant’s mark are of common usage and the respondent operates a business that could reasonably be marketed under the disputed domain name”); see also Chicago Bd. Options Exch. Inc. v. Private, FA 804703 (Forum Nov. 29, 2006) (finding no bad faith registration and use where the respondent used the complainant’s trademark in its domain name in order to provide information on the complainant’s Options Exchange, and the respondent was not attempting to brand itself as related to the domain name or to steal business or customers from the complainant’s Options Exchange). As noted above, Respondent avers that it markets to an entirely different audience than Complainant, and offers vastly different products than those offered by Complainant even though both are in the electric transportation industry. As such, the Panel holds that Respondent did not register or use the domain name in bad faith.
Finally, Respondent claims that it never knew of Complainant’s business prior to registering the <ewheelsusa.com> domain name contrary to Complainant’s assertions. A respondent may be found to not have registered an at-issue domain name in bad faith where it had no prior knowledge of a complainant’s rights in a mark. See Seaway Bolt & Specials Corp. v. Digital Income Inc., FA 114672 (Forum Aug. 5, 2002) (finding that because the complainant’s mark was not particularly well-known outside of its field, and the complainant failed to show that the respondent knew or should have known about the complainant at the time of registration, the respondent did not register the domain name in bad faith). Respondent avers that Respondent was unaware of Complainant’s business at the time it registered the <ewheelsusa.com> domain name. As such, the Panel accepts Respondent’s assertions as true, and holds that Respondent did not register the domain name in bad faith under Policy ¶ 4(a)(iii).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <ewheelsusa.com> domain name REMAIN WITH Respondent.
M. KELLY TILLERY, ESQUIRE, Panelist
Dated: May 24, 2018
[i] Respondent’s use of the domain name may constitute trademark infringement under Federal and/or State Law, but that is not the issue at hand under the UDRP.
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