Wheel Pros, LLC v. Adept Distribution / Adept Distribution LLC
Claim Number: FA1810001813445
Complainant is Wheel Pros, LLC (“Complainant”), represented by Lisa Reichenthal, California, USA. Respondent is Adept Distribution / Adept Distribution LLC (“Respondent”), represented by Alina Landver of LANDVER LAW CORPORATION, APC, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <2wheelpros.com>, registered with Godaddy.Com, Llc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Scott R. Austin, Esq., Honorable Carolyn M. Johnson, (Ret.), as Panelists, and David P. Miranda, Esq., as Chair Panelist.
Complainant submitted a Complaint to the Forum electronically on October 24, 2018; the Forum received payment on October 24, 2018.
On October 25, 2018, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <2wheelpros.com> domain name is registered with Godaddy.Com, Llc and that Respondent is the current registrant of the name. Godaddy.Com, Llc has verified that Respondent is bound by the Godaddy.Com, Llc 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 October 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 10, 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@2wheelpros.com. Also on October 26, 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 December 10, 2018.
On December 18, 2018, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Scott R. Austin, Esq., Honorable Carolyn M. Johnson, (Ret.), as Panelists, and David P. Miranda, Esq., as Chair Panelist.
Respondent’s Additional Submission was received on December 14, 2018.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is one of the largest aftermarket wheel companies in the world. Complainant has rights in the WHEEL PROS mark through its trademark registrations all over the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,191,617, registered Jan. 2, 2007) and the European Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 1,154,595, registered Apr. 11, 2013). See Compl. Annex 2. Complainant claims common law rights in the WHEEL PROS mark as far back as 1996. Respondent’s <2wheelpros.com> domain name is confusingly similar to Complainant’s WHEEL PROS mark as Respondent merely adds the descriptive or generic, numerical term “2” and a “.com” generic top-level domain (“gTLD”) to the mark.
Complainant contends Respondent has no rights or legitimate interests in the <2wheelpros.com> domain name. Respondent is not authorized or licensed to use Complainant’s WHEEL PROS mark and is not commonly known by the disputed domain name. Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to sell competing goods and services in connection with Complainant’s WHEEL PROS mark.
Complainant contends Respondent registered and uses the <2wheelpros.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent sells goods and services that directly compete with Complainant. Furthermore, Respondent had actual and constructive knowledge of Complainant’s rights in the WHEEL PROS mark prior to registering and subsequent use of the disputed domain name.
B. Respondent
Respondent claims to be a small “mom and pop” that employs 4-5 employees selling genuine motorcycle and other power sport parts and accessories of others on their “retail” facing website located at the <2wheelpros.com> domain name. Respondent contends Complainant has no common law rights in the WHEEL PROS mark as Complainant has provided insufficient evidence of secondary meaning. Respondent contends the disputed domain name is not confusingly similar to Complainant’s WHEEL PROS mark as: (1) Complainant’s and Respondent’s goods travel in different channels of trade; (2) Respondent’s mark and Complainant’s mark made different commercial impressions to avoid a likelihood of confusion; and (3) there are an abundance of other marks which contain the terms “wheel” and “pro” to highlight the descriptiveness and common nature of these words in the vehicular related goods and services.
Respondent claims it has rights and legitimate interests in the <2wheelpros.com> domain name. Respondent is commonly known by the disputed domain name as it operates its business under the disputed domain name for an online retail store. Respondent’s use of the WHEEL PROS mark constitutes nominative fair use as Respondent is using the mark to identify a category for 2-wheeled vehicles, rather than 1, 3, or 4-wheeled vehicles.
Additionally, Respondent did not register or use the <2wheelpros.com> domain name in bad faith. Respondent registered the disputed domain name without any knowledge of Complainant’s WHEEL PROS mark. Further, Respondent claims Complainant brought its complaint in bad faith and asks that the Panel find Reverse Domain Name Hijacking (“RDNH”). The disputed domain name <2wheelpros.com> domain name was registered on September 14, 2009.
C. Additional Submissions
Respondent’s Additional Submission was received on December 14, 2018 and considered.
Complainant has established each of the elements required under paragraph 4(a) of the Policy, and as such the domain name at issue shall be transferred from Respondent to the Complainant.
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 WHEEL PROS mark based upon registration of the mark with multiple trademark agencies, including the USPTO (e.g., Reg. No. 3,191,617, registered Jan. 2, 2007) with a claimed date of first use of June 1, 1998 and the OHIM (e.g., Reg. No. 1,154,595, registered Apr. 11, 2013). See Compl. Annex 2. Registration of a mark with the multiple trademark agencies is sufficient to establish rights in that mark. See State Farm Mutual Automobile Insurance Company v. Henry Francis, FA 1738716 (Forum July 28, 2017) (acknowledging complainant’s rights in a mark when it had registered the mark with the United States Patent and Trademark Office and the Canadian Intellectual Property Office). The Panel holds that Complainant’s registration of the WHEEL PROS mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant also asserts common law rights in the WHEEL PROS mark as far back as 1996. Common law rights may be found where a complainant has provided sufficient evidence that the mark has acquired secondary meaning under a Policy ¶ 4(a)(i) analysis. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Complainant provides examples of its use and advertising of the WHEEL PROS mark in connection to its sale of vehicular goods and services. See Compl. Annexes 6, 8-9. Complainant also contends that it has owned and operated the <wheelpros.com> domain name since its creation on September 16, 1998, but does not provide any evidence. Therefore, the Panel finds Complainant has established rights in the WHEEL PROS mark, dating to June 1, 1998 the claimed date of first use in its registered trademark.
Complainant next argues Respondent’s <2wheelpros.com> domain name is confusingly similar to the WHEEL PROS mark, as the name incorporates the mark in its entirety while adding the descriptive term “2” and a “.com” gTLD. Adding a descriptive term and a gTLD to a complainant’s mark may not be sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Bloomberg Finance L.P. v. Sunny Bhadauria, FA 1786429 (Forum June 7, 2018) (finding the <bloombergquint.org> domain name to be confusingly similar to the complainant’s BLOOMBERG mark, as the name consists of the mark, the added term “quint” (which refers to the complainant’s Indian business partner “Quintillian Media”) and the gTLD “.org”); see also Twentieth Century Fox Film Corporation v Domain Admin / PrivacyProtect.org / Denis Ferulev, FA 1652313 (Forum Jan. 19, 2016). The Panel finds the <2wheelpros.com> domain name is confusingly similar to the WHEEL PROS mark per 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) (finding that a 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 argues that Respondent has no rights or legitimate interests in the <2wheelpros.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the WHEEL PROS mark in any way. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “Adept Distribution / Adept Distribution LLC” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. See Amend. Compl. Annex 1. The Panel finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <2wheelpros.com> name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <2wheelpros.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the name resolves to a competing website. Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Specifically, Complainant contends that the domain name resolves to a website containing a facsimile of Complainant’s WHEEL PROS mark in connection to the sale of vehicular goods and services. See Compl. Annex 5. Complainant argues that the website gives the false impression that it is affiliated with, and authorized by, Complainant. The Panel determines that Respondent does not have rights or legitimate interests in the <2wheelpros.com> domain name.
Complainant claims Respondent’s use of the <2wheelpros.com> domain name to compete with Complainant’s business demonstrates that Respondent registered and used the domain name in bad faith. Use of a domain name to create a false impression of affiliation with a complainant in order to compete may be behavior indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Complainant contends that the domain name resolves to a website containing a facsimile of Complainant’s WHEEL PROS mark in connection to the sale of vehicular goods and service. See Compl. Annex 5. Complainant argues that the website gives the false impression that it is affiliated with, and authorized by, Complainant. The Panel finds the similarity between the marks as used by Respondent is such that Respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv).
Reverse Domain Name Hijacking (“RDNH”)
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <2wheelpros.com> domain name, of its rights to use the disputed domain name. Respondent contends that Complainant sought to present itself as having used the domain name continuously since 1998, but that Complainant fails to provide any use of the mark prior to 2018. Complainant submitted evidence of registered trademarks and a date of first use of June 1, 1988 providing presumptive evidence of use that Respondent has failed to rebut to meet its burden of establishing reverse domain name hijacking. See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002).
Since Panel finds that Complainant has satisfied Policy ¶ 4(a)(i), or any or all of the elements of Policy ¶ 4(a), the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <2wheelpros.com> domain name be TRANSFERRED from Respondent to Complainant.
Scott R. Austin, Esq., Honorable Carolyn M. Johnson, (Ret.), as Panelists, and David P. Miranda, Esq., as Chair Panelist
Dated: January 7, 2019
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