DECISION

 

Copart, Inc. v. geraldo magela de assis / mg

Claim Number: FA1911001871126

 

PARTIES

Complainant is Copart, Inc. (“Complainant”), represented by Ellie Sowanick, Texas, USA. Respondent is geraldo magela de assis / mg (“Respondent”), Brazil.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <copartleiloes.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 13, 2019; the Forum received payment on November 13, 2019.

 

On November 14, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <copartleiloes.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 November 18, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 2019 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@copartleiloes.com.  Also on November 18, 2019, 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 December 13, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant made the following contentions:

Complainant, Copart Inc., is in the business of online vehicle auction and remarketing services. Complainant has rights in the COPART mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,802,136, registered Jan. 6, 2004). See Compl. Ex. 4. Respondent’s <copartleiloes.com> domain name is identical and/or confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s COPART mark, simply adding the generic term “leiloes” and  the “.com” generic top level domain (“gTLD”) to form the disputed domain name.

 

Respondent does not have rights or legitimate interests in the <copartleiloes.com> domain name. Respondent is not licensed or authorized to use Complainant’s COPART mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to redirect users to Respondent’s own website to offer competing services.

 

Respondent registered and uses the <copartleiloes.com> domain name in bad faith. Respondent is disrupting Complainant’s business and attempting to attract Internet users to its competing website for commercial gain. Additionally, Respondent used a privacy service to conceal its identity. Further, Respondent had actual knowledge of Complainant’s rights in the COPART mark as shown through use of Complainant’s logo and website language on Respondent’s own website.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1. Complainant is a United States company engaged in the business of online vehicle auction and remarketing services.

 

2. Complainant has established its trademark  rights in the COPART mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,802,136, registered Jan. 6, 2004).

 

3. Respondent registered the disputed domain name on June 6, 2019.

 

4. Respondent has caused the domain name to be used to redirect users to its own website to offer competing services.

 

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.

 

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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

 

Identical and/or Confusingly Similar

The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the COPART mark based on its registration with the USPTO (e.g., Reg. No. 2,802,136, registered Jan. 6, 2004. See Compl. Ex. 4. Registration of a mark with the USPTO is a valid showing of rights in a mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the COPART mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).

 

The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s COPART mark. Complainant argues that Respondent’s <copartleiloes.com> domain name is identical and/or confusingly similar to Complainant’s COPART mark because it wholly incorporates Complainant’s mark, simply adding a generic term and a gTLD to form the domain name. Addition of a generic and/or descriptive terms and a gTLD to a mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Here, Complainant argues that Respondent simply adds the Portuguese word for auction (“leiloes”) and the “.com” gTLD to Complainant’s mark to form the disputed domain name. Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to the COPART mark under Policy ¶ 4(a)(i).   

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

It is now well established that 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”).

 

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

(a)  Respondent has chosen to take Complainant’s COPART trademark and to use it in its domain name, adding a generic or descriptive term being the Portuguese word for auction (“leiloes”) and the “.com” gTLD to Complainant’s mark that do not negate the confusing similarity with Complainant’s trademark;

(b)  Respondent registered the disputed domain name on June 6, 2019;

(c)  Respondent has caused the domain name to be used to redirect users to its own website to offer competing services;

(d)  Respondent has engaged in these activities without the consent or approval of Complainant;

(e)  Complainant contends that Respondent is not commonly known by the <copartleiloes.com> domain name and is not affiliated with Complainant or authorized to use Complainant’s COPART mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged, under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin  ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was 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). The WHOIS information of record notes “geraldo magela de assis” as the registrant and no information suggests that Complainant has authorized Respondent to use the COPART mark in any way. See Amend. Compl. Ex. 2. Thus the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii);

(f)   Complainant argues that Respondent fails to use the <copartleiloes.com> domain name for any bona fide offering of goods or services, or for any legitimate noncommercial or fair use and instead uses the domain name to redirect users to Respondent’s own website to offer competing services. Use of a disputed domain name to sell goods or services that compete with the complainant is not a bona fide offering of goods or services, or for any legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides screenshots of Respondent’s website and contends that Respondent is using the disputed domain name to offer identical vehicle auction services. See Compl. Ex. 6. As the Panel agrees, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.

 

First, Complainant claims that Respondent registered and uses the <copartleiloes.com> domain name in bad faith by redirecting users to Respondent’s own website for commercial gain while disrupting Complainant’s business in the process. Use of a disputed domain name to offer competing goods or services can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also 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).”). The Panel notes that Complainant provides screenshots of Respondent’s website which divert potential customers of Complainant’s business to a webpage that offers services in direct competition with Complainant. See Compl. Ex. 6. Therefore, the Panel finds bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).

 

Secondly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the COPART mark as shown through Respondent’s use of Complainant’s logo and website language on Respondent’s own website. Actual knowledge of a complainant’s rights in a mark can be shown through Respondent’s use of that mark and Complainant’s information in connection with the domain name. See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed.  Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”) Here, Complainant provides screenshots of its own website and Respondent’s website and argues that the similarities between the webpages are evidence of Respondent’s actual knowledge of Complainant’s rights in the COPART mark. As the Panel agrees with Complainant, the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).

 

Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the COPART mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

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 <copartleiloes.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  December 14, 2019

 

 

 

 

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