Tap Worldwide, LLC v. Richard Freeman / Accessory Partners LLC
Claim Number: FA2002001883505
Complainant is Tap Worldwide, LLC (“Complainant”), represented by Lindsay M.R. Jones of Merchant & Gould P.C., United States. Respondent is Richard Freeman / Accessory Partners LLC (“Respondent), represented by Jessie L. Pellant of Studio IP, Colorado, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <procomp-store.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Francine Siew Ling Tan as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 17, 2020; the Forum received payment on February 17, 2020.
On February 17, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <procomp-store.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 February 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents registration as technical, administrative, and billing contacts, and to postmaster@procomp-store.com. Also on February 18, 2020, 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 March 13, 2020.
An Additional Submission was filed by Complainant on March 18, 2020.
On March 18, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Francine Siew Ling Tan 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates in the aftermarket vehicle parts industry and has since as early as 1992 been manufacturing products for on and off-road enthusiasts, including tires, wheels, suspensions and shocks. The PRO COMP mark has been used in connection with its business since as early as 1999.
Complainant is the registered proprietor of U.S. Registration No. 3,541,021 for PRO COMP and Registration Nos. 5,686,661 and 3,052,867 for PRO COMP & design marks (collectively “PRO COMP” marks).
Complainant has additionally used its PRO COMP marks via the Internet since as early as 2008 through marketing directly to consumers via its website, <www.procompusa.com>.
Complainant asserts that the disputed domain name is identical and confusingly similar to its PRO COMP mark as it fully incorporates said mark. The addition of the generic/descriptive term “store” in the disputed domain name does not remove the likelihood of confusion with the Complainant’s PRO COMP mark.
Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since Respondent is not a licensee of Complainant; Complainant’s has earlier rights than Respondent; Respondent is not affiliated with Complainant; and Respondent is not commonly known by the disputed domain name.
Respondent is benefitting commercially from the registration of the disputed domain name, by attracting Internet traffic to its website. Internet users would be under the mistaken belief that the Respondent’s website belongs to or is associated with Complainant.
The disputed domain name was registered and is being used in bad faith. Respondent was and should have been aware of Complainant’s PRO COMP trade mark. Respondent’s website incorporates exact replicas of Complainant’s PRO COMP & design mark on the banner of its website and prominently displays the same throughout the website.
B. Respondent
Respondent does not dispute Complainant’s claims of use and ownership of the PRO COMP mark. However, it asserts that its use of the disputed domain name is legitimate and does not constitute bad faith.
Respondent purchases and has been selling PRO COMP products for several years. As an authorized reseller of PRO COMP goods, the utilization of PRO COMP in the disputed domain name selling only PRO COMP goods does not constitute trademark infringement. Respondent’s use of Complainant’s mark is nominative fair use. The addition of the term “store” and preceding hyphen are enough to remove any concerns of confusion. The relevant consumers are not likely to believe the disputed domain name would be owned by Complainant because of the importance ascribed to a straightforward “trademark.com” domain name.
Respondent refers to the Oki Data Americas, Inc. v. ASD, Inc. decision (WIPO Case No. D2001-0903) and asserts that it has a legitimate interest in the disputed domain name as (i) it actually offers for sale only PRO COMP goods; and (2) it only uses the dispute domain name to sell legitimate PRO COMP goods. It is not luring consumers to present them with alternative brands for similar goods. The disputed domain name is used to communicate to consumers that Respondent sells PRO COMP products. A disclaimer has been added to Respondent’s website and Respondent has removed use of Complainant’s PRO COMP design marks from the site except where the mark appears on an image of a product itself. There is therefore no potential consumer confusion.
On the “Contact Us” page, Respondent’s name is explicitly and prominently listed as the contact for the site. Respondent does not claim or suggest that they are PRO COMP mark owners, nor does it claim to be or suggest that the website is the official website of the PRO COMP brand.
Complainant has worked with and known Respondent and about the disputed domain name since at least 2017.
Respondent purchases all the inventory sold on its website directly from Complainant. Respondent is therefore using the disputed domain name for a bona fide offering of goods under the PRO COMP brand name.
The disputed domain name was not registered nor is it being used in bad faith. Respondent utilizes the PRO COMP mark as part of its domain name in an effort to sell PRO COMP products as an authorized reseller of the products. There is no bad faith just simply because Respondent is aware of Complainant’s trade mark.
Respondent is not “baiting” consumers then “switching” to presenting a competitor’s product.
Respondent asserts that Complainant is engaging in Reverse Domain Name Hijacking.
C. Additional Submissions
Complainant submitted additional submissions on March 18, 2020.
Complainant states that Respondent is not an authorized seller of Complainant’s PRO COMP brand automotive accessories. The addition of the ex-post-facto disclaimer to the Respondent’s website alleges incorrectly that it is an “authorized seller”. Respondent is, at most, a customer of Complainant. Respondent does not have a license to use Complainant’s trade mark. A reseller of a complainant’s product does not per se have a right to a domain name which contains that trade mark.
Respondent’s bad faith is reflected in Respondent’s efforts to “clean up” its website to remove its brazen uses of Complainant’s PRO COMP and PRO COMP & design trademarks, and adding the incorrect disclaimer. Respondent’s actions after the filing of the Complaint must be ignored as an attempt to conceal acts which have been detrimental to Complainant and its consumers. The modification of the Respondent’s website after receipt of the Complaint is insufficient to establish legitimate rights.
Complainant has numerous authorized sellers and distributors who are deemed to possess a license or implied license to sell its authentic PRO COMP goods. Notably none of these authorized sellers use the PRO COMP mark and brand in connection with its online store.
(a) The disputed domain name is confusingly similar to the trade mark PRO COMP in which Complainant has rights.
(b) Respondent has no legitimate rights or interests in respect of the disputed domain name.
(c) The disputed 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 has established it has rights in the trade mark PRO COMP. The only difference between the disputed domain name and Complainant’s mark lies in the addition of the generic/descriptive word “store”, preceded by a hyphen and the gTLD “.com”. Respondent’s prominent use of the PRO COMP mark as a domain name and as a source identifier on its website is likely to cause confusion among consumers.
The “.com” element is a technical requirement of domain names and does not remove the confusing similarity with Complainant’s PRO COMP mark. In the instant context, the addition of the word “store” in the disputed domain name is insufficient to remove the confusing similarity with Complainant’s trade mark for the purposes of Policy ¶ 4(a)(i). See, e.g., Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016). See also ¶1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition.
Policy ¶ 4(a)(i) has therefore been established.
The Panel finds that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel does not agree that Respondent has shown that it has rights or legitimate interests in the disputed domain name. Respondent seeks to rely on the test established in the seminal Oki Data decision (WIPO Case No. D2001-0903) in support. However, the Panel finds that the decision does not support Respondent’s case. Even if Respondent were offering genuine PRO COMP products from its website, that does not automatically mean that Respondent thereby derives rights or legitimate interests in the domain name.
The Oki Data test is not applicable in a situation where there was no prior agreement between the parties as regards the registration or use of domain name incorporating a complainant’s trade mark. Respondent produced no evidence to contradict Complainant’s statement that Respondent is not an authorized dealer. Respondent has not produced proof of such a relationship other than establishing that it has bought and resells goods of Complainant.
Put simply, a customer of a branded product that resells that product has no basis to claim a right to register and use a domain name that incorporates the trade mark of the brand owner. Although a disclaimer was introduced into Respondent’s website, it was a change to the website that was made after receipt of the Complaint and has not been shown by Respondent to be an accurate and true statement of the relationship between the parties. The changes made to Respondent’s website also reflects that Respondent’s acknowledgement that there has been an element of bad faith in how Complainant’s PRO COMP mark has been exploited by Respondent for its own commercial benefit, without Complainant’s agreement.
The reproduction of Complainant’s design mark on Respondent’s website (prior to receipt of the Complaint), the changes made to the website thereafter, and Respondent’s admission of Complainants rights to the PRO COMP mark are all circumstances which do not at all serve to establish that Respondent has rights or legitimate interests in the disputed domain name.
Policy ¶ 4(a)(ii) has therefore been established.
The Panel also finds that Complainant has established that the disputed domain name was registered and is being used in bad faith.
Respondent acknowledged that it was aware of Complainant’s trade mark when it registered the disputed domain name. The content and look of Respondent’s website reflect a deliberate attempt to “attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location”. The registration of the disputed domain name in awareness of the PRO COMP mark and in the absence of rights or legitimate interests therein amounts to registration in bad faith.
Respondent’s registration and use of the disputed domain name without Complainant’s approval, albeit the goods sold may be genuine, does not meet the Oki Data test.
Policy ¶ 4(a)(iii) has therefore been established.
Reverse Domain Name Hijacking
The Panel draws guidance on this issue from ¶ 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, which states as follows:
“Reasons articulated by panels for finding RDNH [Reverse Domain Name Hijacking] include:
(i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (see generally section 3.8) such as registration of the disputed domain name well before the complainant acquired trademark rights,
(ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database,
(iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument,
(iv) the provision of false evidence, or otherwise attempting to mislead the panel,
(v) the provision of intentionally incomplete material evidence – often clarified by the respondent,
(vi) the complainant’s failure to disclose that a case is a UDRP refiling,
(vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis,
(viii) basing a complaint on only the barest of allegations without any supporting evidence.”
Respondent’s assertion of Reverse Domain Name Hijacking is unsubstantiated and none of the factors enumerated above has been established 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 <procomp-store.com> domain name be TRANSFERRED from Respondent to Complainant.
Francine Siew Ling Tan, Panelist
Dated: April 3, 2020
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