RB DISTRIBUTION, INC. v. Pingd Yang
Claim Number: FA2302002030294
Complainant is RB DISTRIBUTION, INC. (“Complainant”), represented by Matthew A. Homyk of Blank Rome LLP, Pennsylvania, USA. Respondent is Pingd Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <storedorman.com>, registered with Name.com, Inc..
The undersigned certifies 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.
Francine Tan and Michael Albert, Panelists, and Sandra J. Franklin, Chair and Panelist.
Complainant submitted a Complaint to Forum electronically on February 2, 2023; Forum received payment on February 2, 2023.
On February 2, 2023, Name.com, Inc. confirmed by e-mail to Forum that the <storedorman.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 February 3, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2023 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@storedorman.com. Also on February 3, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On March 1, 2023, pursuant to Complainant's request to have the dispute decided by a three-member Panel, Forum appointed Francine Tan and Michael Albert, Panelists, and Sandra J. Franklin, Chair and Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
1. Respondent’s <storedorman.com> domain name is confusingly similar to Complainant’s DORMAN mark.
2. Respondent does not have any rights or legitimate interests in the <storedorman.com> domain name.
3. Respondent registered and uses the <storedorman.com> domain name in bad faith.
B. Respondent did not file a Response.
Complainant, RB Distribution, Inc., sells auto parts, components and accessories. Complainant holds a registration for the DORMAN mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,384,184, registered February 25, 1986).
Respondent registered the <storedorman.com> domain name on October 10, 2022, and uses it to divert users to Respondent’s website where counterfeit DORMAN parts are offered for sale.
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”).
The Panel finds that Complainant has rights in the DORMAN mark through registration with the USPTO. 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).”)
Respondent’s <storedorman.com> domain name uses the DORMAN mark and merely adds the generic word “store” and the “.com” gTLD. The addition of a generic or descriptive term and a gTLD fails to sufficiently distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (FORUM June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”) Therefore, the Panel finds that Respondent’s <storedorman.com> domain name is confusingly similar to Complainant’s DORMAN mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 contends that Respondent lacks rights and legitimate interests in the <storedorman.com> domain name as Respondent is not commonly known by the domain name. Complainant has not authorized Respondent to use its DORMAN mark. The WHOIS information for the disputed domain name lists the registrant as “Pingd Yang”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (FORUM Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same).
Complainant argues that Respondent fails to use the <storedorman.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use, as Respondent uses it to pass off counterfeit versions of Complainant’s products. Using a disputed domain name to pass off as a complainant to sell counterfeit versions of a complainant’s products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (FORUM Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Complainant provides screenshots of the website at <storedorman.com> showing Complainant’s DORMAN logo and counterfeit versions of Complainant’s components and parts. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the <storedorman.com> domain name in bad faith to pass off as Complainant and sell unauthorized and counterfeit versions of Complainant’s products for Respondent’s financial gain. Registering a confusingly similar domain name with the intent to pass off as a complainant and sell counterfeit products disrupts complainant’s business and constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (FORUM Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”) Accordingly, the Panel finds bad faith disruption under Policy ¶ 4(b)(iii).
Complainant argues that Respondent’s use of the <storedorman.com> domain name to sell counterfeit goods demonstrates bad faith under Policy ¶ 4(b)(iv). The Panel agrees and finds bad faith registration and use of the disputed domain name for Respondent’s gain, which constitutes bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (FORUM Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant also argues that Respondent registered the <storedorman.com> domain name with actual knowledge of Complainant’s rights in the DORMAN mark, based on Respondent’s use of the disputed domain name to sell counterfeit goods. The Panel agrees and finds further bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (FORUM January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(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 <storedorman.com> domain name be TRANSFERRED from Respondent to Complainant.
Francine Tan, Panelist
Michael Albert, Panelist
Sandra J. Franklin, Chair and Panelist
Dated: March 3, 2023
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