WHEEL PROS, LLC v. q3fegsr / Tristan Tate / Dristan Company / See PrivacyGuardian.org / Domain Administrator
Claim Number: FA2302002030563
Complainant is WHEEL PROS, LLC (“Complainant”), represented by Corsearch, Inc., Texas. Respondent is q3fegsr / Tristan Tate / Dristan Company / See PrivacyGuardian.org / Domain Administrator (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hoonigan.live>, <hoonigan2023.live>, and <hoonigan.info>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com; NameSilo, LLC.
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.
Jeffrey J. Neuman as Panelist.
Complainant submitted a Complaint to Forum electronically on February 3, 2023; Forum received payment on February 3, 2023.
On February 5, 2023; February 6, 2023, PDR Ltd. d/b/a PublicDomainRegistry.com; NameSilo, LLC confirmed by e-mail to Forum that the <hoonigan.live>, <hoonigan2023.live>, and <hoonigan.info> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com; NameSilo, LLC and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com; NameSilo, LLC has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com; NameSilo, 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 13, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 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@hoonigan.live, postmaster@hoonigan2023.live, postmaster@hoonigan.info. Also on February 13, 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 13, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Jeffrey J. Neuman as 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 names be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Respondents
In the instant proceeding, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
More specifically, Complainant alleges that although the Disputed Domain Names appear to be registered by multiple registrants, they are in fact registered aliases of a single entity because: (i) the Disputed Domain Names incorporate the “HOONIGAN” mark as the dominant portion of the domain; (ii) websites are purporting to offer the same “Select Blockchain” and “HOONIGAN Crypto giveaway, (iii) the domain names <hoonigan.live> and <hoonigan2023.live> are no longer active and have been “suspended”, (iv) the Disputed Domain Names were registered only weeks apart, (v) the IP Addresses and Nameservers (prior to suspension) for each of the Domain Names were operating through Cloudflare’s DNS services and (vi) two of the three domain names were registered with the same registrar.
Given the particular facts of this case, the Panel agrees with the Complainant that the Disputed Domain Names were registered by the same registrant despite the fact that the official registrant contact information appears different for each of the domain names and that there were two separate registrars used for the three names. At the time of the writing of this decision, two of the domain names have been suspended and no longer resolve. However, screenshots provided by Complainant utilizing the Internet Archive show that prior to those names being suspended, both < hoonigan.live > and < hoonigan2023.live > resolved to a website identical to that of the website currently found at <hoonigan.info>. These sites contain links to the same “HOONIGAN Crypto giveaway” with the same color scheme, content, content placement, menu options, and QR Codes. In addition, all of the Disputed Domain Names were registered between January 21, 2023 and February 2, 2023 and each of the names are utilizing the Cloudflare DNS services (at least prior to suspension of the two such suspended names).
Finally, none of the named Respondents (if indeed they were multiple Respondents) have responded to the merits of this proceeding nor have they objected to consolidation of the Disputed Domain Names in this matter (see WIPO Overview 3.0, section 4.11.2; Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, D2016-2302 (WIPO January 21, 2017). See also Streamlight Inc. v. Onjjk Pmiki, Shuang Zhu, Wnvjfk Ybnjw, D2023-0070 (WIPO February 22, 2023).
Based on the file, the Panel finds that it is more likely than not that the Domain Names are in common control of one entity, and therefore the Panel grants the consolidation (and will refer to these Respondents as “Respondent”).
A. Complainant
Complainant, WHEEL PROS, LLC, is a designer, marketer, and distributor of branded aftermarket wheels, performance tires, and accessories. Complainant has rights in the HOONIGAN mark through its registration with multiple trademark organizations including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,568,464, registered on July 15, 2014). See Compl. Ex. E. Respondent’s <hoonigan.live>, <hoonigan2023.live>, and <hoonigan.info> domain names are identical or confusingly similar to Complainant’s HOONIGAN mark as they incorporate the mark in its entirety while two domain names add the “.live” generic top-level domain (“gTLD”) and one adds the “.info” gTLD, while one domain name adds the numbers “2023.”
Respondent lacks rights and legitimate interests in the <hoonigan.live>, <hoonigan2023.live>, and <hoonigan.info> domain names. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its HOONIGAN mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead diverts users to its phishing scheme while passing off as Complainant.
Respondent registered and uses the <hoonigan.live>, <hoonigan2023.live>, and <hoonigan.info> domain names in bad faith. Respondent disrupts Complainant’s business while passing off as Complainant and creating a likelihood of confusion among users. Additionally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the HOONIGAN mark.
B. Respondent
Respondent did not submit a response to this proceeding. The Panel notes that the <hoonigan.live> domain name was registered on January 21, 2023, the <hoonigan2023.live> domain name was registered on January 30, 2023, and the <hoonigan.info> domain name was registered on February 1, 2023. See WHOIS information.
1. Complainant (and the predecessor owner of the HOONIGAN marks) has been using the HOONIGAN mark (“Mark”) in connection with a variety of goods and entertainment services in the fields of vehicles, cars, motorsports, rally driving, action sports and motor sports events. Complainant owns numerous registered trademarks globally in connection with the above goods and services, all of which are valid and in full force and effect as of the date of this complaint.
2. The disputed domain names <hoonigan.live>, <hoonigan2023.live>, and <hoonigan.info> are identical or confusingly similar to the Mark under the Policy.
3. Complainant has not licensed or otherwise authorized Respondent to use its Mark, nor is Respondent commonly known by the Marks. In addition, Respondent is not using the domain name in connection with a bona fide offering of goods or services under the Policy.
4. Complainant has established that the Disputed Domain Names have been registered and 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.
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”).
Complainant claims rights in the HOONIGAN mark through its registration with multiple trademark organizations including the USPTO (e.g. Reg. No. 4,568,464, registered on July 15, 2014). See Compl. Ex. E. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”).
Complainant provides several copies of trademark registrations around the world incorporating the HOONIGAN mark. Although the HOONIGAN marks were originally registered to Ken Block, the Complainant is listed as the “Last Listed owner of those marks through recorded assignments with the applicable national trademark offices. Based on the submitted evidence, the Panel finds that Complainant has rights in the HOONIGAN marks under Policy 4(a)(i).
Complainant asserts that Respondent’s <hoonigan.live>, <hoonigan2023.live>, and <hoonigan.info> domain names are identical or confusingly similar to Complainant’s mark. Under Policy ¶ 4(a)(i), adding numbers or a gTLD is insufficient in differentiating the domain name from the mark incorporated within. See Gagemaker, LP v. Pavel B Novoselov, FA 1714411 (Forum Mar. 20, 2017) (“Therefore, because Respondent only added “.info” to an otherwise unchanged mark, the Panel agrees that Respondent has not distinguished the domain name from Complainant’s mark under Policy ¶ 4(a)(i).”); see also Bittrex, Inc. v. Privacy protection service - whoisproxy.ru, FA 1759828 (Forum Jan. 12, 2018) (“The Panel here finds that the <bittrex.market> domain name is identical to the BITTREX mark under Policy ¶4(a)(i).”); see also Home Depot Product Authority, LLC v. Angelo Kioussis, FA 1784554 (Forum June 4, 2018) (“The domain name contains the mark in its entirety, with only the addition of the generic letters ‘sb’ and the digits ‘2018,’ plus the generic Top Level Domain (“gTLD”) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”).
The Disputed Domain Names incorporate the mark in its entirety while the <hoonigan2023.live> domain name adds the numbers “2023”, the <hoonigan2023.live> and <hoonigan.live> domain name add the “.live” gTLD, and the <hoonigan.info> domain name adds the “.info” gTLD. In line with the above cited cases, the Panel finds that the Respondent’s domain names are identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
In addition to demonstrating that that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once that prima facie case is made, 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 asserts that Respondent is not commonly known by the <hoonigan.live>, <hoonigan2023.live>, or <hoonigan.info> domain names, nor has Complainant authorized or licensed Respondent to use its HOONIGAN mark in the Disputed Domain Names. Under Policy ¶ 4(c)(ii), relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. 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.”). Lack of authorization to use a complainant’s mark may also indicate that the respondent is not commonly known by the disputed domain name. See PragmaticPlay Limited v. Robert Chris, FA2102001932464 (Forum Mar. 23, 2021) (“The WHOIS information of record lists the registrant as “Robert Chris,” and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”).
Here, the WHOIS information identifies Respondent as “q3fegsr” for <hoonigan.live>, “Tristan Tate” for <hoonigan2023.live>, and “See PrivacyGuardian.org” for <hoonigan.info>. See Registrar Verification Emails. Therefore, in light of the above WHOIS information and the lack of a response, the Panel finds that Complainant has established that Respondent is not commonly known by the Disputed Domain Names under Policy ¶ 4(c)(ii).
Complainant further argues Respondent is not using the <hoonigan.live>, <hoonigan2023.live>, or <hoonigan.info> domain names for any bona fide offering of goods or services, nor any noncommercial or fair use. It alleges that the Respondent is using (or previously used) the Disputed Domain Name(s) to “engage in a fraudulent cryptocurrency scam and diverting Internet users to a fake ‘HOONIGAN Crypto giveaway’ website.” See Compl. at Para. 7(b)(iii). Further, it argues that the Respondent is using the Disputed Domain Names to pass itself off as Complainant by prominently displaying Complainant’s Marks and photo on the associated websites.
Given the evidence in the record, the Panel agrees with the Complainant that the Respondent is not making use of the Disputed Domain Names in connection with a bona fide offering of goods or services, nor are the Disputed Domain Names being used for a legitimate, noncommercial or fair use without the intent for commercial gain. At the time of this decision, two of the three Disputed Domain Names have been “suspended” by the responsible registrar. The third Disputed Domain Name, <honigan.info>, registered at a separate registrar still resolves to a Website featuring Complainant’s marks and inviting Internet users to participate in a “BTC Giveaway.” According to the Website, a participant needs to send Bitcoin (BTC) to a names payment account in order to allegedly receive double the amount of the BTC. Complainant has also provided evidence that the two other Disputed Domain Names also pointed to nearly identical websites prior to their suspension. The facts here are similar to that of Virgin Enterprises Limited v. Privacy Protection / LLC Rusal Khaziev, D2021-2597 (WIPO November 9, 2021). In that case, the Panel found,:
The Panel accepts that it is highly likely that the activity carried out through the Website is fraudulent and is not a bona fide giveaway. Thus, the Complainant’s marks have been used in the Domain Name and on the Website to give credibility to the scheme with a view to scamming Internet users out of money. Such use of the Domain Name does not qualify as a legitimate noncommercial or fair use.
Further, the fact that the Websites accessible through the Disputed Domains prominently display the Complainant’s design HOONIGAN mark in a similar color scheme as the Complainant’s main Website coupled with the use of an image of the original founder and spokesperson for Complainant’s Hoonigan services all suggest an affiliated with the Complainant which does not exist. There is no evidence in the case file that refutes Complainant’s submissions. Therefore, the Panel concludes Respondent is not using the disputed domain names for any bona fide offering of goods or services, nor any noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
.
Under the third requirement of the Policy, the Complainant must establish that each of the Disputed Domain Names have been registered and are being used in bad faith by the Respondent. “These are conjunctive requirements; both must be satisfied for a successful complaint.” Warner Bros. Entertainment Inc. v. Karl Allberg FA2002001881913 (Forum Feb. 19, 2020).
Complainant asserts Respondent registered the <hoonigan.live>, <hoonigan2023.live>, and <hoonigan.info> domain names in bad faith well after the Complainant acquired rights in the HOONIGAN marks and in doing so disrupts Complainant’s business and passing off as Complainant while creating a likelihood of confusion. The Disputed Domain Names were all registered between January 21, 2023, and February 1, 2023, well after the Complainant acquired rights in the HOONIGAN marks (first use in 2010).
The Respondent clearly had knowledge about the Complainant as evidenced by (i) the use of the image of the former founder and CEO of the predecessor company owning the HOONIGAN marks, and (ii) the use of the Complainant’s HOONIGAN design mark displayed prominently on websites accessible through the Disputed Domain Names websites. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established through incorporation of a well-known mark into a domain name. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”).
Moreover, the Disputed Domain Names are being used in bad faith by the Respondent
to invite Internet users to participate in the BTC giveaway, in which BTC needs to be sent to a named payment account in order to allegedly receive double the amount of BTC. Using the Complainant’s trademarks in the Domain Name and on the Website is undoubtedly aimed at giving credibility to the Respondent’s activity carried out through the Website. Such use of the Domain Name also risks damage to the Complainant’s reputation, as customers would expect to be participating in the giveaway organized or endorsed by the Complainant.
See Virgin Enterprises Limited above.
For all the above reasons, the Panel finds Respondent has registered the Disputed Domain Name in bad faith under 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 <hoonigan.live>, <hoonigan2023.live>, and <hoonigan.info> domain names be TRANSFERRED from Respondent to Complainant.
Jeffrey J. Neuman, Panelist
Dated: March 23, 2023
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