LKQ Corporation v. Tom Parker / Peach logistics
Complainant is LKQ Corporation (“Complainant”), represented by Lisa Holubar of Irwin IP LLP, Illinois, USA. Respondent is Tom Parker / Peach logistics (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <keystoneautoparts.us>, registered with GoDaddy.com, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on June 12, 2023; Forum received payment on June 12, 2023.
On June 13, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <keystoneautoparts.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 19, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 10, 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@keystoneautoparts.us. Also on June 19, 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 July 19, 2023, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, Forum 's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, LKQ Corporation, provides goods and services in the automobile parts and aftermarket mail order business. It has rights in the trademark KEYSTONE ECOMMERCE and KEYSTONE AUTOMOTIVE OPERATIONS, INC. through registration, by its subsidiary corporation Keystone Automotive Operations, Inc., with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,436,791, registered on May 27, 2008 and Reg. No. 4,756,115, registered on June 16, 2015. It also uses the domain names <keystoneautomotive.com> and <keystoneautoparts.org> as well as an app called “e-Keystone” to promote its commercial activities. Respondent’s <keystoneautoparts.us> domain name, registered on January 26, 2023, is identical or confusingly similar to Complainant’s Marks as it includes the word “keystone” while shortening “automotive” to “auto” and adding the term “parts” along with the “.us” country-code top-level domain (“ccTLD”).
Respondent lacks rights and legitimate interests in the <keystoneautoparts.us> domain name. Respondent does not own any trademark rights to the term “Keystone” and it does not use the disputed domain name for any bona fide offering of goods or services. Instead, it uses the domain name to divert users while trading off of Complainant’s goodwill.
Respondent registered and uses the <keystoneautoparts.us> domain name in bad faith. Respondent creates a likelihood of confusion and failed to respond to Complainant’s cease-and-desist letters. Furthermore, Respondent knew or should have known of Complainant’s trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
- Complainant has trademark rights to the KEYSTONE ECOMMERCE and KEYSTONE AUTOMOTIVE OPERATIONS, INC. trademarks and the <keystoneautoparts.us> domain name is identical or confusingly similar to such marks;
- Respondent has no rights or legitimate interests in the disputed domain name as it is not commonly known thereby and its use thereof, for a website that seeks to trick customers into believing that the resolving website originates with Complainant, is not a bona fide offering of goods or services; and
- Respondent’s above-mentioned use of the disputed domain name and its failure to respond to Complainant’s cease-and-desist letters supports a finding that it registered and uses the disputed domain name 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 or is being used in bad faith.
Given
the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”)
and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in
rendering its decision.
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 asserts rights in the KEYSTONE ECOMMERCE and KEYSTONE AUTOMOTIVE OPERATIONS, INC. trademarks based upon registration thereof with the USPTO. Under Policy ¶ 4(a)(i), registration with the USPTO is generally sufficient to establish rights in a trademark. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO adequately proves its rights under Policy ¶ 4(a)(i)). As Complainant has submitted copies of its USPTO registration certificates, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <keystoneautoparts.us> domain name is identical or confusingly similar to Complainant’s marks. Under Policy ¶ 4(a)(i), abbreviating a mark while adding a generic word along with a ccTLD is typically insufficient to differentiate a disputed domain name from an asserted mark. See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.); see also CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (holding, “The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”); see also Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Universal Nutrition, FA 1510186 (Forum Aug. 28, 2013) (concluding that the “<uniprotein.com> domain name is, as alleged in the Complaint, an amalgamation of a common abbreviation of Complainant’s UNIVERSAL trademark and the term ‘protein,’ which describes an aspect of Complainant’s business, plus the generic Top Level Domain (‘gTLD’) ‘.com.’”). The disputed domain name includes the word “keystone”, which is the most distinctive and consistent element of Complainant’s marks. It also incorporates a shortened version of the word “automotive”, i.e., “auto”, and adds the term “parts” along with the “.us” ccTLD. The Panel finds that these changes do not distinguish the disputed domain name and so it finds that Respondent’s domain name is confusingly similar to Complainant’s asserted marks under 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). Should Complainant succeed in this effort, the burden then shifts to Respondent to show that 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 there is no evidence to indicate that Respondent has acquired a trademark registration or any other rights in a mark that is embodied in the disputed domain name under Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). The Panel notes that no such evidence is of record and so it does not find any ground upon which to hold that Respondent has any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i).
Complainant further argues that Respondent is not using the <keystoneautoparts.us> domain name for any bona fide offering of goods or services. Under Policy ¶ 4(c)(ii), diverting users to a respondent’s webpage while trading off of the complainant’s goodwill is not a bona fide offering of goods or services. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”) Complainant provides screenshots of the resolving <keystoneautoparts.us> webpage which prominently displays the phrase “Keystone Automotive” at the top-left and photographs relating to automotive parts. The site also claims that Respondent’s business dates back to 1984; it invites users to “[k]eep your car, truck, or SUV in good condition with KeyStone Automotive. Our store in Atlanta, GA, carries dependable automotive supplies”; and it displays a footer with the notice “Copyright © 2023 Keystone Automotive.” From this evidence, the Panel finds support for Complainant’s claim that Respondent is attempting to “trick customers” and “purports to be Complainant”. Respondent has not filed a Response or made any other submission in this case. Thus, the Panel finds that Complainant has made a prima facie case which has not been rebutted by Respondent and that there is no evidence that Respondent is using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(ii).
Complainant makes no contentions with respect to Policy ¶¶ 4(c)(iii) or (iv). Nevertheless, based on the facts and evidence before it and Respondent’s default in this case, the Panel finds no indication that Respondent has rights or legitimate interests in the disputed domain name based on these provisions of the Policy.
Complainant asserts that Respondent registered the <keystoneautoparts.us> domain name with actual knowledge of Complainant’s rights in its marks. Actual knowledge of a complainant’s rights in an asserted mark prior to registering a disputed domain name may create a solid foundation upon which to build a case for bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had “actual knowledge of Complainant’s mark when registering the disputed domain name”). As noted above, Complainant’s marks are incorporated into the disputed domain name and a number of places in the resulting website’s text in a manner that creates confusion as the source of Respondent’s activities. As such, the Panel finds it highly likely that Respondent had actual knowledge of Complainant’s rights in the asserted marks at the time that it registered the disputed domain name.
Next, Complainant argues that Respondent registered and uses the <keystoneautoparts.us> domain name in bad faith by attracting users and creating a likelihood of confusion for commercial gain. Under Policy ¶ 4(b)(iv), such activity is evidence of bad faith registration or use. See AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because it sought commercial gain from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the website which resolved from the disputed domain name). The screenshots of Respondent’s website, which have been submitted by Complainant, show use of the marks intended to attract users to the site based on a likelihood of confusion with Complainant’s mark and its business. As the site encourages potential customers to contact Respondent and either purchase products or engage its services, the intent of commercial gain is clear.
Complainant claims that this is buttressed by the likelihood that Respondent is engaged in fraud as the telephone number displayed on its <keystoneautoparts.us> website is reported on a submitted screenshot from the Scampulse.com site, a “platform to report frauds [and] scams”.
Based on a preponderance of the evidence presented in this case, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv) and thus ¶ 4(a)(iii).
Additionally, Complainant contends that Respondent registered and uses the <keystoneautoparts.us> domain name in bad faith because it failed to respond to Complainant’s multiple cease-and-desist letters. Under Policy ¶ 4(a)(iii), failing to respond to a complainant’s cease-and-desist letter can provide further support for a finding of bad faith registration and use. See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Complainant provides copies of its cease-and-desist letters to which Respondent failed to respond. Therefore, the Panel finds that this provides additional support for its above conclusion that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <keystoneautoparts.us> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: July 20, 2023
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