DECISION

 

O'Reilly Automotive, Inc. v. zhang wei / zhangwei

Claim Number: FA2312002074508

 

PARTIES

Complainant is O'Reilly Automotive, Inc. ("Complainant"), represented by Renee Reuter of Armstrong Teasdale LLP, Missouri, USA. Respondent is zhang wei / zhangwei ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <firstcallonline.co>, registered with Sav.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.

 

David E. Sorkin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 8, 2023; Forum received payment on December 8, 2023.

 

On December 10, 2023, Sav.com, LLC confirmed by email to Forum that the <firstcallonline.co> domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the name. Sav.com, LLC has verified that Respondent is bound by the Sav.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 December 11, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2024 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@firstcallonline.co. Also on December 11, 2023, the Written Notice of the Complaint, notifying Respondent of the email 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 January 3, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant owns United States trademark registrations for FIRST CALL in standard character form, including registrations issued in 1997 and 2009 for wholesale automobile parts stores and for coats, jackets, caps, and shirts, respectively. Complainant states that its FIRST CALL mark has been widely used in the United States and in several other countries. Complainant also owns and uses the domain name <firstcallonline.com>.

 

The disputed domain name <firstcallonline.co> was registered in October 2023. The name is registered to Respondent, although Respondent's identity is redacted from the public whois record. Complainant states that the domain name redirects users to various third-party websites containing malware that purports to be security software. Complainant states further that Respondent is not commonly known by the domain name and is not authorized to use Complainant's mark.

 

Complainant contends on the above grounds that the disputed domain name <firstcallonline.co> is confusingly similar to its FIRST CALL mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").

 

Identical and/or Confusingly Similar

The disputed domain name <firstcallonline.co> incorporates Complainant's registered FIRST CALL trademark, omitting the space and adding the generic term "online" and the ".co" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., O'Reilly Automotive, Inc. v. Priyal Parikh / VARUN REDDY DHONALA / Zhang Wei / Zhangwei / Rasel Ahmmed, FA 2030466 (Forum Mar. 14, 2023) (finding <firstcallonline.online>, <firstcallonline.shop>, and <firstcallonline.me> confusingly similar to FIRST CALL); O'Reilly Automotive Stores, Inc, d/b/a O'Reilly Auto Parts v. Whois Privacy, Private by Design, LLC / Rasel Ahmmed, D2022-0072 (WIPO Mar. 22, 2022) (finding <firstcallonline.net> and <firstcallonline.org> confusingly similar to FIRST CALL); see also O'Reilly Automotive Stores, Inc. v. ADAM KANWISCHER, FA 2021541 (Forum Dec. 23, 2022) (finding <firstcallonline.us> confusingly similar to FIRST CALL under usTLD Dispute Resolution Policy). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.

 

Rights or Legitimate Interests

Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).

 

The disputed domain name incorporates Complainant's registered mark without authorization. Its sole apparent use has been to redirect users to various third-party websites that attempt to disseminate malware. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., SPTC, Inc. & Sotheby's v. Zhang Wei / 张伟 / Xu Shuai Wei / 徐帅伟, FA 1936089 (Forum Apr. 13, 2021) (finding lack of rights or legitimate interests in similar circumstances); Availity, L.L.C. v. Zhang Wei, FA 1924331 (Forum Jan. 8, 2021) (same); NBC Fourth Realty Corp. v. Zhang Wei, FA 1915204 (Forum Nov. 9, 2020) (same); Cardinal Health, Inc. v. Zhangwei / Zhang Wei, FA 1908971 (Forum Sept. 17, 2020) (same). 

 

Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.

 

Registration and Use in Bad Faith

Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted 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."

 

Respondent registered a domain name incorporating Complainant's registered trademark and identical but for the top-level domain to Complainant's domain name, and is using it to redirect to websites that attempt to disseminate malware. Such circumstances are indicative of bad faith registration and use under the Policy. See, e.g., SPTC, Inc. & Sotheby's v. Zhang Wei / 张伟 / Xu Shuai Wei / 徐帅伟, supra (finding bad faith registration and use in similar circumstances); Availity, L.L.C. v. Zhang Wei, supra (same); NBC Fourth Realty Corp. v. Zhang Wei, supra (same); Cardinal Health, Inc. v. Zhangwei / Zhang Wei, supra (same). The Panel so finds.

 

DECISION

Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <firstcallonline.co> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

David E. Sorkin, Panelist

Dated: January 4, 2024