DECISION

 

Sonic Automotive, Inc. v. Thomas Young / Motorcycles of Charlotte

Claim Number: FA2506002159452

 

PARTIES

Complainant is Sonic Automotive, Inc. ("Complainant"), represented by Sloan L. E. Carpenter of Parker Poe Adams & Bernstein LLP, North Carolina, USA. Respondent is Thomas Young / Motorcycles of Charlotte ("Respondent"), North Carolina, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <motorcyclesofcharlotte.com>, registered with Name.com, Inc.

 

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.

 

Charles A. Kuechenmeister, Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on June 6, 2025; Forum received payment on June 6, 2025.

 

On June 11, 2025, Name.com, Inc. confirmed by e-mail to Forum that the <motorcyclesofcharlotte.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 June 12, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of July 2, 2025 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@motorcyclesofcharlotte.com. Also on June 12, 2025, 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 3, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister 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 a Response or any other submittal from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant operates one or more motorcycle dealerships, selling motorcycles, motorcycle parts and accessories and related services. It has common law rights in the MOTORCYCLES OF CHARLOTTE mark based upon its and its predecessor in interest's use of it since 2008. The <motorcyclesofcharlotte.com> domain name is identical or confusingly similar to Complainant's mark as it fully incorporates the MOTORCYCLES OF CHARLOTTE mark, merely adding the generic top-level domain (gTLD) ".com."

 

Respondent has no rights or legitimate interests in the domain name. It is not affiliated with Complainant and Complainant has not licensed or authorized it to use its mark, Respondent is not commonly known by the domain name, and it is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead has used it to attract visitors to its own website where it advertised products that competed with Complainant, and it is currently making no active use of it.

 

Respondent registered and uses the domain name in bad faith. It has attempted for commercial gain to attract Internet users to its website by causing confusion with Complainant's mark as to the source, sponsorship affiliation or endorsement of its website, it is currently making no active use of the domain name, and it registered the domain name with actual knowledge of Complainant and its mark.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

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 a Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:

 

(1)       the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2)       the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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 as true unless the evidence is clearly contradictory. Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true). Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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"), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 ("In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent's default—a complainant has failed to prove its case."). The WIPO Overview 3.0 is not a definitive statement of applicable law or practice standards which governs any particular issue, but it does express a consensus among a significant number of UDRP panelists as to how particular issues typically are and should be resolved. This Panel accepts that consensus on this and other issues addressed later in this Decision.

 

The Panel finds as follows with respect to the matters at issue in this proceeding:

 

Identical and/or Confusingly Similar

Complainant has not registered the MOTORCYCLES OF CHARLOTTE mark with the United States Patent and Trademark office or any other governmental trademark agency. Nevertheless, a complainant need not show registration of its mark in order to meet the requirements of Policy ¶ 4(a)(i). If proven, common law rights are sufficient to establish rights for the purposes of Policy ¶ 4(a)(i).  Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) ("A complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out".), Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).

 

Common law rights in a trademark can be established by evidence of secondary meaning, which is proven by showing exclusive use of the mark in commerce for a period of time, evidence of advertising and sales, recognition of the mark by customers, unsolicited media attention, or other evidence showing that the relevant consuming public has come to associate the mark with goods or services provided by a single vendor. Karen Koehler v. Hiroshi Ishiura/ Lifestyle Design Inc., FA 1730673 (Forum June 1, 2017) (holding that Complainant established common law rights in her personal name since "[a] mark can generate a secondary meaning sufficient to establish Complainant's rights when consistent and continuous use of the mark has created distinctive and significant good will . . . . Complainant has published under the KAREN KOEHLER name extensively, and Complainant's legal skills have been recognized by various organizations and groups with extensive positive media coverage. Complainant also operates an online blog associated with the KAREN KOEHLER mark."), Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) ("Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition."). The WIPO Overview 3.0" ¶ 1.3 lists a number of factors that support a claim of common law trademark rights, including "(i) the nature and duration of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys."  

 

The evidence of secondary meaning submitted by Complainant is persuasive.  The Declaration of Complainant's Director of Power Sports (the Feltes Declaration) states that Complainant acquired the intellectual property rights of a company named Just Imports, Inc. (Just Imports) in 2024. Since Complainant's rights in the mark are derived from Just Imports' use of it, this Decision may from time to time refer to both entities as the Complainant. Complainant owned the MOTORCYCLES OF CHARLOTTE mark and used it actively in connection with its motorcycle business since at least 2008. Exhibit B to the Feltes Declaration is a screenshot of the Just Imports website as of May 13, 2008. It prominently features the name and logo for "Motorcycles of Charlotte" as the sponsor of the site and advertises several well-known brands of motorcycles for sale as well as motorcycle parts and related services. Exhibit C to the Feltes Declaration is a copy of a certificate of assumed business name issued by the Secretary of State of the State of North Carolina showing that Just Imports registered the MOTORCYCLES OF CHARLOTTE mark with that agency as an assumed business name on March 29, 2019. Exhibit D to the Feltes Declaration is a similar certificate showing that a subsidiary of Complainant registered the MOTORCYCLES OF CHARLOTTE mark with that agency as an assumed business name on November 12, 2024.  Exhibit E to the Feltes Declaration shows the results of a Google search for "Motorcycles of Charlotte."  All of the results refer to Complainant's business. Complaint Exhibit D is a screenshot of Complainant's current website featuring information about its "Motorcycles of Charlotte" operations. The Feltes Declaration states that over the past ten years more than 50,000 persons have purchased motorcycles or motorcycle parts from Complainant operating under the name MOTORCYCLES OF CHARLOTTE, that Complainant has earned over $12,000,000 in revenues annually, and that more than $100,000 has been spent on promoting the MOTORCYCLES OF CHARLOTTE mark. This evidence amply demonstrates that Complainant's MOTORCYCLES OF CHARLOTTE mark has become associated with Complainant as a source identifier for Complainant's motorcycle business in the minds of the relevant consuming public. Complainant's common law rights in the MOTORCYCLES OF CHARLOTTE mark meet the requirements of Policy ¶ 4(a)(i).

 

Respondent's <motorcyclesofcharlotte.com> domain name is identical or confusingly similar to Complainant's mark, as it fully incorporates the mark, merely omitting spaces and adding the ".com" gTLD. These changes do not distinguish the domain name from Complainant's mark for the purposes of Policy ¶ 4(a)(i). Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) ("Domain name syntax requires TLDs.  Domain name syntax prohibits spaces.  Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶ 4(a)(i) analysis.").  The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity "typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name." Notwithstanding the changes described above, Complainant's mark is clearly recognizable within the domain name.

 

For the reasons set forth above, the Panel finds that the domain name is identical or confusingly similar to the MOTORCYCLES OF CHARLOTTE mark, in which Complainant has substantial and demonstrated rights. 

 

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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"). If a respondent fails to come forward with such evidence, the complainant's prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.

 

Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent's rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):

 

(i)                      Before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

(ii)                      The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii)                      The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant asserts that Respondent has no rights or legitimate interests in the domain name because (i) it is not affiliated with Complainant and Complainant has not licensed or authorized it to use its mark, (ii) Respondent is not commonly known by the domain name, and (iii) it is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead has used it to attract visitors to its own website where it advertised products that competed with Complainant, and it is currently making no active use of it.  These allegations are addressed as follows: 

 

Complainant states that Respondent is not affiliated with it and that it has not authorized or licensed Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant's mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant's mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) ("Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.").

 

The information furnished to Forum by the registrar lists the named Respondent as the registrant of the domain name. The first of those names, Thomas Young, bears no resemblance to the domain name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists "Pablo Palermo" as registrant of the disputed domain name), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the domain name.

 

The second Respondent name, Motorcycles of Charlotte, is identical to the domain name, suggesting that Respondent may have been commonly known by the domain name. This is not conclusive, however, because as discussed above Respondent is not authorized to use Complainant's mark, and there is no evidence before that Respondent has used the "Motorcycles of Charlotte" name for any purpose other than to register the domain name. Registering a domain name in a name that is similar or identical to the domain name is not, by itself, sufficient to demonstrate that the respondent "has been commonly known by" it for the purposes of Policy ¶ 4(c)(ii). There must be some evidence, independent of the registration and any resolving website, that the respondent used the name in a business or some other legitimate undertaking, or that persons have by other means come to associate the respondent with that name. If a person could acquire rights or legitimate interests in a domain name under Policy ¶ 4(c)(ii) by the simple expedient of registering it in a name similar or identical to the domain name, the purpose and intent of Policy ¶ 4(c)(ii) could easily be circumvented and the paragraph rendered essentially meaningless. Augusta National, Inc. v. Ryan Carey, FA1758547 (Forum Dec. 21, 2017) ("If a respondent could acquire rights and legitimate interests in a domain name through Policy ¶ 4(c)(ii) by the simple expedient of incorporating the complainant's mark into the name of his business entity, the intent and purpose of the Policy would be completely frustrated."), Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as "Jessie McKoy / Ripple Reserve Fund" in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). The Panel is satisfied that Respondent Motorcycles of Charlotte has not been commonly known by the domain name for the purposes of Policy ¶ 4(c)(ii). 

 

Complaint Exhibit F is a screenshot of the parking page to which the domain name currently resolves. Its only substantive content is a message reading "This site can't be reached."  Respondent is currently making no active use of the domain name but instead is passively holding it. This is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) ("both Domain Names resolve to a web site that shows the words, 'Not Found, The requested URL / was not found on this server.' ' Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).").

 

Incorporated into the Complaint is a screenshot of the website previously resolving from the domain name. The site presented as that of a firm named Eurosport Asheville and advertised motorcycles and motorcycle parts and services.  The name MOTORCYCLES OF CHARLOTTE appears nowhere on the site. Respondent was not passing off as Complainant but it was using the domain name to attract internet traffic to its website where it purported to sell products and services that competed directly with those of Complainant. This does not qualify as a bona fide offering of goods or services or as a legitimate noncommercial or fair use of a domain name within the meaning of Policy ¶¶ 4(c)(i) or (iii). General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that "use of a domain to sell products and/or services that compete directly with a complainant's business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)."), Netflix, Inc. v. Mika Limited / Mika Ltd., FA2055785 (Forum Sep 1, 2023) ("While there is no evidence that Respondent is impersonating or passing off as Complainant or as an authorized vendor or distributor of Complainant's products and services, Respondent is nevertheless using the Domain Name and Complainant's TUDUM mark to attract Internet traffic to its website and promote and market its own products and services, which compete with those of Complainant. This does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or as a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii)").

 

Complainant has made its prima facie case. On the evidence discussed above, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the domain name.

 

Registration or Use in Bad Faith

Policy ¶ 4(a)(iii) requires Complainant to prove that the domain name has been registered and is being used in bad faith. Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:

 

(i)                      circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii)                      the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii)                      the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)         by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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 the respondent's web site or location or of a product of service on the respondent 's web site or location.

 

The concept of bad faith as illustrated in the above four subparagraphs necessarily involves a subjective intent on the part of a respondent knowingly to trade upon the goodwill of the complainant. The respondent must intentionally have targeted the complainant's mark. Such subjective intent would in turn require that the respondent actually knew of the complainant and its rights in the relevant mark when it registered the domain name. Renu Medispa, LLC v Angela Sattler/Aesthetics, FA2503002143814 (Forum April 28, 2025) ("A foundational question under ¶ 4(a)(iii) is whether or not Respondent had knowledge of Complainant or its claimed trademark at the time it registered the disputed domain name.").

 

In attempting to discern actual knowledge and a subjective bad faith intent, panels have looked at many different types of evidence, including but not limited to use of a domain name in direct competition with a trademark owner, impersonation, the parties operating in the same market segment, the parties being physically located in the same general geographic area, a pattern of bad faith conduct, actual prior association between or among the parties, and the distinctive or famous nature of the trademark, suggesting that any similarity is not happenstance. Importantly, allegations about a respondent's subjective intention are not evidence in this regard.

 

In cases where no Response has been filed, it can be difficult to determine whether a respondent registered a domain name with actual knowledge of the complainant and its rights in the mark. Based upon the evidence described in the Policy 4(a)(i) analysis above, Complainant has established the MOTORCYCLES OF CHARLOTTE mark as a source indicator for Complainant in the State of North Carolina dating from 2008. Just Imports had been in business under the MOTORCYCLES OF CHARLOTTE mark for some five years when the domain name was registered in May of 2013 (WHOIS printout submitted as Complaint Exhibit A shows creation date), and it can reasonably be inferred that it had achieved some level of notoriety in 2013, at least among people who were or were planning to be in the retail motorcycle business in North Carolina.  

 

The domain name having been registered more than 22 years ago, in the absence of a Response it is difficult if not impossible to know definitively what the circumstances of its registration were at the time, who originally registered it, or when Respondent acquired it. There is no evidence bearing upon those matters. Neither is there any evidence demonstrating how long Eurosport Asheville has been in business. The screenshot of its website incorporated into the Complaint was captured fairly recently, as it advertised special offers expiring in April 2025. Nevertheless, it is difficult to imagine circumstances in which someone not affiliated with Just Imports could have registered or acquired the domain name in good faith, as it is identical to the name of the business operated by Just Imports at the time and is associated exclusively with the retail motorcycle business. In the absence of any evidence to the contrary, the Panel concludes that Respondent either registered or acquired the domain name with actual knowledge of Complainant's mark, and this is evidence of an intent to target this Complainant and its mark.

 

The issue of Respondent's use of the domain name with actual knowledge of Complainant's mark is not attended by the uncertainty that arise with respect to its registration. Asheville, the city where the business advertised on Respondent's previous website is located, is in North Carolina, about a two-hour drive from Charlotte, according to the Google Maps website shown on Complaint Exhibit G, and the information furnished to Forum by the registrar gives a Charlotte address for the Respondent. Complainant's mark includes a geographic indicator for a city other than that in which Respondent's business is located and has no meaning apart from its role as the brand name for Complainant's business. The Panel has found that Respondent had actual knowledge of Complaint's mark when it registered or acquired the domain name and that knowledge certainly continues. Respondent's use of the domain name for the website previously resolving from it was with actual knowledge of Complainant and its rights in the mark.

 

Respondent was previously using the confusingly similar domain name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website, as described in Policy ¶ 4(b)(iv). Respondent was using the domain name to suggest a non-existent relationship with Complainant in order to attract customers to its website. Respondent was not passing off as Complainant but its conduct nevertheless fit squarely within the circumstances described in Policy ¶ 4(b)(iv) and is manifest evidence of bad faith registration and use. Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) ("The Panel agrees that Respondent's use of the website to display products similar to Complainant's, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).").

 

As discussed in the rights and legitimate interests analysis, Respondent currently is passively holding the domain name. This also does not fit within any of the circumstances set forth in Policy ¶ 4(b) but given the non-exclusive nature of Policy ¶ 4(b), passively holding a confusingly similar domain name can be evidence of bad faith registration for the purposes of Policy ¶ 4(a)(iii), Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).

 

The mere fact of passive holding does not automatically result in a finding of bad faith. Respondent's intent to trade off of the goodwill of the Complainant in doing so must also be proven, and it has been. Bad faith registration of this domain name has been established. Since the Policy requires a complainant to prove both registration and a continuing use in bad faith, the question next arises whether Respondent's passive holding of the domain name constitutes a continuing use in bad faith. The Policy requirement, "is being used in bad faith," can include passive use. Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. 2000-0003 (".. . the concept of a domain name 'being used in bad faith' is not limited to positive action; inaction is within the concept."). In this case, there is no evidence that Respondent is holding or using the domain name under any of the specific circumstances listed in Policy ¶ 4(b), so the question arises whether the facts present in this case support a finding of continuing bad faith use on some other basis.

 

The Panel has already found that Respondent had actual knowledge of Complainant and its rights in the MOTORCYCLES OF CHARLOTTE mark when it registered the domain name, and that knowledge certainly continues. Also, Respondent is holding the domain name which is confusingly similar to Complainant's mark, without itself having any legitimate connection with Complainant or its services, which in and of itself has been held to be evidence of bad faith.  Google LLC v. Noboru Maruyama / Personal, FA 2001001879162 (Forum March 3, 2020) ("the registration and use of domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of bad faith.").  Finally, it is not possible to conceive of a plausible legitimate use of the domain name that would not infringe on Complainant's rights. Respondent's continuing passive holding of the domain name is in bad faith.

 

For the reasons set forth above, the Panel finds that Respondent registered and is using the domain name in bad faith within the meaning of Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <motorcyclesofcharlotte.com> domain name BE TRANSFERRED TO COMPLAINANT.

 

 

Charles A. Kuechenmeister, Panelist

July 7, 2025