DECISION

 

AMSOIL Inc. v. Takahashi Lachulita

Claim Number: FA2607002236645

 

PARTIES

Complainant is AMSOIL Inc. ("Complainant"), represented by John P. Olson of Merchant & Gould, P.C., New York, USA. Respondent is Takahashi Lachulita ("Respondent"), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <amsoilshop.it.com>, registered with Gname.com Pte. Ltd.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Steven M. Levy as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on July 31, 2026; Forum received payment on July 31, 2026.

 

On August 3, 2026, Gname.com Pte. Ltd. confirmed by e-mail to Forum that the <amsoilshop.it.com> domain name is registered with Gname.com Pte. Ltd. and that Respondent is the current registrant of the name. Gname.com Pte. Ltd. has verified that Respondent is bound by the Gname.com Pte. Ltd. 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 August 7, 2026, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 2026 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@amsoilshop.it.com. Also on August 7, 2026, 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 August 28, 2026, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy 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 states that it has manufactured and sold synthetic lubricants, filtration products, fuel additives, and other automotive maintenance goods under the AMSOIL mark since at least as early as 1976, that it markets those goods through its own website at <amsoil.com> and through a network of dealers, distributors, and retail partners, and that it owns numerous United States Patent and Trademark Office ("USPTO") registrations for the mark, including Reg. No. 3352070 dated December 11, 2007 and Reg. No. 3711452 dated November 17, 2009.

 

The disputed domain name, registered on July 11, 2026, is confusingly similar to the AMSOIL mark as it incorporates the mark in its entirety, adding only the descriptive term "shop", which consumers will understand as identifying Complainant's own online retail store, as well as the ".it.com" TLD.

 

Respondent has no rights or legitimate interests in the disputed domain name where it is not commonly known by the domain name, has never been licensed or otherwise authorized to use the AMSOIL mark, and instead uses the domain name to host a website that reproduces Complainant's mark, graphics, copyrighted product images, and product information and closely mimics the appearance and functionality of Complainant's own website, none of which is a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant further asserts, upon information and belief, that Respondent uses the website in connection with a phishing scheme and the collection of consumer information.

 

Finally, Complainant contends that Respondent registered and uses the disputed domain name in bad faith. It states that the AMSOIL mark has been in continuous use for decades, and was the subject of numerous trademark registrations, long before the disputed domain name was registered; that Respondent's wholesale copying of Complainant's mark, graphics, images, and product offerings leaves no doubt that Respondent had actual knowledge of Complainant's rights when it selected the domain name; and that Respondent trades upon the resulting confusion to divert internet users seeking Complainant to a website falsely presented as an authorized AMSOIL storefront, thereby disrupting Complainant's business and seeking commercial gain in violation of Policy ¶¶ 4(b)(iii) and (iv).

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

−        Complainant owns registered trademark rights to its AMSOIL mark and the <amsoilshop.it.com> domain name is confusingly similar to the mark;

−        Respondent does not have rights or legitimate interests in the disputed domain name where it is not commonly known by the domain name, and it hosts a website that passes itself off as originating with Complainant and claims to sell Complainant's products; and

−        The disputed domain name was registered and is used in bad faith where its website impersonates Complainant and deceives consumers, for commercial gain, based on a likelihood of confusion with Complainant's mark.

 

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 Jurisprudential Overview 3.1 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.").

 

Identical and/or Confusingly Similar

Complainant asserts rights in its AMSOIL mark through its registrations with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark under Policy ¶ 4(a)(i). 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)."). Here, Complainant provides copies of its USPTO Trademark Registration Certificates and therefore, the Panel finds that Complainant has rights in the AMSOIL mark under Policy ¶ 4(a)(i).

 

Next, Complainant argues that the disputed domain name is confusingly similar to the AMSOIL mark. Under Policy ¶ 4(a)(i), adding a generic or descriptive term, along with a TLD, is typically insufficient to differentiate a disputed domain name from the asserted mark. See PFI HOLDCO LLC v. Kenneth Nicolas Bany, FA 2201239 (Forum Mar. 2, 2026) (finding confusing similarity where "the disputed domain name <lakewoodjuice.com> incorporates the LAKEWOOD mark in its entirety and merely adds the term 'juice,' which directly describes Complainant's goods"); see also Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs."). The <amsoilshop.it.com> domain name includes the entirety of the AMSOIL mark and adds only the descriptive term "shop", which describes a retail outlet for the very goods that Complainant sells under its mark, together with the ".it.com" suffix which functions here as the TLD and is generally disregarded. These minimal changes do not reduce confusion and the mark remains clearly recognizable in the disputed domain name. As such, the Panel finds that Respondent's domain name is confusingly similar to Complainant's mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 it 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 first contends that Respondent lacks rights or legitimate interests in the <amsoilshop.it.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not licensed or otherwise authorized Respondent to use the AMSOIL mark. It has become well accepted that the information set out in a disputed domain name's WHOIS record may inform consideration of whether a respondent is commonly known by a disputed domain name pursuant to Policy ¶ 4(c)(ii). See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information lists Respondent as "Operi Manaha," and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.) In addition, a lack of authorization to use a complainant's mark may indicate that a respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)"). The WHOIS record for the <amsoilshop.it.com> domain name, as revealed by the concerned Registrar, identifies the Registrant as "Takahashi Lachulita", which bears no resemblance to the disputed domain name. Complainant further states that it "has never authorized, licensed, sponsored, or otherwise permitted Respondent to use the AMSOIL Marks or any confusingly similar variation thereof for any purpose." Respondent has not filed a Response in this case and so it does not dispute Complainant's assertions or supplement the available evidence. Therefore, the Panel finds no ground upon which to conclude that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Next, Complainant asserts that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and that it is also not making a legitimate noncommercial or fair use of the domain name. Rather, it asserts that the <amsoilshop.it.com> domain name resolves to a website that impersonates Complainant and deceives consumers who are seeking genuine AMSOIL products. Such activity has been held to be neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of a disputed domain name under Policy ¶¶ 4(c)(i) or (iii). See Subway IP LLC v. subways pvt ltd / business development, FA 2069330 (Forum Nov. 28, 2023) (no rights or legitimate interests found where "Respondent has used the disputed domain name to impersonate Complainant and Complainant's Indian subsidiary...").

 

In support of its contentions Complainant submits screenshots of the website to which the disputed domain name resolves, as well as screenshots of its own <amsoil.com> website for comparison. The Panel notes that Respondent's site closely replicates the look and feel of Complainant's site, displaying the AMSOIL mark at the top of the page in the same graphic logo form that Complainant uses, a marquee image of a motorcycle on a highway beside bottles of Complainant's branded motor oil, and navigation menus reading "SHOP BY PRODUCT", "SHOP BY EQUIPMENT", and "APPAREL MERCHANDISE & PRODUCT INFORMATION" that mirror those on Complainant's own site. Below these appear rows of product images bearing Complainant's mark, each labeled with a red "-70%" badge and showing one price in a strike-through grey font followed by a significantly lower price in a red font, under banners announcing that "All summer engine care picks up to 70% off ship free to every corner globally". The footer of the site displays the notice "Copyright 2026©Amsoilshop.it.Com" together with images of various payment methods such as Visa, Mastercard, and PayPal. There does not appear to be any message stating that Respondent's site or products do not originate from Complainant and the site offers no other indication that it has no relationship with Complainant. Finally, the fact that Complainant's mark appears on Respondent's website does not, itself, indicate that Respondent is commonly known thereby where such use appears intended to create consumer confusion. Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", D2000-0847 (WIPO Oct. 16, 2000) ("use which intentionally trades on the fame of another cannot constitute a 'bona fide' offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy."). 

 

Based upon the submitted evidence, the Panel agrees with Complainant's contention that Respondent creates the false impression that its website is operated by Complainant and that it thereby deceives potential customers. Respondent has not participated in these proceedings to offer any explanation for its activities. Thus, the Panel finds that the disputed domain name is not being used for a bona fide offering of goods or services or in a legitimate noncommercial or fair manner under Policy ¶¶ 4(c)(i) and (iii).

 

Registration and Use in Bad Faith

Complainant asserts that Respondent registered the disputed domain name with actual knowledge of Complainant's rights in its AMSOIL mark. Actual knowledge can provide a solid foundation upon which to build an argument of bad faith registration under Policy ¶ 4(a)(iii) and this can be demonstrated based on the reputation of the mark as well as the use to which a disputed domain name is put. See WordPress Foundation v. mich delorme / mich d dots tlds, FA 1584295 (Forum Nov. 25, 2014) ("Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant's services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant's mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith."). Also UDRP Perspectives on Recent Jurisprudence, § 3.4 (updated Jan. 15, 2025), available at https://udrpperspectives.org ("For bad faith to be present, the Respondent must have actual knowledge of the existence of the Complainant, the trademark owner.").

 

Complainant asserts that its mark is distinctive and well known, but the evidence it submits on that point consists only of its trademark registrations and screenshots of its own <amsoil.com> website. The fact of registration, while it may establish trademark rights, does not establish a mark's reputation. Respondent's actual knowledge of Complainant's mark is nevertheless clear from its own conduct, as the website resolving from the <amsoilshop.it.com> domain name reproduces Complainant's graphic logo, its product photographs, and the structure and content of its website, and the domain name itself pairs the AMSOIL mark with the word "shop". Registered long after Complainant first used and registered its mark, the disputed domain name cannot plausibly be explained as a coincidence. Based on the submitted evidence, the Panel finds that Respondent had actual knowledge of Complainant's mark at the time that it registered the disputed domain name and that it did so in bad faith.

 

Next, Complainant argues that Respondent registered and uses the <amsoilshop.it.com> domain name in bad faith because Respondent passes itself off as Complainant, confusing and deceiving consumers into thinking that they are dealing with a website that originates with Complainant and is a genuine source for its products. Such conduct is indicative of bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Tesla Inc. v. Ultimate / Jonathan Littlewood, FA 2052426 (Forum Aug. 2, 2023) (finding bad faith where "Respondent has attempted to commercially gain or otherwise benefit by fraudulently impersonating Complainant to entice shoppers to purchase on Respondent's website."); see also Indian Industries, Inc. d/b/a Escalade Sports v. jianping liang, FA 2074614 (Forum Jan. 5, 2024) (hosting a website at a domain name that impersonates complainant's business constitutes bad faith registration and use). The Panel references the screenshots of the site resolving from the disputed domain name which are described in the previous section. These show Respondent's use of Complainant's mark and logo, as well as images of Complainant's products supposedly offered for sale at discounts of up to seventy percent, all under a copyright notice claiming the site as its own. This gives the clear impression that Respondent's website originates with Complainant and that Respondent is improperly seeking commercial gain based on confusion with Complainant's mark. Based on a strong preponderance of the evidence (i.e., more likely than not), the Panel agrees with Complainant's assertion that Respondent is targeting the AMSOIL mark and is seeking to impersonate Complainant and perhaps obtain personal information from customers. As such, the Panel finds firm ground upon which to conclude that Respondent both registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv) and thus under ¶ 4(a)(iii).

 

Finally, Complainant asserts, upon information and belief, that Respondent uses the disputed domain name in connection with a phishing scheme and the collection of consumer information. However, no evidence in support of this assertion appears in the record, and the claim is rather speculative absent even circumstantial evidence of such activity. The Panel's finding of bad faith does not rest upon it.

 

DECISION

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

 

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

 

 

 

Steven M. Levy, Panelist

Dated: August 31, 2026