Complainant is Autosales Incorporated, dba Summit Racing Equipment of Akron, Ohio, United States of America (“United States”), represented by Buckingham, Doolittle & Burroughs, LLP, United States.
Respondent is A W of San Diego, California, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2012. On February 9, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On February 9, 2012, GoD, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2012. An email communication was received from Respondent on February 29, 2012 seeking an extension to the due date for Response. At the request of Respondent, and in consultation with Complainant, on March 1, 2012 the Center extended the due date for Response to March 6, 2012. A subsequent email communication was received from Respondent on March 7, 2012.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on March 14, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant is a company based in the State of Ohio, in the United States, that specializes in car parts and after-market automotive parts. Complainant has been operating under the trade name and mark TRICK FLOW since at least 1993, and has registered such trade name with the State of Ohio. Complainant has obtained several trademark registrations for the mark TRICK FLOW globally, including with the United States Patent and Trademark Office. These include United States Registration No. 1,887,752 (Registered 1995); United States Registration No. 2,229,388 (Registered 1999); United States Registration No. 2,681,311 (Registered 2003); and United States Registration No. 3,962,260 (Registered 2011). Complainant also owns United States Registration No. 2,855,667 (Registered 2004) for TRICK FLOW TFX XTREME NITROUS SYSTEMS.
Complainant also owns the registration for domain name since December 27, 1995. Complainant has set up a website at this domain name to refer web viewers to its business. Complainant uses the name and mark TRICK FLOW SPECIALTIES on a website associated with the aforementioned domain name to refer to its after-market auto parts.
The disputed domain name was registered to this Respondent on December 8, 2010. Respondent has no affiliation with Complainant. Respondent has used the disputed domain name to discuss automotive parts, in competition with Complainant. Complainant has not authorized this use of its trademarks therewith. 5. Parties’ Contentions A. Complainant
Complainant contends that (i) the disputed domain name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith. B. Respondent
Respondent did not file a substantive reply to Complainant’s contentions in this administrative proceeding. Shortly before the response was due, Respondent requested, and was granted an extension of time to file a Response by the Center, with Complaint’s consent. The extension expired on March 6, 2012. Not hearing from Respondent by March 7, 2012, the Center sent a notification that a panel would be appointed. That same day, Respondent sent the following email message:
Dear [Case Manager],
What is going on? I transmitted my response via your “Online Response Filing
Form” on March 6, 2010 [sic]. Is my response being ignored?
Sincerely,
Andrew Walz
To this, the Center immediately replied that Respondent could resubmit his Response via email or via the online response filing system. However, the Center did not hear further from Respondent on this matter. 6. Discussion and Findings A. Identical or Confusingly Similar
This Panel must first determine whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s registered trademark TRICK FLOW. Accordingly, consumers would expect to find information offered by Complainant on the website to which the disputed domain name refers.
The Panel finds that the added word “specialties” would be perceived by web users as descriptive of information about specialties offered under the TRICK FLOW mark. This is particularly so, since Complainant offers goods on its website already under the mark TRICK FLOW SPECIALTIES.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, DaimlerChrysler A.G. v. Donald Drummonds,WIPO Case No. D2001-0160; and Microsoft Corporation v. StepWeb,WIPO Case No. D2000-1500. Again, this is particularly so, where Complainant, as here, is already using the additional word along with its mark in its business.
This Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy. B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain names at issue in a UDRP dispute. For example, paragraph (4)(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name in connection with a bona fide offering of goods or services; (ii) demonstration that the respondent has been commonly known by the domain name; or (iii) 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.
Respondent did not provide a substantive reply to the Complaint, however, and no evidence has been presented to this Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to divert Internet users to a website which is unaffiliated with Complainant or Complainant’s services.
Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of rights or legitimate interests in accordance with paragraph (4)(a)(ii) of the Policy, which Respondent has not rebutted. C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a disputed domain name was registered and is being used in bad faith. For example, paragraph (4)(b)(iv) of the Policy states that bad faith can be shown where by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or location or of a product or service on the website or location. As noted in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to redirect to a website advertising auto parts, in competition with Complainant. Complainant has not authorized this use of its trademarks. In so doing, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain. This evidences bad faith by Respondent.
For these reasons, this Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph (4)(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Lorelei Ritchie
Sole Panelist
Dated: March 25, 2012
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