The Complainant is Radiator Express Warehouse of Benicia, California, United States of America (“U.S.”) represented by Stokes Lawrence, P.S., U.S.
The Respondent is Yuki Lam of Hong Kong, China / Domain Privacy Service of Burlington, Massachusetts, U.S. 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2012. On July 31, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 2012, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on August 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23, 2012.
The Center appointed David Perkins as the sole panelist in this matter on August 29, 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
4.1. The Complainant
4.1.1. The Complainant, which is headquartered in the San Francisco Bay area, California, was founded in 1985. It operates a franchise network under the 1-800-RADIATOR mark. It claims to be the largest independent direct distributor of automobile parts and accessories in the U.S. It also claims to have that country’s largest inventory of radiators, air conditioning condensers and parts. It operates in more than 230 locations in the U.S. and has annual sales exceeding USD 200 million. The Complainant receives orders from all 50 U.S. States, as well as from Canada.
The Complainant’s 1-800-RADIATOR registered trademarks
4.1.2 The Complainant is the owner of the U.S. and Canada registered trademarks set out below:
Country Reg. No. Mark Class(es) of Services Dates of Application and Registration * USA
2,638,521
1-800-RADIATOR
35
Filed: January 11, 2001 Registered: October 22, 2002 * USA
2,619,126
1-800-RADIATOR
35
Filed: January 2, 2001
Registered: September 10, 2002 * USA
3,310,529
1-800-RADIATOR
35
Filed: October 10, 2006
Registered: October 16, 2007 * USA
3,337,961
1-800-RADIATOR and device
35
Filed: October 10, 2006
Registered: November 20, 2007 * USA
3,324,638
1-800-RADIATOR and device
35
Filed: August 21, 2006
Registered: October 30, 2007 ** USA
3,662,734
1-800-RADIADOR
35
Filed: July 2, 2008
Registered: August 4, 2009 ** USA
3,662,746
1-800-RADIADOR & device
35
Filed: July 2, 2008
Registered: August 4, 2009 + Canada
1,322,758
1-800-RADIATOR
35
Filed: November 2, 2006
Registered: December 13, 2007 + Canada
1,296,485
1-800-RADIATOR
35
Filed: April 3, 2006
Registered: April 15, 2009 + Canada
1,322,764
1-800-RADIATOR & device
35
Filed: November 2, 2006
Registered: December 21, 2007 ++ Canada
1,428,781
1-800-RADIATEUR
35
Filed February 24, 2009
Registered: May 19, 2010 +++ Canada
1,428,782
1-800-RADIATEUR & device
35
Filed: February 24, 2009
Registered: August 6, 2010
The U.S. registrations marked with a single asterisk were first used in 1996 and those with a double asterisk were first used in February 2008. The Canadian registrations marked with a single cross were first used in 2006, that with a double cross in 2008 and that with three crosses in 2010.
The 1-800-RADIATOR domain names
4.1.3 The following domain names are listed in the name of Mike Rippey, the Chief Executive Officer of the Complainant and are held by him on behalf of the Complainant.
created July 23, 1996
created May 11, 2005
4.2 The Respondent
4.2.1 The disputed domain name was created on February 27, 2012 and is registered in the name of the Second Respondent, Domain Privacy Services.
4.2.2 In the absence of a Response, all that is known of the Respondent appears from the Complaint. The Complainant contends that the true identity of the registrant is the First Respondent, Yuki Lam of Hong Kong, China, explaining that in another UDRP proceeding (Radiator Express Warehouse v. Paydues Inc.,WIPO Case No. D2012.1252 relating to the disputed domain name ), the Registrar disclosed that registrant. The above-referenced case originally also included the disputed domain name that is the subject of this administrative proceeding but the Complaint in that proceeding was amended to remove it.
4.2.3 The Complainant further contends that the person actually responsible for registration of the disputed domain name is J. Rager. This is based on a statement on the website to which the disputed domain name resolves that
“The Entrepreneur’s Network was founded by [J.] Rager[.]”
4.2.4 The Complaint exhibits pages from the website to which the disputed domain name resolves, the first page of which reads:
“1-800-Radiator Franchise
The 1-800-Radiator Franchise offers business opportunities to various people in its niche i.e. providing new and highly advanced A/C, radiators, compressors and many other automotive products and parts to customers directly. Ever since the launch of the company, its speedy delivery within a few hours of ordering has been its trademark or USP, long before it became a franchise. This is a branded company which started franchising in 2001[.]” 5. Parties’ Contentions 5.1 Complainant
Identical and/or Confusingly Similar
5.1.1 The Complainant’s case is that the disputed domain name wholly incorporates its registered and well-known 1-800-RADIATOR trademark which is sufficient to establish that the disputed domain name is identical with or confusingly similar to that trademark.
5.1.2 The addition to the disputed domain name of the generic term “franchise” does nothing to differentiate it in such a way from the 1-800-RADIATOR registered trademark to avoid being confusingly similar to that trademark. The Complainant cites a number of decisions under the Policy where addition of the word “franchise” to a Complainant’s trademark was held to do nothing to obviate confusion and could increase, rather than diminish, the likelihood of confusion.
5.1.3 The respondents in a number of those cases - namely, Valpak Direct Marketing Systems, Inc. v. Paydues Inc., WIPO Case No. D2012-0042; Crunch IP Holdings, LLC v. Paydues Inc.,WIPO Case No. D2012-1033; LC Trademarks, Inc. v. PayDues Inc.,WIPO Case No. D2011-2125; and La Quinta Worldwide, L.L.C. v. Paydues, Inc.,WIPO Case No. D2012-0016 were Paydues Inc and J. Rager. As noted in paragraph 4.2.3 above, the Complainant believes that Mr. Rager is the person actually responsible for registration of the disputed domain name in this administrative proceeding.
Rights or Legitimate Interests
5.1.4 The Complainant’s case is that the Respondents cannot bring themselves within the circumstances provided for in paragraph 4(c) of the Policy. Specifically, the Complainant has been using its 1-800-RADIATOR trademark since 1996, long before registration of the disputed domain name in February 2012. By that time, the Complainant’s business was very well-known through its extensive franchise network as a distributor of automobile parts and accessories. As noted in paragraph 4.2.4 above, the disputed domain name is being used for precisely the same business. In the circumstances, the Complainant says that such use of the disputed domain name cannot be in connection with a bona fide offering of goods or services.
5.1.5 Nor on the facts, can that use be a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the 1-800-RADIATOR trademark. Additionally, the Complainant points to a pattern of behaviour by Mr. Rager evidenced by the UDRP decisions listed in paragraph 5.1.3 above, which the Complainant contends speaks to the Respondents’ lack of rights or legitimate interests in the disputed domain name.
5.1.6 The Complainant characterises the Respondents’ use of the disputed domain name as what would appear to amount to “phishing” for personal data from Internet users under the guise of providing franchise information. Such activity, the Complainant says, is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed document name.
5.1.7 Finally, the Complainant invites the Panel to draw an adverse inference against the Respondents based on the use of a privacy shield that no legitimate or fair use has been made of the disputed domain name.
Registered and Used in Bad Faith
5.1.8 Here, the Complainant’s case is that the facts demonstrate circumstances falling within paragraphs 4(b)(ii) and (iv) of the Policy. The same facts which, the Complainant says, demonstrate confusing similarity with its 1-800-RADIATOR trademark and an absence of rights or legitimate interests in the disputed domain name, also evidence registration and use of the disputed domain name in bad faith. In the circumstances, it is not - in the Panel’s view - necessary to repeat those facts in relation to this requirement of the Policy. 5.2 Respondent
As noted, no Response has been filed. 6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondents’ rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Identical or Confusingly Similar
6.5 The Complainant clearly has rights both in the registered 1-800-RADIATOR trademark and by reason of its long and extensive use of that trademark.
6.6. In the disputed domain name the descriptive word “franchise” has been added to that trademark. Since the disputed domain name incorporates the 1-800-RADIATOR trademark in its entirety, that addition does not in the view of the Panel serve to avoid confusing similarity with the trademark. Accordingly, the Complaint satisfies the requirements of paragraphs 4(a)(i) of the Policy. Rights or Legitimate Interests
6.7 On the basis of the facts set out in paragraphs 4 and 5 above, it is plain that the Respondents cannot demonstrate that any of the circumstances set out in paragraph 4(c) of the Policy apply in this case. It is quite clear that the Respondents’ use of the disputed domain name - see, for example, the extract set out in paragraph 4.2.4 above from the website to which the disputed domain name resolves - is not in connection with a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use. Accordingly, the Complaint meets the requirements of paragraph 4(a)(ii) of the Policy. Registered and Used in Bad Faith
6.8. The same facts which demonstrate the Respondents’ lack of rights or legitimate interests in the disputed domain name, also constitute clear evidence of circumstances falling within paragraphs 4(b)(iii) and (iv) of the Policy. For that reason, the Complaint meets the requirement of 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 the Complainant.
David Perkins
Sole Panelist
Dated: September 5, 2012
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