Complainant is Tectum Holdings, Inc. of Ann Arbor, Michigan, United States of America (“United States”) and Auto Customs, LLC of Ocala, Florida, United States, represented by Adams and Reese LLP, United States.
Respondent is Jacob Elkins, Just JK LLC of Xenia, Ohio, United States. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2017. On May 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 1, 2017, the Registrar 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 28, 2017.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on July 3, 2017. 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
Two commonly controlled enterprises are joined as Complainant for purposes of this proceeding. The first such enterprise, Tectum Holdings, Inc., is the owner of registration (by way of assignment) of the word trademark HAVOC on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 3,996,383, registration dated July 19, 2011, in international class (IC) 12, covering plastic parts for vehicles, as further specified. The second such enterprise, Auto Customs, LLC, is owner of registration on the Principal Register of three HAVOC OFFROAD trademarks: registration number 5,078,044, registration dated November 8, 2016, application for registration dated April 28, 2016, in IC 25, covering clothing, as further specified; word and design service mark, registration number 5,225,755, registration dated June 20, 2017, in IC 35, covering online retail store services, as further specified, and; registration number 5,225,754, registration dated June 20, 2017, in IC 35, covering online retail store services, as further specified. The first and second enterprises constituting Complainant are directly and indirectly owned and controlled by Truck Hero, Inc., which is ultimately responsible for direction of their trademark use and has consented to their joint initiation of this proceeding.
Complainant offers and sells automotive parts, automotive accessories and apparel through online and brick-and-mortar retail outlets. Complainant spends considerable sums to promote goods and services under its HAVOC and HAVOC OFFROAD trademarks. Complainant is the owner of registrations for a substantial number of domain names that incorporate its trademarks, including , which is associated with its principal website. Complainant’s domain name was acquired prior to Complainant’s application for registration of its HAVOC OFFROAD trademark at the USPTO, and Complainant launched its website associated with that domain name prior to Respondent’s registration of the disputed domain names in July 2016.
According to the Registrar’s verification, Respondent is owner of registration of the three disputed domain names. According to that verification, the record of registration for the disputed domain name was created on July 7, 2016; the record of registration for the disputed domain name was created on July 7, 2016, and; the record of registration for the disputed domain name was created on July 7, 2016. Each of the disputed domain names has been registered to Respondent since its creation date.
As of the date of initiation of this proceeding, each of the disputed domain names was directed to a GoD parking page displaying advertising links to websites offering at least some products competitive with those offered and sold by Complainant. Each of those parking page websites listed the disputed domain name for sale at a current price of USD 5,000. As of early January 2017, the disputed domain name directed Internet users to a website headed “All-Terrain Outfitters” that offered for sale by enterprises other than Complainant products that were directly competitive with the product line of Complainant. As of January 24, 2017, each of the disputed domain names directed Internet users to a YouTube song video that Complainant argues was used to “prank” Internet users by reference to a type of “bait and switch” practice.
Complainant through its counsel was in contact with Respondent with cease-and-desist demands commencing by email and courier letter of February 21, 2017, followed by telephone calls. Respondent did not agree to a resolution of this matter.
Complainant has provided evidence that Respondent has registered a number of domain names that incorporate the trademarks of third parties and various generic top-level domains.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)). 5. Parties’ Contentions A. Complainant
Complainant alleges that it owns rights in the trademark HAVOC, and rights in the trademark and service mark HAVOC OFFROAD, based on use in commerce in the United States as evidenced by registration.
Complainant contends that the disputed domain names are identical or confusingly similar to Complainant’s trademarks.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain names because: (1) Respondent has never been commonly known by Complainant’s trademarks; (2) Respondent and its business have not been licensed or authorized as distributors or otherwise to make use of Complainant’s trademarks; (3) Respondent has not been authorized to use Complainant’s trademarks in domain names or as a trademark; (4) Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, or in a legitimate noncommercial or fair manner, and; (5) without authorization from Complainant no actual or contemplated bona fide or legitimate use of the disputed domain names could reasonably be claimed by Respondent since Complainant’s trademarks were well-known among relevant consumers at the time of registration of the disputed domain names.
Complainant alleges that Respondent registered and is using the disputed domain names in bad faith because: (1) Respondent must have been aware of Complainant’s trademarks at the time it registered the disputed domain names; (2) the disputed domain names are being used to direct Internet users to parking pages with pay-per-click links to third-party providers of goods and services competitive with those of Complainant; (3) Respondent used at least one of the disputed domain names to direct Internet users to a commercial website where Respondent offered goods of third parties directly competitive with those of Complainant; (5) Respondent’s use of a link to a prank YouTube video disrupts Complainant’s business, and could only tarnish the distinctiveness and reputation of Complainant’s trademarks; (6) Respondent offered to sell each of the disputed domain names for USD 5,000, a price in excess of out-of-pocket expenses in connection with the disputed domain names, and; (7) Respondent engaged in a pattern of conduct of registering domain names incorporating the trademarks of third parties.
Complainant requests the Panel to direct the registrar to transfer the disputed domain names to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its records of registration. The express courier delivery service record shows successful delivery. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar
Complainant has provided evidence of rights in the trademarks HAVOC and HAVOC OFFROAD, including through registration at the USPTO, and of use in commerce in the United States (see Factual Background supra). Respondent has not contested Complainant’s trademark rights. The Panel determines that Complainant has rights in the trademarks HAVOC and HAVOC OFFROAD.
The disputed domain names each incorporate Complainant’s trademarks. The HAVOC OFFROAD trademark is incorporated in its entirety with Respondent adding only the gTLDs , and , respectively. The disputed domain names each incorporate Complainant’s HAVOC trademark, adding the adjective “offroad” that is associated with the type of product Complainant markets under this trademark, and which Internet users would be likely to associate with Complainant’s HAVOC trademark. Under circumstances such as those in this proceeding, Respondent’s addition of the gTLDs used in the disputed domain names does not distinguish them from Complainant’s trademarks from the standpoint of the Policy. The Panel determines that Complainant has established that the disputed domain names are confusingly similar to its trademarks.
The Panel determines that Complainant has established that it owns rights in the trademarks HAVOC and HAVOC OFFROAD and that the disputed domain names are each confusingly similar to those trademarks. B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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”. (Policy, paragraph 4(c)).”
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain names are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain names.
Respondent has not replied to the Complaint, and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Respondent’s use of the disputed domain names in connection with parking pages incorporating links to products of third-party competitors does not establish rights or legitimate interests in favor of Respondent in the disputed domain names.
Respondent’s use of one of the disputed domain names, , to attract Internet users to its own website where it offered third-party products competitive with those of Complainant does not constitute fair use of Complainant’s trademarks within the meaning of the Policy, and does not establish rights or legitimate interests in that disputed domain name. Such use by Respondent gives rise to initial interest confusion on the part of Internet users who would be directed to Respondent’s website expecting to find Complainant’s branded products, but would instead find only the products of competing third parties.
Respondent’s use of the disputed domain names does not otherwise manifest rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of Paragraph 4(a)(iii), the following circumstances, 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.” Those are: “(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who 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; (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] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
With respect to the disputed domain name , Respondent used that name to direct Internet users to its own commercial website where it offered products of third parties directly competing with those of Complainant, and did not offer products of Complainant.1 Such use attempted to intentionally attract Internet users to Complainant’s website for commercial gain by creating confusion as to whether Complainant was the source, sponsor or affiliate of Respondent’s website. With respect to each of the disputed domain names, Respondent has used them in connection with parking pages that provide links to third-party suppliers of products competing with those of Complainant. With respect to each of the disputed domain names, Respondent offered them for sale at prices substantially in excess of its presumed out-of-pocket costs directly associated with those disputed domain names. Based on these factors, the Panel concludes that Respondent registered and is using the disputed domain names in bad faith within the meaning of the Policy.
As a matter of administrative panel efficiency, the Panel need not address Complainant’s additional arguments regarding Respondent’s bad faith.
The Panel determines that Respondent registered and is using each of the disputed domain names in bad faith within the meaning 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 names, , , and be transferred to Complainant.
Frederick M. Abbott
Sole Panelist
Date: July 11, 2017
1 The Panel notes that Complainant's HAVOC trademark was registered at the USPTO in 2011, a date substantially prior to Respondent's registration of the disputed domain names. While Complainant's HAVOC OFFOAD trademarks were not formally registered prior to Respondent's registration of the disputed domain names, Complainant made substantial use of those trademarks prior to the date of Respondent's registration and had applied for trademark registration prior to Respondent's registration. Complainant's use in commerce was sufficient to give Complainant rights in the HAVOC OFFROAD trademark prior to Respondent's registration of the disputed domain names. Hypothetically, even if the Panel were to determine that Complainant had not acquired rights in the HAVOC OFFROAD trademark prior to Respondent's registration of the disputed domain names, Complainant's rights in its registered HAVOC trademark would be sufficient for it to prevail in this proceeding.
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