The Complainant is Les Schwab Warehouse Center, Inc., of Oregon, United States of America (“United States”), represented by Schwabe, Williamson & Wyatt, United States.
The Respondent is Tyler Reilly, Extreme Customs, LLC of Oshkosh, Wisconsin, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2018. On November 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 7, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2018.
The Center appointed Evan D. Brown as the sole panelist in this matter on December 13, 2018. 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
The Complainant sells tires, automotive parts and accessories, and provides related retail and online services. It has used the mark LES SCHWAB in commerce since 1952 and owns a United States registration for that mark (Reg. No. 2, 370,066, which issued on July 25, 2000).
The Respondent also sells tires, wheels and other automotive accessories. It registered the disputed domain on July 13, 2006. Users who type the disputed domain name into their browsers are redirected to the Respondent’s web page, where it offers competing goods and services. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The 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. A. Identical or Confusingly Similar
The Complainant has rights in the LES SCHWAB mark, as evidenced by the trademark registration that predates registration of the disputed domain name. The mark has also been in use for many years. The disputed domain name is confusingly similar to this mark. It contains the words comprising the mark in its entirety, accompanied by the Top-Level Domain “.net”. The generic Top-Level Domain (“gTLD”) “.net” may be disregarded for the purpose of comparing the disputed domain name with the Complainant’s mark under paragraph 4(a)(i) of the Policy. Accordingly, the Panel finds in favor of the Complainant on this first element of the Policy. B. Rights or Legitimate Interests
The Complainant will be successful under this element of the Policy if it makes a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name, and if that prima facie showing remains unrebutted by the Respondent. The Complainant asserts, among other things, that the Respondent (1) has not made use of the disputed domain name in connection with a bona fide offering of goods or services, (2) is not and has not been commonly known by the disputed domain name, and (3) is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain or to divert consumers. These assertions establish the Complainant’s prima facie case. The Respondent has not answered the Complainant’s assertions, and, seeing no basis in the record to overcome the Complainant’s prima facie showing, the Panel finds that the Complainant has satisfied this second Policy element. C. Registered and Used in Bad Faith
Under these facts, it is clear that the Respondent was aware of the Complainant’s LES SCHWAB mark when it acquired the disputed domain name, and that it did so with bad faith. The Complainant’s LES SCHWAB mark was well known and had been in use for many years when the Respondent acquired the disputed domain name in 2006. And the experience of the Respondent – as the owner of a business that sells the same kind of goods as the Complainant – makes it implausible that the registration was made without knowledge of the LES SCHWAB mark. See, General Motors LLC v. Jeff Shenk, MediaTrac LLC,WIPO Case No. D2017-1817.
The Respondent likewise used the disputed domain name in bad faith by redirecting it to a website where goods competitive with the Complainant’s were offered. Id.; Centurylink Intellectual Property, LLC v. Barry Deuschle,WIPO Case No. DCO2015-0030 (redirecting a domain name containing the complainant’s mark to a website of a competitor of the complainant was “either an act of spite or mischief”). This use of the disputed domain name was an effort to divert potential customers of the Complainant to the Respondent’s website, thereby disrupting the Complainant’s business. For these reasons, the Complainant has satisfied this third element 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.
Evan D. Brown
Sole Panelist
Date: December 14, 2018
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