Complainant is Jasper Engine Exchange, Inc., United States of America (“United States”), represented by Dentons Bingham Greenebaum LLP, United States.
Respondent is Mike Oconnor, Mikes Eastside Auito Repair, Inc., United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2020. On September 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 1, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 6, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on October 6, 2020. The Center verified that the Complaint together with the amendment to 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 October 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2020. Respondent sent an email on October 8, 2020, stating: “This is my response to your apparent dispute of a domain name that I have owned for years and I have every right to own. […]”. Accordingly, the Center notified the Commencement of Panel Appointment Process on November 3, 2020. The Center appointed Phillip V. Marano as the sole panelist in this matter on November 11, 2020. 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 was founded in 1942 and today is the largest mass remanufacturer of engines, motors, and transmissions in the United States. Complainant has used the Jasper Engine Exchange, Inc. trade name (the “Jasper Trade Name”), which remains registered with the Indiana Secretary of State, since at least 1954. Complainant owns valid and subsisting registrations for the JASPER ENGINES & TRANSMISSIONS stylized and design trademark, and the JASPER standard character trademark in the United States (the “JASPER Trademarks”), with the earliest priority dating back to March 4, 1964. Respondent registered the disputed domain name on January 14, 2004. At the time of this Complaint, the disputed domain name resolves to a website titled “Dollar Engines, New Rebuilt Used Engines Transmissions”. 5. Parties’ Contentions A. Complainant Complainant asserts ownership of the Jasper Trade Name and Trademarks and has adduced evidence of trademark registrations in the United States, with earliest priority dating back to March 4, 1964. The disputed domain name is confusingly similar and nearly identical to Complainant’s Jasper Trade Name and Trademarks, according to Complainant, because it starts with the element “Jasper”, directly followed by the element “Engine”, followed by “Exchange”, and it ends with the ubiquitous top level suffix .com, which is not taken into account under the Policy. Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the lack of any license or authorization between Complaint and Respondent; the lack of any evidence that Respondent, who domain name registration data indicates is “Mikes Eastside Auito Repair” [sic], is known by the Jasper Trade Name or Trademarks; the lack of any trademark applications filed by Respondent; and Respondent’s use of the disputed domain name to resolve to a website that mimics Complainant and offers rebuilt engines and transmissions in direct competition with Complainant. Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: Complainant’s longstanding use of the Jasper Trade Name and registration of the JASPER Trademarks, which predate Respondent’s registration of the disputed domain name; and Respondent’s use of the disputed domain name to advertise and sell rebuilt engines and transmissions, which represents paradigmatic bad faith registration and Respondent’s view toward financial gain. B. Respondent Respondent did not submit a formal Response. However, in its informal communication from October 8, 2020, it stated the following: “Dear WIPO/Dinara K. This is my response to your apparent dispute of a domain name that I have owned for years and I have every right to own. We market car parts to cities and states all over the country. Some of the cities that we specifically market to have popular names, in this particular case the city of Jasper. We market to Japer Virginia, Jasper Texas, Jasper Tennessee, Jasper South Caroline, Jasper Oregon, Jasper Oklahoma, Jasper Ohio, Jasper North Caroline, Jasper New York, Japer Missouri, Jasper Minnesota, Japser Michigan, Jasper Indiana, Jasper Georgia, Jasper Forida, jasper Colorado, Jasper Arkansas, Jasper Alabama. We have NEVER used our domain name in bad faith. It was an oversite that the whois has not been updated. We insist that this frivolous dispute be dismissed as we completely and legally have owned this domain and have used it in commerce for years. Thank you. To succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy: (i) the disputed domain name is identical or confusingly similar to a trademark 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. Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 (“A respondent’s default would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. UDRP panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g. where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”). A. Identical or Confusingly Similar Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0 , section 1.2.1 . Complainant submitted evidence that the JASPER Trademarks are registered in the United States with priority dating back to March 4, 1964, a full 40 years before the disputed domain name was registered by Respondent. Thus, the Panel finds that Complainant’s rights in the JASPER Trademarks have been established pursuant to the first element of the Policy. The remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s JASPER Trademarks. In this Complaint, the disputed domain name is confusingly similar to Complainant’s JASPER Trademarks because, disregarding the “.com” generic Top-Level Domain (“gTLD”), the JASPER trademark, and “Jasper Engine” dominant elements of the JASPER ENGINES & TRANSMISSIONS trademark, are both contained in their entirety within the disputed domain name. WIPO Overview 3.0 , section 1.7 (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name … [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar...”). gTLDs, such as “.com” in the disputed domain name, are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0 , section 1.11 . In view of Complainant’s registration of the JASPER Trademarks, and Respondent’s incorporation of the JASPER Trademarks into the disputed domain name, the Panel concludes that Complainant has established the first element of the Policy. It is unnecessary therefore, under the first element of the Policy, for the Panel to assess the degree to which Complainant has common law trademark rights in its trade name. However, it is noteworthy for the second and third elements of the Policy, as detailed below, that the disputed domain name is identical to the Jasper Trade Name. B. Rights or Legitimate Interests Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview, section 2.1. It is also evident that Respondent, identified by registration data for the disputed domain name as “Mikes Eastside Auito Repair” [sic], is not commonly known by the disputed domain name, or Complainant’s JASPER Trademarks, or Complainant’s identical Jasper Trade Name. A panel may undertake limited factual research into matters of public record where it considers such information useful to assess the case merits and research a decision. This includes inter alia visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name. WIPO Overview 3.0, section 4.8. In order to better assess the second element of the Policy in this case, the Panel makes the following observations about Respondent’s website. Respondent’s website advertises, “USD 1,295.95 for an Engine and USD 995.95 for a Transmission … If we cant sell you an engine or transmission for the advertised price we wont sell it to you!” Respondent’s website does not contain any means to purchase any goods or services, or any means to identify or to contact Respondent. Rather, Respondent’s website contains pay-per-click hyperlinks to goods and services offered through third parties, including In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain name, the lack of any evidentiary support for Respondent’s informal response asserting legitimate commercial use of the disputed domain name, and Respondent’s attempts to trade off the goodwill of Complainant to service pay-per-click advertisements, the Panel concludes that Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name: (i) circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or (ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or (iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed 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 Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. Where both parties are located within the United States and the complainant has obtained a federal trademark registration predating a respondent’s domain name registration, UDRP panels have applied the concept of constructive notice, subject to the strength or distinctiveness of the complainant’s trademark, and circumstances that corroborate respondent’s awareness of the complainant’s trademark. WIPO Overview 3.0, section 3.2.2. In this Panel’s view, when the disputed domain name was registered on January 14, 2004, Respondent did have constructive knowledge of Complainant’s preexisting rights in the JASPER Trademarks under United States law. See e.g., Champion Broadcasting System, Inc. v. Nokta Internet Technologies,WIPO Case No. D2006-0128 (applying the principle of constructive notice where both parties are located within the United States). Indeed, the facts in this case corroborate Respondent’s awareness of Complainant and Complainant’s JASPER Trademarks, including the identity between the disputed domain name and the Jasper Trade Name, the ostensible offers on Respondent’s website to sell rebuilt engines and transmissions in direct competition with Complainant, and the pay-per-click advertisements on Respondent’s website for third party services in the automotive industry. Moreover, a domain name that makes unauthorized use of a complainant’s trademark and redirects Internet users to a respondent’s website is strong evidence in and of itself of bad faith under paragraph 4(b)(iv) of the Policy. WIPO Overview, section 3.1.4 (“Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: … seeking to cause confusion for respondent’s commercial benefit, even if unsuccessful … the lack of a respondent’s own rights to or legitimate interests in a domain name [or] redirecting the domain name to a different respondent-owned website”). Here, the disputed domain name misappropriates Complainant’s JASPER Trademarks and is identical to Complainant’s Jasper Trade Name. The disputed domain name resolves to Respondent’s website that contains ostensible offers to sell rebuilt engines and transmissions in direct competition with Complainant. Accordingly, the Panel finds that use of the disputed domain name will inevitably divert potential customers from Complainant’s business to the website under the disputed domain name by attracting Internet users who mistakenly believe that the disputed domain name is affiliated with the Complainant. Such Internet users may further mistakenly believe that the products ostensibly offered on this website, are authentic products offered by Complainant, or by an entity affiliated with Complainant. Similarly, third-party generated material, such as pay-per-click advertisements and hyperlinks, cannot be disclaimed by Respondent to prevent a finding of bad faith. WIPO Overview, section 3.5 (“A respondent cannot disclaim responsibility for content appearing on the website associated with its domain name” regardless of whether “such links [are] generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that respondent itself may not have directly profited….”). See SAP SE v. Domains by Proxy, LLC / Kamal Karmakar,WIPO Case No. D2016-2497 (“It is well established that where a domain name is used to generate revenue in respect of ‘click through’ traffic, and that traffic has been attracted because of the name’s association with the Complainant, such use amounts to use in bad faith … Revenue will be generated by such visitors clicking on the provided links and it does not matter whether that revenue accrues to the Respondents or the operator of the parking site”) (internal citations omitted). Indeed, the facts in this case, particularly the existence of identical website content with identical pay-per-click advertisements and hyperlinks, devoid of any actual method to purchase goods or services, and devoid of any legitimate means to identify or contact Respondent, all militate against any finding of good faith use by Respondent. Thus, in view of the foregoing evidence, the Panel views Respondent’s informal response as mere pretext, and the Panel concludes that Complainant has established the 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 Phillip V. Marano
Michael OConnor” 6. Discussion and Findings
Sole Panelist
Date: December 2, 2020
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