Complainant is Rivian IP Holdings, LLC, United States of America (“United States” or “US”), represented by Coates IP, United States.
Respondent is Brian Huddleston, United States. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2020. On December 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 22, 2020, 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 December 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 13, 2021. On the same day, the Respondent emailed the Center. The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on January 21, 2021. 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 an American-based electric automobile manufacturer and technology company founded in 2009 that offers various goods and services related to sustainable transportation and delivery under the RIVIAN trademark (“Complainant’s Mark” or “RIVIAN Mark”). Complainant and its business dealings have been featured in major national and international periodicals such as Forbes, The New York Times, and CNBC. Complainant owns multiple US trademark registrations for its RIVIAN Mark, including US registration numbers 6,075,546 and 6,075,547, both of which were registered on June 9, 2020, and have an effective priority date of April 20, 2018. Complainant has also been advertising its products and services under the RIVIAN Mark through the website located at the The disputed domain names Complainant contends that the disputed domain names are identical or otherwise confusingly similar to Complainant’s RIVIAN trademark because they fully incorporate the RIVIAN Mark and merely include the generic or descriptive terms “capital,” “financial”, or “leasing.” Complainant argues that the addition of these terms in the disputed domain names does nothing to prevent a finding of confusing similarity under paragraph 4(a)(i) of the Policy. Moreover, Complainant contends that these terms are connected to the vehicle industry, in which Complainant operates, where vehicle manufacturers routinely offer financing and leasing services in the ordinary course of business. Complainant also alleges that Respondent has no rights or legitimate interests in the disputed domain names. Complainant contends that there is no evidence that Respondent used or engaged in demonstrable preparations to use the disputed domain names in connection with bona fide offerings of goods and services. Complainant also alleges that there is no evidence that Respondent is commonly known by any of the disputed domain names nor making legitimate noncommercial or fair use of them. Lastly, Complainant contends that the disputed domain names were registered and are being used in bad faith. According to Complainant, Respondent must have had actual and constructive knowledge of Complainant’s rights in the RIVIAN Mark given that Complainant had already filed trademark applications for its RIVIAN Mark and started using the mark in commerce well before the disputed domain names were registered. Complainant further argues that Respondent is engaged in a pattern of abusive registrations, not only targeting Complainant, but also registering at least one other domain name incorporating a third-party trademark, thus further evidencing Respondent’s bad faith registration and use. Complainant also alleges that the disputed domain names have not been used in connection with bona fide offerings of goods or services and are merely being passively held by Respondent. Complainant argues that Respondent’s passive holding of the disputed domain names does not preclude a finding of bad faith use under paragraph 4(a)(iii) of the Policy. B. Respondent Respondent did not reply to Complainant’s contentions. Following the Center’s notification of Respondent’s default, Respondent emailed the Center requesting an extension on this case. This request is addressed below. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names were registered and are being used in bad faith. Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) 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.” Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Respondent’s Late Request for Extension Under paragraph 10 of the Rules, panels are instructed to ensure that the administrative proceeding takes place with due expedition, while ensuring that the parties are treated with equality and that each party is given a fair opportunity to present its case. As a preliminary note, the Panel notes that Respondent was given the full 20 days under paragraph 5 of the Rules within which to submit a Response. Further, the available Case File shows that the Written Notices sent to the addresses associated with Respondent were delivered within 4 and 5 days of the notification of Complaint. Finally, the Panel notes Complainant’s arguments that beginning in June 2020, Complainant’s counsel engaged in email communications with Respondent, to which Respondent would delay any further conversation, and then beginning the end of June 2020, Respondent ceased to answer Complainant’s counsel. Accordingly, the Panel finds that Respondent was given a fair opportunity within which to present its case or rebut Complainant’s assertions. Having failed to do so, the Panel will proceed with issuing the decision. B. Identical or Confusingly Similar Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the RIVIAN trademark through its United States registrations. With Complainant’s rights in the RIVIAN Mark established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the Top-Level Domain (“TLD”) in which each domain name is registered) are identical or confusingly similar to Complainant’s Mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and 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 disputed domain name. Id. Here, all three disputed domain names fully incorporate Complainant’s RIVIAN Mark. Furthermore, the inclusion of the descriptive terms “capital,” “financial”, and “leasing” in the disputed domain names does nothing to prevent a finding of confusing similarity under the first element. The RIVIAN mark is reproduced identically as the predominant element of each disputed domain name, and the addition of dictionary terms that relate to Complainant’s industry does not prevent a finding of confusing similarity. In this case, the nature of such additional terms supports the Panel’s findings under the third element as they increase the likelihood that Internet users would associate the disputed domain names with Complainant, as discussed in more detail below. WIPO Overview 3.0, section 1.8. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain names are confusingly similar to Complainant’s RIVIAN trademark. C. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name: (i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel finds that Complainant has made out a prima facie case. In particular, Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it has never authorized, licensed or permitted Respondent to use the RIVIAN Mark in any way. Respondent is also not using the disputed domain names in connection with any bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of the disputed domain names - they do not resolve to any active websites. Facebook, Inc. v. Mirza Azim, WIPO Case No. D2016-0950, citing KOC Holding A.S. v. VistaPrint Technologies Ltd, Domain Administrator, VistaPrint,WIPO Case No. D2015-1910; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320. Therefore, the Panel concludes that Respondent does not have rights or a legitimate interests in the disputed domain name within the meaning of Policy paragraph 4(a)(ii). D. Registered and Used in Bad Faith From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. Id. In this case, bad faith can be found in the registration and use of the disputed domain names. Complainant provided ample evidence to show the widespread use and several registrations of the RIVIAN Mark that predate Respondent’s registration of the disputed domain names. Therefore, Respondent was likely aware of the RIVIAN trademark when he registered the disputed domain names, or knew or should have known that they were identical or confusingly similar to Complainant’s Mark. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. This finding is bolstered by the fact that the disputed domain names contain descriptive industry terms related to the services provided by Complainant under its RIVIAN Mark. Furthermore, the passive holding doctrine applies in this case given the distinctiveness of Complainant’s Mark, Respondent’s failure to come forward with any evidence of a conceivable good faith use for the disputed domain names, Respondent’s concealment of his identity following contact by Complainant’s counsel, and the implausibility of any conceivable good faith basis to which the disputed domains could be put by Respondent. The Panel finds it more likely that Respondent selected the disputed domain names with the intention of taking advantage of Complainant’s reputation by registering domain names fully containing Complainant’s Mark with the intent to ultimately use the domain names for an illegitimate purpose, such as to attract Internet users to the online location for Respondent’s commercial gain. See e.g. Koc Holding A.S. VistaPrint Technologies Ltd.,WIPO Case No. D2015-0886; Madonna Ciccone, p/k/a Madonna v. Dan Parisi / "Madonna.com",WIPO Case No. D2000-0847). For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain names were in bad faith, pursuant to paragraph 4(b) 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 Brian J. Winterfeldt
Sole Panelist
Date: February 4, 2021
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