The Complainant is American Auto Guardian, LLC, United States of America (“United States”), represented by Latimer LeVay Fyock LLC, United States.
The Respondent is Proxy Protection LLC, United States / Anthony Hodel, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2021. On December 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 2021, 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 the Complainant on December 23, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 28, 2022.
The Center verified that the Complaint together with the amended 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 December 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2022. This date was extended until January 23, 2022, upon request from the Respondent. The Respondent did not submit any formal response. However, the Center received several informal communications from the Respondent, or an entity related to the Respondent, between December 23, 2021 and January 19, 2022. Accordingly, the Center notified the Commencement of Panel Appointment Process on January 25, 2022.
The Center appointed William F. Hamilton as the sole panelist in this matter on January 28, 2022. 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 BackgroundSince 1999, the Complainant has sold and administered vehicle service contracts and related services such as warranty services and roadside assistance.
The Complainant owns various trademark registrations incorporating the mark AUTOGUARD (the “Mark”), including Registration No. 2,637,875 with the United States Patent and Trademark Office for the mark AUTOGUARD, registered on October 22, 2002.
The disputed domain name was registered on October 3, 2020, and, according to the evidence submitted with the Complaint, resolved to a website offering similar services as the Complainant, namely automotive insurances and related services.
The concerned Registrar has confirmed the registrant of the disputed domain name is “Anthony Hodel”. The Complainant has provided evidence of communications and agreements between the Complainant and the entity apparently associated with the operation of the disputed domain name, namely “AutoGuard, LLC” (the “related entity”). While the exact nature of the relationship between Anthony Hodel and related entity is unclear, the two are clearly affiliated or related entities upon the evidence before the Panel. The Panel notes that the Respondent is defined in the Rules as the “holder of a domain-name registration against which a complaint is initiated”. Accordingly, for the purposes of this proceeding the Panel considers the Respondent to be Anthony Hodel, although the Panel has evaluated the registration and use of the disputed domain name considering the apparent relationship with the related entity.
On April 23, 2021, the Complainant sent a letter to the related entity demanding “discontinuance” of the disputed domain name. On June 18, 2021, the related entity replied stating, “We will not be transferring. We will simply let it expire.” The Complainant and related entity then entered into a written agreement in June 2021, that provided that the related entity would cease any use of the Mark and disputed domain name, and not renew the registration of the disputed domain name. The related entity nonetheless continued to use the disputed domain name after the agreed upon discontinuance date of September 1, 2021, and stated on December 14, 2021, that the disputed domain name would be transferred when “our migration is completely done”.
The disputed domain name does not currently resolve to an active website.
5. Parties’ Contentions A. ComplainantThe Complainant asserts the disputed domain name is confusingly similar to the Mark because the disputed domain name is composed by attaching the words “service” and “contract” as a combined suffix to the Complainant’s Mark.
The Complainant asserts that the Complainant never authorized the Respondent to use the disputed domain name, that the Respondent is not generally known by the disputed domain name, and that the Respondent has never engaged in any bona fide commercial activity in connection with the disputed domain name.
The Complainant asserts that the disputed domain name was registered and used to disrupt the Complainant’s business and to confuse, mislead, and misdirect Internet users who are seeking the Complainant’s website and services.
B. RespondentThe Respondent, and related entity, did not reply to the Complainant’s contentions in their informal communications and did not submit a formal Response.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and,
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Panel finds that the disputed domain name is confusingly similar to the Complainant’s Mark.
The disputed domain name is composed entirely of the Complainant’s Mark and the additional terms “service” and “contracts” serving as a combined suffix. A domain name which wholly incorporates a complainant’s registered mark is sufficient to establish confusingly similarity for the purposes of the Policy when, as here, the Mark is a clearly recognizable in the disputed domain name, notwithstanding the addition of terms used as a suffix appended to the Mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographic, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”); Regeneron Pharmaceuticals, Inc. v. Registration Private, Domains by Proxy, LLC / Regeneron Careers,WIPO Case No. D2017-0013; Bombas LLC v. Domain Administrator, See PrivacyGuardian.org / Maryellen J Dillard, Maryellen Dillard,WIPO Case No. D2021-0609.
The generic Top-Level Domain (“gTLD”) of the disputed domain name, in this case “.com”, may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1.
The Complainant has met its burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain name or the Mark. The Respondent is not affiliated with the Complainant and does not have any business relationship with the Complainant. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name. See Compagnie de Saint Gobain v. Com-Union Corp.,WIPO Case No. D2000-0020.
The Respondent, Anthony Hodel, does not appear to be commonly known by the disputed domain name or a name corresponding to the disputed domain name. However, as discussed above, the Respondent appears affiliated with or related to the related entity, “AutoGuard, LLC”. For completeness, the Panel notes that even if the related entity were considered to be the Respondent, the related entity does not have rights or legitimate interests in the disputed domain name for the purposes of the Policy. In particular, the Panel notes the related entity entered into an agreement with the Complainant in 2021, as evidenced in the Complaint and not denied by the related entity, to cease all use of the “AutoGuard” name and the Mark.
The Complainant has thus established a prima facie case in its favor, which shifts the burden of production on this point to the Respondent. The Respondent, however, has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain name.
The nature of the disputed domain name which prominently incorporates the Mark in its entirety, in addition to the words “service” and “contracts” which are related to the Complainant’s business, carries a risk of implied affiliation, especially in the instant case where the Respondent was offering similar insurance services. See WIPO Overview 3.0, section 2.5.1
The facts and circumstances presented to the Panel demonstrate that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithUnder paragraph 4(b) of the Policy, bad faith may be established by any one of the following scenarios:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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; or
(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 its website or other on-line 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.
The Panel finds the disputed domain name was registered and is being used in bad faith.
A simple Internet search, normally undertaken before registering a domain name, would have disclosed the Complainant’s Mark. The Panel finds it more likely than not that the Respondent was aware of the Complainant’s Mark when registering the disputed domain name especially when the Respondent conducts its business in the same industry as the Complainant. Indeed, the above-described conduct which involved an initial agreement to discontinue use of the disputed domain name followed by delays, implausible excuses, and non-performance supports the finding of bad faith registration and use.
In addition, the Panel notes the longstanding use of the Complainant’s trademark, as well as the registration of the Complainant’s trademark 18 years prior to the registration of the disputed domain name, and finds that although the related entity appears to have been using the name “AutoGuard, LLC”, from the evidence before the Panel, it appears more likely than not that the registration and use of the disputed domain name was intended to take advantage of the significance of the term “autoguard” as the Complainant’s Mark.
Moreover, noting the composition of the disputed domain name, it is difficult to conceive of any use that the Respondent might make of the disputed domain name without the Complainant’s consent that would not involve bad faith. See, e.g., Telstra Corporation Limited v. Nuclear Marshmellows,WIPO Case No. D2000-0003; Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909; DPDgroup International Services GmbH & Co. KG v. Wise One, Wilson TECH,WIPO Case No. D2021-0109; Monster Energy Company v. PrivacyDotLink Customer 116709 / Ferdinand Nikolaus Kronschnabl,WIPO Case No. D2016-1335. Indeed, the Respondent’s website initially offered insurance services similar to the services offered by the Complainant. There can be little doubt that the Respondent registered and used the disputed domain name for commercial gain in bad faith to confuse Internet users.
The current passive holding of the disputed domain name does not absolve the Respondent of bad faith registration and use, and, in fact, under the circumstances of this case, supports a finding of bad faith registration and use. See WIPO Overview 3.0, section 3.3; see also, Medtronic, Inv. v. Roohi B Rasheed, Roohi B Rasheed,WIPO Case No. D2020-1161.
The Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
William F. Hamilton
Sole Panelist
Date: February 11, 2022