ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION LKQ Corporation v. Lola season Case No. D2024-2600 1. The Parties The Complainant is LKQ Corporation, United States of America (“United States”), represented by Irwin IP LLC, United States. The Respondent is Lola season, United States. 2. The Domain Name and Registrar The disputed domain name (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2024. On June 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 27, 2024, 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 (Redacted for Privacy, Domains by Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 4, 2024, 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 July 9, 2024. 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 July 10, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2024.
page 2 The Center appointed Lynda M. Braun as the sole panelist in this matter on August 16, 2024. 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 is a leading provider of alternative aftermarket, specialty salvage, and recycled auto parts used to repair and accessorize vehicles, with operations in the United States and other jurisdictions worldwide. The Complainant has been conducting business under its name and trademark since the mid to late 1990’s in the United States, and currently operates in 25 countries worldwide, employing more than 51,000 individuals at its 1,700 locations. The Complainant owns the following trademarks in the United States, registered with the United States Patent and Trademark Office (“USPTO”), including, but not limited to: LKQ, United States Trademark Registration No. 4,221,221, registered on October 9, 2012, in international class 35; LKQ CORPORATION (stylized), United States Trademark Registration No. 3,589,998, registered on March 17, 2009, in international class 35; LKQ TRIPLETT ASAP, United States Trademark Registration No. 5,620,067, registered on December 4, 2018, in international class 35; and LKQ INTOUCH, United States Trademark Registration No. 4,392,720 , registered on August 27, 2013, in international class 35 (hereinafter collectively referred to as the “LKQ Mark”.). The LKQ Mark has great value and represents the goodwill of the company. The Complainant owns the domain name , which resolves to its official website at “www.lkqcorp.com”. The Complainant has owned the domain name and resolving website since 1998. The Disputed Domain Name was registered on May 31, 2024, and initially resolved to an inactive landing page of the Registrar. As of the writing of this Decision, the Disputed Domain Name resolves to a landing page that states “[t]his site can’t be reached. llkqcorp.com’s server IP address could not be found”. The Respondent used the Disputed Domain Name to perpetuate a phishing scheme in which the Respondent configured the Disputed Domain Name for email functions and used the email address “[…]@llkqcorp.com” to impersonate two of the Complainant’s employees and send fraudulent emails and fabricated invoices to the Complainant’s customers, requesting payments with instructions to make payments to the Respondent’s bank account. The Complainant’s customers were thus led to believe that they were interacting with genuine representatives of the Complainant. In one such transaction, a customer was instructed to pay a significant amount of money to the Respondent’s bank account, and then, pursuant to additional email instructions, reversed the payment and resent it to another of the Respondent’s bank accounts at a different bank. Other of the Complainant’s customers have purportedly also been confused by this fraudulent email scheme. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name. Notably, the Complainant contends that: - the Disputed Domain Name is confusingly similar to the Complainant’s trademark because the Disputed Domain Name contains the LKQ Mark in its entirety, followed by the additional term “corp” (the abbreviation for “corporation”), and then followed by the generic Top-Level Domain (“gTLD”) “.com”, and thus does not prevent a finding of confusing similarity;
page 3 - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, among other things, the Complainant has not authorized the Respondent to register a domain name containing the LKQ Mark, the Respondent was not making a bona fide offering of goods or services through the Disputed Domain Name, and the Respondent was not commonly known by the LKQ Mark or any similar name; and - the Disputed Domain Name was registered and was used in bad faith because, among other things, the Respondent used the Disputed Domain Name to impersonate the Complainant’s employees and send fraudulent emails to the Complainant’s customers, requesting that they make payments to the Respondent’s bank account, though believing the payments were being sent to the Complainant’s account. The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not submit a formal reply to the Complainant’s contentions but courier records indicate that the Center’s written communication regarding notification of the Complaint was successfully delivered. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding: (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 was registered and is being used in bad faith. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires a two-fold inquiry: a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the LKQ Mark. It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the Disputed Domain Name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. It is uncontroverted that the Complainant has established rights in the LKQ Mark based on its years of use as well as its registered trademarks for the LKQ Mark in the United States. The consensus view is that “registration of a mark is prima facie evidence of validity”. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the LKQ Mark. The Disputed Domain Name consists of the LKQ Mark in its entirety, albeit misspelled with an extra letter “l” in the trademark, followed by the term “corp”, and then followed by the gTLD “.com”. The misspelling of “lkq” to “llkq” does not prevent a finding of confusing similarity to the LKQ Mark. See WIPO Overview 3.0, section 1.9 (“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”); see also Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator,
page 4 WIPO Case No. D2008-1302; Singapore Press Holdings Limited v. Leong Meng Yew, WIPO Case No. D2009-1080. It is well established that a domain name that wholly incorporates a trademark may be deemed confusingly similar to that trademark for purposes of the Policy despite the addition of other terms, as here. As stated in section 1.8 of WIPO Overview 3.0, “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. Thus, the mere addition of the term “corp” to the Complainant’s LKQ Mark in the Disputed Domain Name does not prevent a finding of confusing similarity. See e.g., Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; and Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923. Finally, the addition of a gTLD such as “.com” in a domain name is a technical requirement. Thus, it is well established that, as here, such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11.1. Thus, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s LKQ Mark. Based on the available record, the Panel finds that the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving that a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. In this case, given the facts as set out above, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its LKQ Mark. Nor does the Complainant have any type of business relationship with the Respondent. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any similar name, nor any evidence that the Respondent was using or making demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. See Policy, paragraph 4(c). Further, based on the Respondent’s use made of the Disputed Domain Name to impersonate two of the Complainant’s employees and configure emails to perpetuate a phishing scheme does not confer rights or legitimate interests on the Respondent. See WIPO Overview 3.0, section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”). See also CMA CGM v. Diana Smith, WIPO Case No. D2015-1774 (finding that the respondent had no rights or legitimate interests in the disputed domain name, holding that “such phishing scam cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name”). This is precisely what occurred here, where the Respondent sent fraudulent
page 5 emails created from the Disputed Domain Name to impersonate the Complainant and send emails and fabricated invoices to several of the Complainant’s customers, requesting payment. In sum, the Panel concludes that the Complainant has established an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Panel finds that the Respondent is using the Disputed Domain Name for commercial gain with the intent to mislead and defraud the Complainant’s customers by incorporating the Disputed Domain Name into fraudulent emails sent by the Respondent to those customers in the name of actual employees of the Complainant. Such use cannot conceivably constitute a bona fide offering of a product or service within the meaning of paragraph 4(c)(i) of the Policy. The Panel concludes that nothing on the record before it would support a finding that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. Based on the available record, the Panel finds that the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith. The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith registration and use of the Disputed Domain, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Panels have held that the use of a domain name for illegal activity constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds that the Respondent’s registration and use of the Disputed Domain Name constitutes bad faith under the Policy due to the Respondent’s use of an email phishing scheme in which the Respondent sent fraudulent emails and fabricated invoices to the Complainant’s customers, requesting payments to bank accounts controlled by the Respondent. See WIPO Overview 3.0, section 3.1.4 (use of a domain name for per se illegitimate activity such as phishing or impersonation/passing off is considered evidence of bad faith). See also Stichting BDO v. Contact Privacy Inc. Customer 7151571251/gregory Motto, WIPO Case No. D2022-2023 (finding the phishing scheme and use of an email address incorporating the disputed domain name to fraudulently obtain payment of invoices to be evidence of bad faith pursuant to paragraph 4(b)(iv) of the Policy for intentionally misleading and confusing the public into believing that the Respondent was associated and/or affiliated with the Complainant). Thus, the Panel concludes that the Respondent used the Disputed Domain Name as part of an illegal scheme to defraud the Complainant’s customers of significant sums of money. Such conduct demonstrates the Respondent’s bad faith and is precisely the conduct that the Policy aims to proscribe. The Panel also finds that the Respondent had actual knowledge of the Complainant and its rights in the LKQ Mark when registering the Disputed Domain Name, emblematic of bad faith registration and use. It strains credulity to believe that the Respondent did not know of the Complainant or its LKQ Mark when registering the Disputed Domain Name, as evidenced by the misspelling of the LKQ Mark used in the Disputed Domain Name. Thus, the Panel finds that in the present case, the Respondent had the Complainant’s LKQ Mark in mind when registering and using the Disputed Domain Name. Further, the Panel concludes that the Respondent’s registration of the Disputed Domain Name attempted to disrupt the Complainant’s business for commercial gain. See Newegg Inc. v. Nicole Alex and Alexander Ethan, WIPO Case No. D2019-2740 (registration of disputed domain names was likely to have been made in an attempt to receive commercial gain from their exploitation). The Panel additionally finds that the Respondent’s use of the Disputed Domain Name was also highly likely to confuse the Complainant’s
page 6 customers into incorrectly believing that the Respondent was authorized by or affiliated with the Complainant. Finally, the Disputed Domain Name contains a misspelling of the LKQ Mark in, which misspelling is evidence of bad faith registration and use. See Nutricia International BV v. Eric Starling, WIPO Case No. D2015-0773; see also ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 (“It is well-settled that the practice of typosquatting, of itself, is evidence of the bad faith registration of a domain name.”). Based on the available record, the Panel finds that the third element of the Policy has been established. 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. /Lynda M. Braun/ Lynda M. Braun Sole Panelist Date: August 30, 2024
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