ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Doggett Company, LLC v. Hope Lee Case No. D2024-3590 1. The Parties The Complainant is Doggett Company, LLC, United States of America (“United States”), represented by Chamberlain, Hrdlicka, White, Williams & Aughtry, United States. The Respondent is Hope Lee, China. 2. The Domain Name and Registrar The disputed domain name is registered with Dynadot Inc (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2024. On September 6, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 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) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 11, 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 September 17, 2024. 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 September 20, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2024. The Center appointed Jeremy Speres as the sole panelist in this matter on October 16, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration
page 2 of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant, under its DOGGETT mark, operates dealerships selling construction and forestry equipment, material handling equipment such as forklifts, trucks and trailers, cranes, and automobiles. The Complainant owns the domain name , which was registered in 2004 and is used for the Complainant’s primary website. The Complainant has been using its DOGGETT mark in connection with automotive dealerships since at least 2017. Notably for this matter, the Complainant acquired a FORD automotive dealership in Houston, Texas, United Sates, in 2018, which it renamed DOGGETT FORD and has been operating ever since. The Complainant registered the domain name on February 9, 2018, for this business. The Complainant owns the following trademark registrations: - United States Registration No. 7526296 DOGGETT (word) in classes 12, 35, 36, 37, 39, and 42, registered on October 8, 2024, with the earliest claimed first use in commerce date being December 31, 2012, for class 12 goods; and - United States Registration No. 7526297 DOGGETT (stylised) in classes 12, 35, 36, 37, 39, and 42, registered on October 8, 2024, with the earliest claimed first use in commerce date being December 31, 2012, for class 12 goods. The disputed domain name was registered on May 10, 2018, and currently redirects to a website featuring pay-per-client (“PPC”) advertisements for, amongst others, FORD and other automotive dealerships. 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 Respondent registered the disputed domain name in bad faith with the Complainant in mind, in order to deceive Internet users into believing that the disputed domain name relates to the Complainant’s FORD dealerships. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.
page 3 The Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The entirety of the Complainant’s DOGGETT mark is reproduced within the disputed domain name, minus the final letter “t”. A domain name which consists of a common, obvious, or intentional misspelling of a trademark, as in this case, is considered by UDRP panels to be confusingly similar to the relevant mark for purposes of the first element. WIPO Overview 3.0, section 1.9. Although the addition of other terms may bear on assessment of the second and third elements, the Panel finds the addition of “ford” in this case does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds 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 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. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Use of a domain name to host PPC links does not represent a bona fide offering where such links compete with or capitalise on the reputation of the complainant’s mark, as in this case. WIPO Overview 3.0, section 2.9. Additionally, for the reasons discussed in relation to bad faith below, it is likely that the Respondent acquired the disputed domain name to take advantage of confusion with the Complainant’s mark. The Respondent’s acquisition and use of the disputed domain name in these circumstances cannot represent a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy and cannot confer rights or legitimate interests. Sistema de Ensino Poliedro Vestibulares Ltda., Editora Poliedro Ltda. v. Anonymize, Inc. / STANLEY PACE, WIPO Case No. D2022-1981. The Panel finds 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. For the following reasons, the Panel finds that it is more likely than not that the Respondent registered and has used the disputed domain name to take advantage of confusion with the Complainant’s mark for the Respondent’s commercial gain, falling squarely within paragraph 4(b)(iv) of the Policy. Although the Complainant's trademark registrations were lodged a few years after the disputed domain name was registered, it is clear that the Complainant’s DOGGETT mark had been in use and enjoyed considerable
page 4 goodwill well before registration of the disputed domain name, and that the Respondent intended to unfairly capitalize on such nascent rights. WIPO Overview 3.0, section 3.8.2. The disputed domain name has been used to advertise services competitive with or relating to those of the Complainant, which is a clear indicator of targeting for commercial gain. See Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753. Although the advertisements may be served programmatically by a third party, the Respondent cannot disclaim responsibility for them. WIPO Overview 3.0, section 3.5. The Complainant registered its domain name shortly before the disputed domain name was registered, and the Panel also notes that the domain name was registered years before the disputed domain name. Given the uniqueness of the second-level portion of the Complainant’s domain name and the near identity of the disputed domain name, it is unlikely that this was a mere coincidence, and the timing is clearly suggestive of cybersquatting aimed at taking advantage of typosquatting confusion with the Complainant’s own domain name which differs by one letter. Given that the Complainant’s acquisition of the relevant FORD dealership was publicized at the time, and the Complainant’s DOGGETT trademark was already in use at this time, it is likely that the Respondent registered the disputed domain name after having learnt of the Complainant’s acquisition. This is borne out by Internet searches for the second-level portion of the disputed domain name, as well as the second-level portion of the Complainant’s domain name , both of which return results overwhelmingly relating to the Complainant’s DOGGETT FORD dealership. The Panel has established that the Respondent has lost seven prior cases under the UDRP as respondent. See, e.g., Check Into Cash, Inc. v. Hope Lee, WIPO Case No. D2019-1316. The Respondent is a serial cybersquatter and this case appears to be a continuation of that pattern. The Respondent apparently supplied incomplete or false address details in the WhoIs record for the disputed domain name; the Center’s courier indicated that a “bad address” was supplied and that the Center’s correspondence could not be delivered to the Respondent. In the circumstances of this case, this suggests an attempt by the Respondent to evade pursuit. Kabushiki Kaisha Raibudoa v. Kubota, A, WIPO Case No. D2001-0817. The Panel draws an adverse inference from the Respondent’s failure to take part in the present proceeding where an explanation is certainly called for. WIPO Overview 3.0 at section 4.3. The Panel finds that the 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 be transferred to the Complainant. /Jeremy Speres/ Jeremy Speres Sole Panelist Date: October 24, 2024
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