ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION RockAuto LLC v. Kervin Beaubrun Case No. D2024-4119 1. The Parties The Complainant is RockAuto LLC, United States of America (“United States”), internally represented. The Respondent is Kervin Beaubrun, United States. 2. The Domain Name and Registrar The disputed domain name is registered with Squarespace Domains II LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2024. On October 8, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 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 October 9, 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 amendment to the Complaint and an amended Complaint on October 16, 2024, and October 21, 2024, respectively. The Center verified that the Complaint together with the amendment to the Complaint and 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 October 22, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 18, 2024.
page 2 The Center appointed William F. Hamilton as the sole panelist in this matter on November 21, 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 operates an online store that sells automotive parts throughout the United States. The Complainant’s website for its online business is located at the domain name . The Complainant owns United States Patent and Trademark Registration No. 5339980, dated November 21, 2017, for the trademark ROCKAUTO (the “Mark”) and United States Patent and Trademark Office Registration No. 78271460 for the trademark RA ROCKAUTO.COM, dated July 27, 2004 (collectively, “the trademarks”). The disputed domain name was registered on January 25, 2022, and resolves to a website called “R.Auto Parts” that purports to “sell auto parts online.” 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 identical to the ROCKAUTO mark. The Complainant further asserts that the disputed domain name is confusingly similar to RA ROCKAUTO.COM mark because the disputed domain name incorporates ROCKAUTO as its predominant term. The Complainant contends that the Complainant has never authorized the Respondent to use the disputed domain name, that the Respondent is not generally known by the disputed domain name, has never operated a business under the disputed domain name, has not advertised the disputed domain name, and has never engaged in any bona fide commercial activity in connection with the disputed domain name. The Complainant contends that the Respondent has no rights or legitimate interests in the Complainant’s trademarks and has registered and used the disputed domain name in bad faith to unfairly compete with the Complainant and otherwise disrupt the Complainant’s business. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under 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.
page 3 A. Identical or Confusingly Similar The Complainant has shown rights in the trademarks for the purposes of the Policy by virtue of the trademarks’ subsisting registrations with the United States Patent and Trademark Office. 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 disputed domain name incorporates the trademark ROCKAUTO in its entirety. The disputed domain name prominently features the ROCKAUTO component of the Complainant’s trademark RA ROCKAUTO.COM. Previous UDRP panels have consistently found that adopting a trademark in its entirely or merely adding additional minor terms to a registered trademark results in confusing similarity. Accordingly, the Panel finds disputed domain name is identical to the Complainant’s trademark ROCKAUTO and confusingly similar to the Complainant’s mark RA ROCKAUTO.COM for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The generic Top-Level Domain (“gTLD”) of the disputed domain name, in this case “.computer”, may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. WIPO Overview 3.0, section 1.11.1. 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. 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 this showing and has not provided evidence of any of the circumstances set forth in paragraph 4(c) of the Policy. The Panel finds that the Respondent has used the disputed domain name to compete with the Complainant in offering online auto parts. The offering of competing products under the disputed domain name does not establish any rights or legitimate interests of the Respondent in the disputed domain name. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith Under paragraph 4(b) of the Policy, bad faith may be established by any one of the following non-exhaustive 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
page 4 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 online 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 Respondent registered the disputed domain name years after the Complainant’s trademark registrations. Given the Complainant’s long use of the trademarks and the Respondent’s use of the disputed domain name to offer the competing sale of automobile parts, the Panel finds it implausible that the Respondent was unaware of the Complainant’s rights when registering the disputed domain name. The Respondent attempts to create confusion for commercial gain by using the Complainant’s trademarks in composing the disputed domain name, offering competing online auto parts sales, and creating a website that falsely appears to be associated with the Complainant by prominently featuring in its name “R.Auto Parts” on the website by featuring the letter “R” which the Panel finds intentionally duplicates the beginning letter of the Complainant’s RA ROCKAUTO.COM trademark to further confuse Internet users reaching on the Respondent’s website after being confused by the disputed domain name. By using the disputed domain name to offer online auto parts, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademarks as to source, sponsorship, affiliation, or endorsement. This constitutes evidence of registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. 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. /William F. Hamilton/ William F. Hamilton Sole Panelist Date: December 3, 2024
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