ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Rarestep, Inc. DBA Fleetio v. Lara Jones, fleetio, and John Mike, fleetio Case No. D2024-4822 1. The Parties Complainant is Rarestep, Inc. DBA Fleetio, United States of America (“United States”), represented by Jackson Walker, LLP, United States. Respondents are Lara Jones, fleetio, United States, and John Mike, fleetio, United States. 2. The Domain Names and Registrar The disputed domain names , , are registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2024. On November 22, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 22, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to Complainant on November 22, 2024, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar, requesting Complainant to either file separate complaints for the disputed domain names associated with each of the different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. Complainant filed an amended Complaint on November 25, 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”).
page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondents of the Complaint, and the proceedings commenced on November 28, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 18, 2024. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on December 19, 2024. The Center appointed Timothy D. Casey as the sole panelist in this matter on January 2, 2025. 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 a vehicle fleet management software and solutions company based in Alabama, United States. Complainant has operated since 2012 under the name Fleetio and is used by thousands of users to manage hundreds of thousands of vehicles, equipment, parts, drivers and other items. Complainant has registrations for trademarks including FLEETIO in the United States (the “FLEETIO Marks”) as follows: Mark Jurisdiction Class(es) Registration No. Registration Date FLEETIO United States 9, 42 5,860,104 September 17, 2019 FLEETIO and Design United States 9, 42 7,475,143 August 13, 2024 FLEETIO GO United States 9 7,499,389 September 10, 2024 Complainant is also the owner of the domain name , where it advertises is services under the FLEETIO Marks. The disputed domain names , , were registered October 14, 2024, October 15, 2024 and November 11, 2024, respectively. At the time of filing of the amended Complaint, the disputed domain name did not resolve to a website, but the disputed domain name resolved to a website marketing pay-per-click (“PPC”) links for commercial trucking insurance companies, fleet managers, and fleet manager systems, while the disputed domain name resolved to a website marketing PPC links for fleet managers, fleet manager systems, and freight broker carrier packets. Complainant provided evidence indicating that each of the disputed domain names was utilized in emails and other documentation related to an employment recruiting scheme which impersonated Complainant and multiple employees of Complainant. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names. Notably, Complainant contends that it has rights in the FLEETIO Marks, as evidenced herein, which it has used at least since 2012, and that the disputed domain names are identical or confusingly similar to the FLEETIO Marks because the disputed domain names incorporate the “fleetio” portion of the FLEETIO Marks in its entirety and are clearly recognizable in the disputed domain names. Complainant contends that the generic Top-Level Domains (“gTLD”) should be disregarded for purposes of determining confusing similarity.
page 3 Complainant contends that Respondents lack rights or legitimate interests in the disputed domain names because: (1) the disputed domain names are identical or confusingly similar to the FLEETIO Marks and an unauthorized party cannot claim a legitimate interest in such because Respondents’ activities cannot constitute a bona fide offering of goods or services; (2) the disputed domain names were only recently registered in order to intentionally trade on the fame of Complainant and therefore cannot constitute a bona fide offering of goods or services; (3) Respondents have not registered trademarks or trade names corresponding to the disputed domain names, they are not licensed by Complainant, and have not been authorized to make any use of the FLEETIO Marks; (4) Respondents cannot invoke any circumstances set out in paragraph 4(c) of the Policy to demonstrate rights or legitimate interests in the disputed domain names; (5) Respondents are precluded from claiming a right or legitimate interest in the disputed domain names as they were on notice of the FLEETIO Marks before any use of or preparation to use the disputed domain names; (6) Respondents cannot claim to be commonly known by the disputed domain names; and (7) Respondents’ use of the disputed domain names in a phishing or impersonation/passing off scam is not a legitimate noncommercial or fair use. Complainant contends that Respondents’ registration of the disputed domain names was in bad faith. Complainant contends that the FLEETIO Marks have been used by Complainant since 2012, have been registered as trademarks in the United States, and Complainant’s registrations pre-date Respondents’ use and registration of the disputed domain names. Complainant contends that Respondents’ use of the disputed domain names to impersonate Complainant and Complainant’s employees through a fraudulent email phishing scheme constitutes bad faith use. Complainant further contends that Respondent has used the disputed domain names to cause confusion and perpetuate a fraud, this demonstrates registration and use in bad faith to intentionally attempt to attract Internet users to Respondents’ websites for commercial gain. Lastly, Complainant contends that Respondents’ use of a privacy shield to protect their identify contributes to the accumulation of elements pointing to bad faith registration and use. B. Respondents Respondents did not reply to Complainant’s contentions. 6. Discussion and Findings Consolidation: Multiple Respondents The amended Complaint was filed in relation to nominally different domain name registrants. Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. Complainant requests the consolidation of the disputes against multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules. Respondents did not comment on Complainant’s request. Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. In addressing Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. As regards common control, the Panel notes that: (1) Respondent Lara Jones and Respondent John Mike use an identical street address and phone number; (2) Respondent Lara Jones and Respondent John Mike both falsely listed “fleetio” as the registrant organization in the registration details of the disputed domain
page 4 names; (3) Respondent Lara Jones and Respondent John Mike both used the same Registrar and privacy service to register the disputed domain names; (4) the disputed domain names were registered closely in time, two within a day of each other and the third only a few weeks later; (5) the disputed domain names target the same trademark and follow the same composition pattern, only changing the gTLD (“.site”, “.help”, “.online”); and (6) the disputed domain names were each used in an employment recruiting scam impersonating the same employees of Complainant. As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party. Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “Respondent”) in a single proceeding. 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 Complainant’s trademarks and the disputed domain names. WIPO Overview 3.0, section 1.7. 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. The Panel finds the disputed domain names are identical to the mark FLEETIO for the purposes of the Policy. WIPO Overview 3.0, section 1.7. 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 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 Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise. Panels have held that the use of a domain name for illegal activity, here claimed phishing and impersonation, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The Panel finds the second element of the Policy has been established.
page 5 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. In the present case, the Panel notes that Respondent clearly knew of the FLEETIO Marks prior to registration of the disputed domain names as evidenced by Respondent’s inclusion of “fleetio” as the registrant organization identified in the registration details of the disputed domain names and use of each of the disputed domain names in an impersonation/passing off scam (for one of the disputed domain names, immediately after registration) designed to phish information from prospective employees of Complainant. The Panel finds that such use clearly affirms Respondent’s intention to attract, for commercial gain, Internet users to its websites or other online location by creating a likelihood of confusion with Complainant’s marks. 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, 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, here claimed phishing and impersonation/passing off constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds Respondent’s registration and use of the disputed domain names constitutes bad faith under the Policy. The Panel finds that 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 names , , and be transferred to Complainant. /Timothy D. Casey/ Timothy D. Casey Sole Panelist Date: January 16, 2025
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