WIPO Domain Name Decision D2025-4078 for myfleetfilters.com

ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Brian Schneider and FleetFilter LTD v. Ed Murcia, Application Associates Case No. D2025-4078 1. The Parties The Complainants are Brian Schneider, United States of America (“United States”), and FleetFilter LTD, United States, represented by Brian Schneider. 1 The Respondent is Ed Murcia, Application Associates, United States. 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2025. On October 8, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 2025, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which partly differed from the named Respondent (Ed Murcia) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 13, 2025, 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 October 15, 2025. 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 October 17, 2025. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 10, 2025. 1The Panel notes that the Complaint was filed by Brian Schneider, and the header of the Complaint included “FleetFilter LTD.”
page 2 The Center appointed W. Scott Blackmer as the sole panelist in this matter on November 19, 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. The Respondent submitted two supplemental filings by email on November 19, 2025. 4. Factual Background The Complaint was filed by Brian Schneider, a resident of the State of Texas, United States. The Complainant states that he is “the owner” of FleetFilter LTD, a limited partnership established under the laws of the State of Texas in 2004 and headquartered in Brenham, Texas. The Panel notes that Mr. Schneider is not represented by legal counsel in these proceedings. FleetFilter LTD holds the relevant trademark, United States Trademark Registration Number 6489433 (registered on September 21, 2021) for the word mark FLEETFILTER, in international class 35, used in connection with retail sales of automotive, heavy duty, and industrial oil filters, air filters, fuel filters, and coolant filters. Mr. Schneider appears in the online database of the Texas Comptroller as the registered agent of FleetFilter LTD. 2 Mr. Schneider is also listed in documents found in the online database of the United States Patent and Trademark Office (“USPTO”) as a partner in FleetFilter LTD. Accordingly, the Panel finds it appropriate to add FleetFilter LTD as a Complainant party in these proceedings, as the trademark owner of record sharing common interests in this issue with Mr. Schneider. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1. Mr. Schneider and FleetFilter LTD are referred to hereafter collectively as the “Complainant” unless otherwise indicated. The Complainant states that FleetFilter LTD has been selling vehicle and machinery filters under a FLEETFILTER mark since May 2005, when the Complainant’s website was launched at “www.fleetfilter.com”. This is consistent with screenshots archived by the Internet Archive’s Wayback Machine. The website was shared for several years with another partnership in which Brian Schneider was a partner, Brenham Auto Ltd, which first obtained a trademark registration for the FLEETFILTER word mark (United States Registration Number 3311612, registered on October 16, 2007, cancelled on May 23, 2014). This was ultimately replaced by the current registration mentioned above (Number 6489433) in the name of FleetFilter LTD. The disputed domain name was created on October 1, 2020, and is registered to the Respondent Ed Murcia, listing his organization as Application Associates, with a postal address in the State of New Jersey and a contact email address at […]@applicationassociates.com. The domain name resolves to the Application Associates website selling air vacuum and filtration products. The website says that Application Associates has been in business since 1976 and shows the same postal address in New Jersey given in the registration of the disputed domain name. The Panel notes that the online database of the New Jersey Division of Revenue and Enterprise Services has no listing for “Application Associates” as a registered business entity. The disputed domain name redirects to a website at “www.fleet-reliable-filters.com” headed “Application Associates” and “Fleetguard”, advertising FLEETGUARD branded filters and other filtration products available for purchase and shipping from Application Associates in New Jersey. The Complainant reports that it became aware of the Respondent’s use of the disputed domain name in April 2023 when the Complainant’s regular customers said they had been directed to the wrong website and did not find the filters they were seeking. The Complainant engaged a lawyer and sent a cease-and-desist letter to the Respondent to prevent further trademark infringement and demand transfer of the disputed domain name. The Complainant says that the Respondent replied by telephone in June 2023, and the Parties 2Noting the general powers of a panel articulated in paragraphs 10 and 12 of the Rules, it is commonly accepted that a panel may undertake limited factual research into matters of public record, as the Panel has done in these proceedings. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8.
page 3 agreed to a redirect of the disputed domain name to “www.fleet-reliable-filters.com”, which took place, and subsequently the transfer of the disputed domain name within a year, which did not occur. Since then, the Respondent has not replied to communications from the Complainant. 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 its registered FLEETFILTER mark, which the Respondent has no permission to use and which is not the Respondent’s name or a name that it uses in its branding. The Complainant asserts that the Respondent was aware of the Complainant and its long-standing FLEETFILTER mark in the same industry and attempted to create a similar domain name “as a means of poaching sales and commercial traffic from Complainant”. The Complainant points to actual customer confusion and to the 2023 agreement between the Parties, evidenced by emails, as tacit acknowledgement by the Respondent that the disputed domain name was too similar to the Complainant’s mark and needed to be replaced as a domain name used by the Respondent. B. Respondent The Respondent did not submit a formal reply to the Complainant’s contentions. In its second supplemental filing, the Respondent argued that “fleet” and “filters are descriptive terms not specific to the Complainant as a trademark holder and denied knowledge of the Complainant when registering the disputed domain name. The Respondent asserted that it has never hosted a website at the disputed domain name or offered it for sale to the Complainant but has a right to use it for the descriptive sense of the terms. 6. Discussion and Findings 6.1. Supplemental Filings The Rules provide for a Complaint and Response and do not contemplate supplemental filings. Paragraph 10 of the Rules gives the Panel “the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition”. Paragraph 12 provides that it is in the Panel’s sole discretion to request further statements or documents from the parties. Unsolicited filings are generally discouraged and tend to be permitted exceptionally where additional supporting evidence is required, a relevant claim has not been addressed, or fairness calls for an opportunity to respond to the opposing party. WIPO Overview 3.0, sections 4.6, 4.7. Here, the Respondent submitted no formal Response but sent two emails after the deadline for filing a Response. The first “clarified” the status of the disputed domain name: the Respondent stated that it was “dormant” and that the Respondent was willing to sell it. The second outlined substantive arguments, with no certification of accuracy and completeness as required by the Rules, and no word of explanation or excuse for not meeting the deadline for the Response or requesting even an automatic extension of time. The Panel finds no compelling reason to accept the Supplemental Filings for consideration in the proceedings.
page 4 6.2. Substantive Issues 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 3.0, section 1.7. The Complainant has shown rights in respect of a trademark or service mark (the registered FLEETFILTER word mark) for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the mark is recognizable within the disputed domain name, adding the plural “s” to “fleetfilter”. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, sections 1.7 and 1.9. Although the addition of other terms (here, the word “my”) may bear on assessment of the second and third elements, the Panel finds the addition of such a term 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. The Respondent uses the name “Application Associates”. On its face, there appears to be no reason to choose the disputed domain name incorporating the terms “fleetfilters” other than to create a false impression of affiliation with a competitor, which cannot be considered a legitimate or fair use. 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.
page 5 In the present case, the Panel notes that the Respondent registered the disputed domain name incorporating the mark of a direct online competitor, and it is highly unlikely that the Respondent in registering the disputed domain name was unaware of the Complainant’s long-established website using the very similar domain name . The Respondent registered the disputed domain name a few weeks after the Complainant applied for trademark registration of FLEETFILTER on August 5, 2020, and nearly a year before that trademark registration was granted on September 21, 2021. However, the Complainant had been using the mark since 20053 and the mark likely had acquired distinctiveness by the time of the disputed domain name registration fifteen years later. Indeed, Mr. Scheider’s other partnership had already registered FLEETFILTER as a trademark from 2007-2014, sharing the Complainant’s website during that time. The Panel finds on this record that the Respondent more probably than not registered the disputed domain name in 2020 with awareness of the Complainant and its FLEETFILTER mark (either due to the Complainant’s use of the mark since 2005 or anticipating the new registration of the trademark) and an intent to create confusion with that mark, in an effort to attract consumers to sites related to the Respondent. The Respondent has used the disputed domain name since to redirect to the Respondent’s websites selling directly competing products. The record shows that this effort at consumer confusion was at times successful, as customers contacted the Complainant with their concerns. The Respondent’s conduct is consistent with the example of bad faith outlined in the Policy, paragraph 4(b)(iv) (misdirecting Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trademark). 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. /W. Scott Blackmer/ W. Scott Blackmer Sole Panelist Date: December 1, 2025 3 As noted above, the Panel has visited the Complainant’s website archived by the Internet Archive’s Wayback Machine and it seemed to have been functional since 2005, including between 2014 and 2020.


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