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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Volvo Truck Corporation v. Richard Locke, Wholesale Drivetrain, Bradley Gilders

Case No. D2018-2219

1. The Parties

The Complainant is Volvo Truck Corporation of Göteborg, Sweden, represented by SILKA Law AB, Sweden.

The Respondents are Richard Locke of Winter Garden, Florida, United States of America (“United States”), Wholesale Drivetrain of Grand Rapids, Michigan, United States, and Bradley Gilders of Oakland, Florida, United States, self-represented (cumulatively referred to as the “Respondent”).

2. The Domain Names and Registrar

The Disputed Domain Names <discountmacktransmission.com>, <mackdifferential.com>, <mackdifferentials.com>, <mackdifferentialsupply.com>, <mackparts.biz>, <mackpto.com>, <macktransmission.com>, <macktransmissionexchange.com>, <macktransmissionpart.com>, <macktransmissionparts.net>, <macktransmissionwarehouse.com>, <macktrucktransmission.com>, <rebuiltmack.com>, <rebuiltmackdifferential.com>, <rebuiltmackdifferential.org>, <rebuiltmackdifferentials.org>, <rebuiltmack.net>, <rebuiltmacktransmission.net>, <rebuiltmacktransmission.org>, <rebuiltmacktransmissions.com>, and <rebuiltmacktransmissions.org> are registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2018. On October 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On October 1, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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 October 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2018. The Respondent submitted an informal email communication on October 12, 2018 but did not submit a formal response. Accordingly, the Center notified the Parties on November 2, 2018 that it would proceed to panel appointment.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on November 15, 2018. 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 manufacturer of heavy-duty trucks, engines and transmissions. It was founded in the year 1900 by Jack and Gus Mack in Brooklyn, New York, and was originally known as the Mack Brothers Company. In the year 1922 the Company adopted its present name, Mack Trucks Inc.

The Complainant is the owner of numerous trademark registrations in the United States and throughout the world for the term “Mack” and “Mack Trucks” including, among others:

- MACK TRUCKS, United States, Trademark No. 1274413, registered on April 17, 1984,

- MACK TRUCKS, United States, Trademark No. 1258633, registered on November 22, 1983 and,

- MACK, United States, Trademark No. 4325280, registered on April 23, 2013.

In addition, the Complainant through its subsidiary Volvo Trucks North America registered several domain names under the generic Top-Level Domains (“gTLDs”) and country-code Top Level Domains (“ccTLDs”), in order to connect to websites through which it informs potential customers about it services. Some of them are:

- <macktrucks.com> registered on May 8, 1995,
- <macktrucksparts.com> registered on August 17, 2005,
- <macktrucksglobal.com> registered on August 1, 2011,
- <mack-trucks.us> registered on December 14, 2006 and,
- <macktruck.com> registered on October 20, 1997.

The Respondent Richard Locke registered the following Disputed Domain Names:

- <rebuiltmacktransmission.net>, registered on June 16, 2011,
- <macktransmissionpart.com> registered on March 15, 2011,
- <macktransmissionparts.net>, registered on March 15, 2011,
- <rebuiltmacktransmissions.com>, registered on March 15, 2011,
- <macktransmissionwarehouse.com>, registered on February 12, 2012
- <macktransmissionexchange.com>, registered on December 1, 2011,
- <macktrucktransmission.com>, registered on December 16, 2011,
- <rebuiltmackdifferential.com>, registered on March 13, 2011,
- <rebuiltmack.com>, registered on August 10, 2011,
- <mackparts.biz>, registered on July 9, 2011,
- <mackdifferential.com>, registered on October 31, 2008,
- <mackdifferentials.com>, registered on January 10, 2012,
- <mackdifferentialsupply.com>, registered on April 30, 2011,
- <macktransmission.com>, registered on October 31, 2008, and
- <mackpto.com>, registered on August 23, 2013.

The Respondent Wholesale Drivetrain registered the following Disputed Domain Names:

- <rebuiltmackdifferential.org>, registered on March 15, 2013,
- <rebuiltmackdifferentials.org>, registered on March 15, 2013,
- <rebuiltmacktransmission.org>, registered on March 11, 2013,
- <rebuiltmacktransmissions.org>, registered on March 11, 2013, and,
- <rebuiltmack.net>, registered on March 3, 2013.

The Respondent Bradley Gilders registered the following Disputed Domain Name:

- <discountmacktransmission.com>, registered on December 5, 2013.

The Disputed Domain Names are currently inactive. However, the Complainant stated that some of the Disputed Domain Names were connected to websites where information was provided to potential consumers on how to replace or repair Mack transmissions. They also promoted brands of the Complainant’s competitors. Other Disputed Domain Names are redirected to <discountdrivetrainsupply.com> which is a domain name owned by one of the Respondents.

5. Parties’ Contentions

A. Complainant

Identical or confusingly similar

The Complainant alleges that the Disputed Domain Names fully incorporates the Complainant’s registered trademarks coupled with the generic terms “rebuilt”, “transmission(s)”, “part(s)”, “discount”, “differential(s)”, “supply”, “warehouse”, and “exchange”. The addition of these generic terms does not serve to remove the confusing similarity. Furthermore, these terms are connected to the Complainant’s business.

The addition of the gTLDs “.com”, “.org”, “.net” and “.biz” are irrelevant to determine the confusingly similarity between the trademarks and the Disputed Domain Names.

Rights or legitimate interests

The Complainant submits that the Respondent has no registered trademarks corresponding to the Disputed Domain Names and that it has not authorized the Respondent to use the trademark MACK and MACK TRUCK.

Moreover, the Respondent is not known by the MACK name but by the WhoIs information and other information, the Respondent is likely known under the name “WorldDriveTrainSupply.com” or “Wholesale Drivetrain”.

The Complainant states that there is no bona fide offering of goods or services for the following reasons:

First set of Disputed Domain Names:

<rebuiltmackdifferential.org>, <rebuiltmackdifferentials.org>, <rebuiltmacktransmissions.com>, <rebuiltmacktransmission.org>, <mackdifferentials.com>, <rebuiltmack.net>, <mackpto.com>, <mackdifferentialsupply.com>, <discountmacktransmission.com>.

These Disputed Domain Names are connected to websites in which they provide information to potential consumers on how to replace or repair Mack transmissions. Moreover, the Disputed Domain Names also promote other brands.

Second set of Disputed Domain Names:

<rebuiltmackdifferential.com>, <macktransmissionexchange.com>, <macktransmissionwarehouse.com>.

These Disputed Domain Names are redirected to <discountdrivertrainsupply.com>, a domain name owned by the Respondent. Under the heading of the website, the MACK logo is prominently displayed. Furthermore, under the tab “parts” the site provides information such as “we stock a full line of Marmon Herrington parts, as well as parts from FABCO, EATON, SPICER, MERITOR and ROCKWELL”. The Respondent is using these Disputed Domain Names in order to bait Internet users and then switch them to other goods.

Third set of Disputed Domain Names:

<rebuiltmacktransmission.net>, <macktransmission.com>, <macktransmissionpart.com>, <rebuiltmacktransmissions.com>, <rebuiltmack.com>, <mackparts.biz>, <mackdifferential.com>, <macktransmissionparts.net>.

These Disputed Domain Names are redirected to <tdtsupply.com>, which is owned by the Respondent. These Disputed Domain Names redirect users to a site that offers competing services.

Finally, the Respondent does not meet the Oki Data criteria. Thus the Respondent failed to demonstrate legitimate use of the Disputed Domain Names.

Registration and use in bad faith

The Complainant states that their trademarks predate the registration of the Disputed Domain Names.

Moreover, the Complainant couldn’t find that the Respondent had any register rights in the name “mack” or has become known under the name “mack”. It is evident that the Respondent is known under the name Wholesale Drivetrain LLC, which is the common name used on the majority of the Respondent websites.

Besides, the Respondent has engaged in a pattern of abusive registrations, due to the fact that the Respondent on separate occasions has registered trademark abusive domain names.

The Complainant tried to contact the Respondent in several opportunities in order to solve the matter amicably, but has failed to do so. The final attempt was on March 5, 2018 through a cease-and-desist letter. The failure of the Respondent to respond the cease-and-desist letter denotes the Respondent’s bad faith.

The Complainant’s trademarks are well known in the auto-motive industry. Thus it is unlikely that the Respondent was not aware of the rights of the Complainant at the time of the registrations. Due to this pattern of conduct it is evident that all of the registrations have been made in attempt to attract customers to their own company and to divert potential customers of the Complainant to competitors’ products.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

On October 12, 2018 the Center received an electronic communication from a person under the name Rick Lock stating that all the domain names listed are on auto renew and none of them are online.

6. Discussion and Findings

6.1. Preliminary Matter: Consolidation of multiple Respondents

Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states the following with respect to complaints consolidated against multiple respondents:“Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”. Paragraph10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.

The Complainant submitted a request for the consolidation of proceedings against multiple domain names. There was no answer from the Respondent.

In the instant case, the evidence shows that each of the Disputed Domain Names adopted a common structure with the following characteristics:

- Each of them consists of the Complainant’s trademark MACK coupled with a different generic term related to the industry of Complainant, such as “transmission”, “parts”, “rebuilt”, etc.

- The WhoIs record of each of the Disputed Domain Names shares the same electronic mail address.

- The phone numbers in the respective WhoIs records are identical.

- Moreover, all of the Disputed Domain Names are currently inactive.

- All the Disputed Domain names were registered with the same Registrar.

- Most of the Disputed Domain Names are redirected to websites owned by the Respondent Richard Locke.

Taken all of these common elements into consideration, the Panel finds that the Disputed Domain Names are subject to common control for the purposes of the Policy and therefore consolidation in one case make sense from the point of view of the Policy.

Consolidation will permit multiple domain name disputes arising from a common nucleus of facts and involving common legal issues to be heard and resolved in a single administrative proceeding. Doing so promotes the shared interests of the parties in avoiding unnecessary duplication of time, effort and expense, and generally furthers the fundamental objectives of the Policy. Doing so under the circumstances present here, in the Panel’s opinion, will not unfairly favor or prejudice any party (See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281).

The Respondent has not denied these assertions because of its default, thus the Panel allows the consolidation request.

6.2. Substantive Matters

Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Names at issue in this case:

(i) The Disputed Domain Names are 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 Names; and

(iii) the Disputed Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established its trademarks rights in MACK and MACK TRUCK as evidenced by the trademark registrations submitted with the Complaint, as mentioned above.

Based on the evidence submitted, the Panel considers that the Disputed Domain Names are confusingly similar to the Complainant’s trademarks MACK and MACK TRUCKS. The Complainant’s trademarks are clearly recognizable within the Disputed Domain Names. The Panel has no difficulty in finding that the Disputed Domain Names are confusingly similar to the trademarks MACK and MACK TRUCKS, as the addition of the descriptive terms does not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview 3.0.

Therefore, the Panel concludes that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Names:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue.

There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the trademarks in the Disputed Domain Names. Furthermore, the Respondent is not known by the Disputed Domain Names.

The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names. Instead, the Panel finds that the Respondent was using the Disputed Domain Names to disrupt the Complainant’s business and for improper commercial gain by using the Disputed Domain Names to sell competing products or to redirect to the Respondent’s business. Moreover, the Respondent registered the Disputed Domain Names between 2008 and 2013, long after the Complainant register its trademarks.

The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Names. Besides, it had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contentions.

As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.

The fact that the Disputed Domain Names are identical to the Complainant’s trademark, with the mere addition of generic terms that are connected to the Complainant’s business, establishes that the Respondent was aware of the Complainant’s trademarks when registering the Disputed Domain Names.

Moreover, most of the Disputed Domain Names redirected to a website of the Respondent where they also promoted competitors’ products. This is clear evidence that all of the registrations were made in order to attempt to attract Internet users to their own websites and to divert potential consumers of the Complainant to competitors’ products. This conduct confirms that the Respondent knew the Complainant and its trademarks rights, and that this is a clear case of use in bad faith according to paragraph 4(b)(iv) of the Policy.

In addition, the Complainant provided evidence that the Respondent has engaged in a pattern of abusive registrations since the Respondent registered several domain names which are closely connected to trademarks of the auto-industry.

The WIPO Overview 3.0 provides: “UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner. A pattern of abuse has also been found where the respondent registers, simultaneously or otherwise, multiple trademark-abusive domain names corresponding to the distinct marks of individual brand owners. Panels have however been reluctant to find a pattern of abuse where a single UDRP case merely contains two domain names registered simultaneously by the same respondent directed at a single complainant mark”.

Since in this case, the Respondent has registered twenty-one domain names incorporating the Complainant’s trademark, the Panel concludes that this constitutes bad faith registration and use of the domain names under paragraph 4(b)(ii) of the Policy.

Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and used the Disputed Domain Names in bad faith.

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 <discountmacktransmission.com>, <mackdifferential.com>, <mackdifferentials.com>, <mackdifferentialsupply.com>, <mackparts.biz>, <mackpto.com>, <macktransmission.com>, <macktransmissionexchange.com>, <macktransmissionpart.com>, <macktransmissionparts.net>, <macktransmissionwarehouse.com>, <macktrucktransmission.com>, <rebuiltmack.com>, <rebuiltmackdifferential.com>, <rebuiltmackdifferential.org>, <rebuiltmackdifferentials.org>, <rebuiltmack.net>, <rebuiltmacktransmission.net>, <rebuiltmacktransmission.org>, <rebuiltmacktransmissions.com>, and <rebuiltmacktransmissions.org> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: November 29, 2018

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