WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Rivian IP Holdings, LLC v. Perfect Privacy, LLC / Kelvin Jung

Case No. D2020-3304

1. The Parties

The Complainant is Rivian IP Holdings, LLC, United States of America (“United States”), represented by Coates IP, United States of America.

The Respondent is Kelvin Jung, United States.

2. The Domain Name and Registrar

The disputed domain name <rivianadventure.com> is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2020. On December 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 8, 2021, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on December 11, 2020 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 December 15, 2020.

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 December 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 13, 2021. The Response was filed with the Center on January 12, 2021.

The Center appointed Evan D. Brown as the sole panelist in this matter on February 3, 2021. 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.

On February 19, 2021, the Panel issued an Administrative Panel Order requesting the Respondent provide additional evidence concerning the purchase of web hosting associated with the disputed domain name, the website itself, and certain social media content from 2018 relating to the use of the disputed domain name. The Order likewise permitted the Complainant with time to respond to any additional information provided by the Respondent.

On February 24, 2021, the Respondent provided additional information, and the Complainant replied thereto on March 3, 2021. Each of the parties provided further information that same day through additional email messages to the Center.

4. Factual Background

The Complainant is an electric automobile manufacturer and technology company. In November 2018, it publicly debuted what it calls the "world's first electric adventure vehicles". The Complainant owns a number of trademark registrations for the mark RIVIAN, including U.S. Reg. No. 6,075,546, registered on June 9, 2020.

The Respondent registered the disputed domain name on November 27, 2018. It claims to have registered the disputed domain name (and the similar domain name <rivianadventures.com>) for a blog or forum site for enthusiasts of the Complainant’s vehicles. As of the date of the filing of the Complaint, the disputed domain name resolves to a landing page provided by a web hosting company.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. The Complainant has submitted evidence in the form of correspondence with a domain name brokerage that the Respondent has listed the similar domain name <rivianadventures.com> for sale. The Complainant also submitted evidence that the Respondent used false contact information to register the disputed domain name (e.g., an email address using a domain name that does not exist).

B. Respondent

The Respondent identifies itself as a fan of the Complainant's company, and claims to have registered the disputed domain name to create a blog or forum for other fans of the Complainant’s products. The Respondent asserts that it purchased website hosting services for the project via Wix. In the January 12 Response, the Respondent asserts that a website was designed and created. In the March 3 additional response, the Respondent states that “Website design was never completed on Wix”.

At around the same time that the disputed domain name was registered, in November 2018, the Respondent established the Twitter handle @rivianadvs, to support the anticipated website. It appears that only one tweet has been published from this account, one dated November 27, 2018, directed to the account of @rjscaringe, the CEO of the Complainant. The tweet reads as follows:

@RJScaringe RJ, my name is KJ and I'm starting a new community for Rivian fans called Rivian Adventures. With the release of the R1T details, I was wondering if you would be open to answering some questions. Pretty pumped about these awesome new trucks.

Around this time the Respondent also sent a Facebook message to the Complainant, stating the following:

We are starting a new fan community for Rivian and was wondering if we could submit some questions for one of the execs to answer. The new Rivian Community is at www.rivianadeventures.com.

The Respondent asserts that it never provided false information, and that all information used to register the disputed domain name was accurate. It claims that it never set up a website at the disputed domain name. In any event, the Respondent claims, the website was never meant to be income generating but rather a common place for supporters of the Complainant. The Respondent claims that it never offered the disputed domain name for sale.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied, namely, that:

(i) the disputed domain name is 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 name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The Panel finds that the Complainant has established all three of these elements.

A. Identical or Confusingly Similar

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See, Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the RIVIAN mark by providing evidence of its trademark registrations. The disputed domain name incorporates the RIVIAN mark in its entirety. This is sufficient for showing confusing similarity under the Policy. The Panel finds that the Complainant has established this first element under the Policy.

B. Rights or Legitimate Interests

The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent.

On this point, the Complainant asserts, among other things, that: (a) the Respondent has no rights in Complainant’s RIVIAN trademark, prior or subsequent, and provides no bona fide goods or services under the RIVIAN mark in commerce, (b) the Respondent is not commonly known by the disputed domain name and has acquired no trademark or service mark rights in the term, and (c) the Respondent’s opportunistic registration and failure to provide accurate WhoIs information is evidence that the Respondent has no rights or legitimate interests in respect to the disputed domain name.

The Respondent principally argues that it had plans to use the disputed domain name for a bona fide offering of services, namely a blog or fan site for enthusiasts of the Complainant’s products. The Respondent asserts that it is such a fan, claiming to have pre-ordered an electric vehicle from the Complainant (but providing no supporting documentation of such assertion). Additionally, the Respondent claims that its plans for the disputed domain name were not motivated by profit: “[t]he website was never meant to be income generating”.

Paragraph 4(c)(i) of the Policy provides that a Respondent can prove rights or legitimate interests in respect of a disputed domain name by showing “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”.

WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides the following at section 2.2:

[D]emonstrable preparations to use the domain name, in connection with a bona fide offering of goods or services may include: (i) evidence of business formation-related due diligence/legal advice/correspondence, (ii) evidence of credible investment in website development or promotional materials such as advertising, letterhead, or business cards (iii) proof of a genuine (i.e., not pretextual) business plan utilizing the domain name, and credible signs of pursuit of the business plan, (iv) bona fide registration and use of related domain names, and (v) other evidence generally pointing to a lack of indicia of cybersquatting intent. While such indicia are assessed pragmatically in light of the case circumstances, clear contemporaneous evidence of bona fide pre-complaint preparations is required.

Additionally, “the passage of time may be relevant in assessing whether purported demonstrable preparations are bona fide or pretextual.” Id. And “[i]f not independently verifiable by the panel, claimed examples of use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services cannot be merely self-serving but should be inherently credible and supported by relevant pre-complaint evidence.” Id.

The social media communications directed to the Complainant in November 2018 indicate the Respondent’s intentions at that time to develop a blog or fan site for Rivian enthusiasts. But the Panel finds that evidence to be too scant to show demonstrable preparations as required under the Policy.

The Respondent (even after being given a second opportunity, in response to the Administrative Panel Order) could have, but did not, produce correspondence or other documentation relating to its purported activities in November 2018 to launch a Rivan fan blog. Its assertions about website development efforts in 2018 are contradictory (it seems to assert both that a site was developed and not developed) and are not supported by any evidence other than the Respondent’s self-serving statements. When asked for such evidence, the Respondent provided a Wix receipt from 2021, well after the relevant time period. And the evidence of the registration of the related domain name <rivianadventures.com> is not helpful in showing demonstrable preparations for the use of the disputed domain name. The fact that some two and a half years have passed since registration of the disputed domain name, without any site development, tends to undermine what on its face at least could support a right or legitimate interest.

As regards the offer to sell the disputed domain name, the Respondent protests that this is the case. The Complainant seeks to introduce evidence of a shopping cart (presumably not completed) listing the disputed domain name for sale, and an email from a broker stating that “We are brokering this domain on behalf of the owner.” Both of these Complainant-produced items however post-date the filing of the Complaint. The Panel is willing to entertain that the printout of the shopping cart page could be merely dated when printed; the email from the broker on the other hand is dated from the broker on February 25, 2021. Ultimately, while the Panel is unable to conclude that these items are sufficiently probative to undermine the Respondent’s claim not to have offered the disputed domain name for sale, the case does not hang on this point alone.

The Panel finds that the Complainant has established, prima facie, that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent has not overcome that showing. Accordingly, the Complainant has succeeded on this second element of the Policy.

C. Registered and Used in Bad Faith

The Complainant asserts principally that the Respondent registered the disputed domain name to prevent the Complainant from registering it, and that the passive holding of the disputed domain name is bad faith use. There is no question – and the Respondent confirms – that the Respondent targeted the Complainant when it registered the disputed domain name. This supports bad faith registration. And bad faith use is shown from the passive holding of the disputed domain name in these circumstances, where the Complainant enjoys a strong reputation in its mark resulting from its marketing and branding efforts, the failure of the Respondent to provide credible evidence of contemplated good-faith use (as discussed above), and the Respondent's provision of false contact details (e.g., a fake email address). Accordingly, the Panel finds that the Complainant has satisfied this third Policy element.

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 <rivianadventure.com> be transferred to the Complainant.

Evan D. Brown
Sole Panelist
Date: April 11, 2021