WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AutoVIN, Inc. v. PrivacyDotLink Customer 4074026/ Zhichao Yang
Case No. D2021-3151
1. The Parties
The Complainant is AutoVIN, Inc., United States of America (the “United States” or “US”), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is PrivacyDotLink Customer 4074026, Cayman Island / Zhichao Yang, China.
2. The Domain Name and Registrar
The disputed domain name <autovinlie.com> is registered with GoDaddy Online Services Cayman Islands Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2021. On September 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 24, 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 September 27, 2021 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 1, 2021.
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 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2021.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on November 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.
4. Factual Background
AutoVIN, the Automated Vehicle Information Network, is an industry-leading solution for trusted end-of-lease vehicle inspections, inventory verification, and facility standards audits. The Complainant is one of the largest provider of off-lease, field-based vehicle inspections services in North America.
The Complainant offers a wide array of third-party inspection programs, innovative technology solutions and data/analytics services.
The Complainant owns the AUTOVIN mark, which enjoys thorough protection through several registrations in the United States.
The Complainant is, inter alia, the owner of:
- US trademark registration number 3343249 for the AUTOVIN trademark, registered on November 27, 2007; and
- US trademark registration number 5072980 for the AUTOVIN (device) trademark, registered on November 1, 2016.
The Complainant also maintains a strong presence on the Internet via its domain names <autovin.com> (registered on March 27, 1998), <autovin.ca> (registered on January 26, 2005), and <autovinlive.com> (registered on August 5, 2015), as well as its website www.autovinlive.com.
The disputed domain name was registered on January 30, 2020.
The disputed domain name resolves to a website featuring links to third-party websites, some of which directly compete with the Complainant’s business.
5. Parties’ Contentions
The Complainant claims that:
(a) the disputed domain name is confusingly similar to the Complainant’s trademark;
(b) the Respondent lacks any rights or legitimate rights in the disputed domain name; and
(c) the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(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.
A. Identical or Confusingly Similar
The Complainant has established rights in the AUTOVIN trademark.
The disputed domain name consists of the AUTOVIN trademark combined with the term “lie” which in the circumstances seems to be a typo of “live” especially noting that the latter is used in one of the Complainant’s domain names (and there is no criticism site – which could be possible under “lie” but which would not affect standing here under the first element). This Panel agrees with the Complainant’s assertion that the additional term in the disputed domain name does not prevent a finding of confusing similarity between the Complainant’s trademark and the disputed domain name.
See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” Furthermore, the applicable Top-Level Domain “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent does not appear to be commonly known by the name “autovinlie” or by any similar name. Indeed, the Respondent has used a privacy shield service for the registration of the disputed domain name, and on the corresponding website there is no information about the Respondent’s identity; thus it appears that the Respondent might not be known under the “autovinlie” name. In addition, the Respondent’s name (as disclosed by the Registrar after the beginning of this proceeding) also does not resemble the disputed domain name in any way. The Respondent has no connection to or affiliation with the Complainant and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademarks. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. In fact, the disputed domain name resolves to a website featuring links to third-party websites, some of which directly compete with the Complainant’s business. Moreover, the Respondent has not replied to the Complainant’s contentions claiming any rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy
C. Registered and Used in Bad Faith
The Panel, based on the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain name was registered and has been used in bad faith.
Indeed, the Complainant gives several bases for its contention that the disputed domain name was registered and is being used in bad faith.
“autovin” is not a common or descriptive term, but a renowned trademark in its own sector.
The disputed domain name was registered several years after the Complainant’s trademarks were registered.
Therefore, it is more likely than not that the Respondent, when registering the disputed domain name, had knowledge of the Complainant’s earlier rights to the AUTOVIN trademark and trade name.
Having regard to the distinctiveness of the mark AUTOVIN, the Panel is of the view that Internet users would be misled by the disputed domain name into the expectation that they would reach a website operated by the Complainant.
Another factor supporting the conclusion of bad faith registration and use of the disputed domain name is given by the fact that the Respondent apparently provided incorrect, if not false, details regarding its contact references to the Registrar. In fact, it transpires that the couriered letter sent to the Respondent by the Center was not delivered for this reason.
The bad faith registration and use of the disputed domain name is also affirmed by the fact that the Respondent has not denied the assertions of bad faith made by the Complainant in this proceeding and the fact that the Panel is unable to determine any plausible good faith use to which the disputed domain name may be put.
Lastly, it appears that the Respondent has been engaged in numerous domain name disputes in the past, for having abusively registered and used disputed domain names corresponding to and/or containing third parties’ registered trademarks. This is evidence of the pattern of cybersquatting in which the Respondent is engaging.
Accordingly, the Panel finds, based on the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith. Therefore, the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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 <autovinlie.com> be transferred to the Complainant.
Date: November 10, 2021