WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

RockAuto LLC v. 刘营军 (Liu Ying Jun)

Case No. D2021-2640

1. The Parties

The Complainant is RockAuto LLC, United States of America (“United States”), internally represented.

The Respondent is 刘营军 (Liu Ying Jun), China.

2. The Domain Names and Registrars

The disputed domain name <rockauto.ltd> (the “Domain Name 1”) is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn). The disputed domain names <rockautopartsonlineparts.com> (the “Domain Name 2”) and <rockautopartsonlinestore.com> (“Domain Name 3”) are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. Both Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and Alibaba Cloud Computing (Beijing) Co., Ltd. are collectively referred to as the “Registrars”, and the Domain Names 1, 2, and 3 are collectively referred to as the “Domain Names”.

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2021. On August 13, 2021, the Center transmitted by email to the Registrars respectively a request for registrar verification in connection with the Domain Names. On August 16, 2021 and August 17, 2021, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details.

On August 23, 2021, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on August 23, 2021. The Respondent did not comment on the language of the proceeding.

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 in English and Chinese, and the proceedings commenced on September 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2021.

The Center appointed Karen Fong as the sole panelist in this matter on October 27, 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

The Complainant is an automobile parts supplier in the United States and provides these services under the trade mark ROCKAUTO. The Complainant first used this mark in commerce in 2000. The ROCKAUTO word mark is registered in the United States under Trade Mark Registration No. 5339980 in class 35 on November 21, 2017 (the “Trade Mark”). The Complainant’s website is at the domain name <rockauto.com>.

The Respondent, based in China registered the Domain Names on the dates below and the website content of the Domain Names are described below:

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names.

B. Respondent

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

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:

(i) The Domain Names are identical or confusingly similar to trade marks or service marks in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) The Domain Names were registered and is being used in bad faith.

B. Language of the Proceeding

The Rules, paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the Registration Agreements for the Domain Names is Chinese.

The Complainant submits that the language of the proceeding should be English mainly as the Websites are in English and the Complainant is fluent only in the English language.

In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.

The Panel accepts the Complainant’s submissions regarding the language of the proceeding. Although the Respondent has been notified in English and Chinese of the language of the proceeding and the Complaint, the Respondent has not challenged the Complainant’s language request and in fact has failed to file a Response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. In all the circumstances, the Panel determines that English be the language of the proceeding.

C. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has established that it has registered rights to the Trade Mark.

The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to establish if the domain name is identical or confusingly similar to the complainant’s trade mark. The trade mark would generally have to be recognizable within the domain name.

In this case the Domain Names all contain the Trade Mark with the Domain Name 1 containing the Trade Mark in its entirety whilst the Domain Name 2 has the additional descriptive words “parts online parts” and the Domain Name 3, “parts online store”. The addition of the descriptive words in the Domain Names 2 and 3 does not prevent a finding of confusing similarity because the Complainant’s Trade Mark is recognizable in the Domain Names 2 and 3. E.g., N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org, WIPO Case No. D2011-0260; Oakley, Inc. v. wu bingjie aka bingjie wu/Whois Privacy Protection Service, WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic, WIPO Case No. D2010-0207. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) which in the case of the Domain Name 1 is “.ltd” and for the Domain Names 2 and 3, “.com”. It is viewed as a standard registration requirement.

The Panel finds that the Domain Names are identical in the case of the Domain Name 1 and confusingly similar in the case of the Domain Names 2 and 3 to trade marks in which the Complainant has rights, and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

D. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or

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

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.

The Complainant contends that the Respondent is not commonly known by the Domain Names. It has not authorised, licensed or otherwise permitted the Respondent to use the Trade Mark in the Domain Names or for any other purpose.

The Panel finds that the Complainant has made out a prima facie case, a case calling for a reply from the Respondent. The fact that the Domain Names redirect to other third party websites selling competing goods is not bona fide or legitimate noncommercial or fair use of the Domain Names as this essentially operates as another version of pay-per-click by using another‘s trade mark for commercial gain.

The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.

E. Registered and Used in Bad Faith

To succeed under the Policy, the Complainant must show that the Domain Names have been registered and are being used in bad faith. It is a double requirement.

The Panel is satisfied that the Respondent was aware of the Trade Mark when it registered the Domain Names given the Trade Mark was registered prior to registration of the Domain Names, the addition of descriptive terms to the Trade Mark in the Domain Names 2 and 3 that describe the services offered by the Complainant and the fact that the Trade Mark appears prominently on the Websites. It is therefore implausible that the Respondent was unaware of the Complainant when it registered the Domain Names.

In the WIPO Overview 3.0, section 3.2.2 states as follows:

“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”

The fact that there is a clear absence of rights or legitimate interests coupled with the Respondent’s choice of the Domain Names without any explanation is also a significant factor to consider (as stated in section 3.2.1 of the WIPO Overview 3.0). The Domain Names fall into the category stated above and the Panel finds that registration is in bad faith.

The Panel also finds that the actual use of the Domain Names are in bad faith. The Websites operate as pay-per-click sites which have been set up for the commercial benefit of the Respondent. It is highly likely that Internet users when typing the Domain Names into their browser, or finding them through a search engine would have been looking for a site operated by the Complainant rather than the Respondent. The Domain Names are likely to confuse Internet users trying to find the Complainant’s official website. Such confusion will inevitably result due to the incorporation of the Trade Mark as the most prominent element of the Domain Names.

The Respondent employs the fame of the Trade Mark to mislead Internet users into visiting the Websites instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s Websites and the products sold on them are those of or authorised or endorsed by the Complainant. The Panel therefore also concludes that the Domain Names were registered and are being used in bad faith under paragraph 4(b)(iv) of the Policy.

The Panel therefore concludes that the Domain Names were registered and are being used 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 Domain Names <rockauto.ltd>, <rockautopartsonlineparts.com> and <rockautopartsonlinestore.com> be transferred to the Complainant.

Karen Fong
Sole Panelist
Date: November 4, 2021