Copart, Inc. v. Mariane Kaori / Vendas
Claim Number: FA1906001849837
Complainant is Copart, Inc. (“Complainant”), represented by Rob LeBlanc, Texas, USA. Respondent is Mariane Kaori / Vendas (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <copartdobrasil.com> registered with GoDaddy.com, LLC..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 26, 2019; the Forum received payment on June 26, 2019.
On June 27, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <copartdobrasil.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 1, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@copartdobrasil.com. Also on July 1, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 26, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is a publicly-traded company with a market capitalization of over $17 billion that is an industry leader of online vehicle auction and remarketing services with operations worldwide.
Complainant has rights in the COPART mark through its registration with the United States Patent and Trademark Office (“USPTO”). Complainant also has trademark registration in Brazil.
Respondent’s <copartdobrasil.com> domain name is identical or confusingly similar to Complainant’s COPART mark as the domain name incorporates Complainant’s COPART mark in its entirety, adding the geographic descriptor “do brasil” and “.com.” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <copartdobrasil.com> domain name as Respondent is not commonly known by the <copartdobrasil.com> domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Respondent fails to make a bona fide offering of goods or services or legitimate or noncommercial or fair use. Instead, Respondent is using the at-issue domain name to mislead the public into believing that the domain name is affiliated with Complainant. Respondent uses the domain name to offer online vehicle auction services which are identical to the services that Complainant offers. Respondent uses Complainant’s COPART mark and photographs on its domain name’s resolving webpage.
Respondent registered and used the <copartdobrasil.com> domain name in bad faith by offering similar services in hopes of diverting internet users away from Complainant’s legitimate website. Respondent uses the at-issue domain name to create confusion with the COPART mark and divert internet users from Complainant’s legitimate website to Respondent’s for commercial gain. Respondent uses Complainant’s COPART mark and offers similar services which shows actual knowledge of Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the COPART trademark through its registration of such mark with one or more national trademark registries.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the COPART trademark.
Respondent’s <copartdobrasil.com> website is used so that Respondent may pass itself off as Complainant and offer auction services that compete with those offered by Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its COPART trademark as well as a Brazilian national registration for such mark. Either registration is sufficient to demonstrate Complainant’s trademark rights in its COPART mark under Policy ¶ 4(a)(i). See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”).
Respondent’s <copartdobrasil.com> domain name contains Complainant’s COPART trademark followed by the generic geographic term “do brazil” less its space. The domain name concludes with the top-level domain name “.com”. Nevertheless, the differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the domain name from the Complainant’s COPART trademark for the purposes of Policy ¶ 4(a)(i). In fact, the included generic geographic term suggest a location where Complainant operates its business and thus only adds to any confusion between the domain name and Complainant’s trademark. Therefore, the Panel concludes that Respondent’s <copartdobrasil.com> domain name is confusingly similar to Complainant’s COPART trademark.See 3M Company v. OMAR MOTTA, FA 1604129 (Forum March 13, 2015) (finding that the addition of "dobrasil" and ".com" "[did] not diminish the similarity between the domain name and Complainant's mark."); see also, Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶ 4(a)(i) analysis.”); see also MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for <copartdobrasil.com>identifies the domain name’s registrant as “Mariane Kaori/ Vendas” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <copartdobrasil.com>domain name. The Panel therefore concludes that Respondent is not commonly known by the <copartdobrasil.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Additionally, Respondent uses the <copartdobrasil.com> domain name to pass itself off as Complainant in furtherance using Respondent’s <copartdobrasil.com>website to compete with services offered by Complainant. Respondent’s bogus website displays Complainant’s trademark and other intellectual property while it promotes services that directly compete with the online auto auction services offered by Complainant. Respondent’s use the of the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). Respondent’s attempt to pass itself off as Complainant by mimicking Complainant’s official website for commercial gain is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See BALENCIAGA SA v. ling lin, FA 1768542 (Forum Feb. 16, 2018) (“The disputed domain names incorporate Complainant's registered mark, and are being used for websites that prominently display Complainant's mark and logo, along with apparent images of Complainant's products, offering them for sale at discounted prices. The sites do not disclaim any connection with Complainant, and in fact seem to be designed to create an appearance of such a connection. Such use does not give rise to rights or legitimate interests.”); see also, General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Given the forgoing and absent any contrary evidence from Respondent, Complainant satisfies its initial burden and shows Respondent’s lack of rights and legitimate interests in the at-issue domain name under Policy ¶4(a)(ii).
The at-issue domain name was registered and was being used in bad faith. As discussed below, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and legitimate interests, Respondent uses the <copartdobrasil.com> domain name to host a website displaying Complainant’s trademark and other intellectual property and offering services similar to those offered by Complainant. Respondent thereby uses its confusingly similar domain name and related website to pass itself off as Complainant and commercially exploit Complainant’s goodwill. Using a confusingly similar domain name in such a manner is disruptive to Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (Finding bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv) where the respondent used the domain name to offer competing cryptocurrency products); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also, Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Furthermore, Respondent had actual knowledge of Complainant’s rights in the COPART mark when it registered <copartdobrasil.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark, from Respondent’s inclusion of a term suggesting one of Complainant’s business locations in the domain name, as well as from Respondent’s use of Complainant’s mark and related intellectual property on Respondent’s <copartdobrasil.com> website. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name independently shows bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <copartdobrasil.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 28, 2019
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