THE TIRE RACK, INC. v. liu ying jun
Claim Number: FA2106001949192
Complainant is THE TIRE RACK, INC. (“Complainant”), represented by David A.W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is liu ying jun (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue are <tirerack.store> and <tireracktires.com>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 1, 2021; the Forum received payment on June 1, 2021.
On June 3, 2021, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <tirerack.store> and <tireracktires.com> domain names are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the names. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 June 4, 2021, the Forum served the Complaint and all Annexes, including a English and Chinese language Written Notice of the Complaint, setting a deadline of June 24, 2021 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@tirerack.store, postmaster@tireracktires.com. Also on June 4, 2021, the English and Chinese language 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 June 27, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant alleges that the disputed domain names are controlled by the same person or entity, operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “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.” Complainant argues that the domain names are under common control, as they resolve to the same website, share the same registrant name on WHOIS, and were registered on the same day. The Panel is satisfied that the disputed domain names are controlled by the same person or entity and will refer to the registrants as Respondent.
PRELIMINARY ISSUE: REQUIRED LANGUAGE OF COMPLAINT
Complainant alleges that because Respondent is conversant in English, the proceeding should be conducted in English. The Panel has discretion under UDRP Rule 11(a) to determine the appropriate language of a proceeding, taking into consideration the particular circumstances. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant shows that the websites at the disputed domain names use English. The Panel therefore determines that this proceeding will be conducted in English.
A. Complainant
1. Respondent’s <tirerack.store> and <tireracktires.com> domain names are confusingly similar to Complainant’s TIRE RACK mark.
2. Respondent does not have any rights or legitimate interests in the <tirerack.store> and <tireracktires.com> domain names.
3. Respondent registered and uses the <tirerack.store> and <tireracktires.com> domain names in bad faith.
B. Respondent did not file a Response.
Complainant is a retailer of automotive parts, and holds with the Chinese State Administration for Industry and Commerce (“SAIC”) and the United States Patent and Trademark Office (“USPTO”) (e.g. SAIC Reg. 849,0475, registered Sept. 28, 2013; USPTO Reg. 2,812,285, registered Feb. 10, 2004).
Respondent registered the <tirerack.store> and <tireracktires.com> domain names on March 25, 2021, and uses them to host links that offer goods and services in competition with Compainant.
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 Panel finds that Complainant has rights in the TIRE RACK mark through its registrations with the SAIC and USPTO. See Kohler Co. v. xi long chen, FA 1737910 (Forum Aug. 4, 2017) (determining that “Complainant has rights in the KOHLER mark through registration with USPTO and SAIC.”).
Respondent’s <tirerack.store> and <tireracktires.com> domain names use Complainant’s TIRE RACK mark and simply add a descriptive word and/or gTLD. Such changes do not distinguish a domain name from the mark it incorporates. See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark); see also F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Accordingly, the Panel finds that Respondent’s <tirerack.store> and <tireracktires.com> domain names are confusingly similar to Complainant’s TIRE RACK mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent has no rights or legitimate interests in the <tirerack.store> and <tireracktires.com> domain names, as Respondent is not commonly known by the domain names. Complainant has not authorized or licensed Respondent to use its TIRE RACK mark. The WHOIS information of record identifies Respondent as “liu ying jin.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names, and thus has no rights under Policy ¶ 4(c)(ii). See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sept. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”).
Complainant argues that Respondent does not use the <tirerack.store> and <tireracktires.com> domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use, but instead redirects users to a competing website. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to offer competing services or goods is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding no rights or legitimate interests where “Respondent initially used the domain name at issue to resolve to a website where educational services were offered to the same market as that served by Complainant and only altered that use following a complaint by Complainant”). Complainant provides a screenshot of the disputed domain names’ resolving website, which includes links for advertisements to various car related sites, including a redirection to an Amazon webpage offering automotive parts. The Panel finds that this use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <tirerack.store> and <tireracktires.com> domain names for bad faith attraction for commercial gain. Under Policy ¶ 4(b)(iv), using a disputed domain name to divert internet users to a resolving website that offers competing goods or services constitutes bad faith attraction for commercial gain. See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark). Accordingly, the Panel finds that Respondent’s use of disputed domain names demonstrates bad faith attraction for commercial gain under Policy ¶ 4(b)(iv).
Complainant also argues that Respondent registered the <tirerack.store> and <tireracktires.com> domain names with knowledge of Complainant’s rights in the TIRE RACK mark. The Panel agrees, noting Respondent’s direct competition with Complainant, and finds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(i) with actual knowledge of Complainant’s rights in the TIRE RACK mark. See WordPress Foundation v. mich delorme / mich d dots tlds, FA1410001584295 (Forum Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tirerack.store> and <tireracktires.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 29, 2021
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