Mobile Hi-Tech Wheels v. Derek Baumeister / Lni Enterprises
Claim Number: FA1901001826655
Complainant is Mobile Hi-Tech Wheels (“Complainant”), represented by Thomas J. Daly of Lewis Roca Rothgerber Christie LLP, California, USA. Respondent is Derek Baumeister / Lni Enterprises (“Respondent”), represented by Anthony N. DeMint of DeMint Law, PLLC, Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fuelwheeloutlet.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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 23, 2019; the Forum received payment on January 23, 2019.
On January 24, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <fuelwheeloutlet.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 January 25, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 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@fuelwheeloutlet.com. Also on January 25, 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. On January 25, 2019 the Respondent submitted what it claims is a written communication from an employee of the Complainant. On February 11, 2019 the Forum received a Stipulation To Extend Time To Respond To Amended Complaint which was signed by both the Complainant’s attorney and a “Managing Member” of Respondent. By this stipulation, the deadline for a Response in this case was extended to February 28, 2019.
Having received no further submission or response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 1, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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 owns the globally known FUEL brand which it has used for nearly 10 years in connection with its highly successful business of designing, manufacturing, and distributing cutting-edge custom wheels for automobiles, trucks, and other vehicles. Complainant has rights in the FUEL mark dating back to 2008 through its registration of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <fuelwheeloutlet.com> domain name is identical or confusingly similar to Complainant’s mark as it merely appends the generic/descriptive terms “wheel” and “outlet” along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <fuelwheeloutlet.com> domain name which was registered on May 18, 2018. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent falsely states that it has a longstanding and ongoing business relationship with Complainant where it is authorized to distribute Complainant’s products, and uses the domain name to further this fraudulent business scheme.
Respondent registered and uses the <fuelwheeloutlet.com> domain name in bad faith. Respondent attempts to create a likelihood of confusion regarding Respondent’s affiliation with Complainant in order to further a fraudulent business where Respondent distributes Complainant’s products for commercial gain. Further, Respondent had constructive knowledge of Complainant’s rights in the FUEL mark due to Complainant’s prior trademark registration of the FUEL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, on January 25, 2019 it did submit what it claims is a forwarded email from an employee of the Complainant (bearing the title “MHT Luxury Alloys Division Manager”) stating, “To whom it may concern, LNI ENTERPRISES is an authorized vendor/retailer for any and all MHT Luxury Alloys branded products. LNI ENTERPRISES is also responsible for any and all warranty claims that follow MHT Luxury Alloys guidelines.”
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims rights in the FUEL trademark through its registration of the mark with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the FUEL mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <fuelwheeloutlet.com> domain name is identical or confusingly similar to Complainant’s mark as it merely appends the generic/descriptive terms “wheel” and “outlet” along with the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Basic Trademark S.A. v. Ed Swain, D2009-1029 (WIPO Sep. 17, 2009) (<givenchyoutlet.com> ordered transferred with the Panel stating “The fact that the word ‘outlet’ is added to Complainant's trademark does not eliminate the similarity between Complainant's trademark and the disputed domain name, as ‘outlet’ is a descriptive component of the disputed domain name.”);The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i)”). As the <fuelwheeloutlet.com> domain name merely adds the descriptive words “wheel” and “outlet”, as well as the .com TLD to the Complainant’s FUEL mark, the Panel therefore finds that that the domain is confusingly similar to the FUEL mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in that effort, the burden then shifts to Respondent to show that 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 contends that Respondent has no rights or legitimate interests in the <fuelwheeloutlet.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the FUEL mark in any way. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS record for the <fuelwheeloutlet.com> domain name identifies the registrant as “Derek Baumeister / Lni Enterprises”. Complainant further asserts that “Complainant has not licensed Respondent to use its FUEL Mark, nor does Respondent have any legal relationship with Complainant that would entitle Respondent to use Complainant's mark.” Panels may use these assertions as evidence of lacking rights or legitimate interests. Accordingly, the Panel agrees that Respondent is not commonly known by the <fuelwheeloutlet.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent falsely states that it has a longstanding and ongoing business relationship with Complainant through which it is authorized to distribute Complainant’s products, and that Respondent uses the disputed domain name to further this fraudulent business scheme. The selling of a complainants’ products, whether as an authorized or unauthorized dealer, is subject to the now-familiar four-part test set out in the seminal UDRP decision of Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001).[i]
Of most relevance to the current case is the third element of the Oki Data test, whether or not the website of the disputed domain name accurately discloses the registrant's relationship with the trademark owner. The Complainant repeatedly claims that “Respondent is not an authorized dealer of Complainant” while the Respondent has submitted a letter of questionable veracity and purportedly from an employee of Complainant stating that Respondent “is an authorized vendor/retailer”. However, the Panel deems this factual question to be of limited impact in the present case because, even assuming arguendo that Respondent is an authorized dealer, it fails to accurately and clearly disclose its relationship with the Complainant on the <fuelwheeloutlet.com> website.
Complainant provides a screenshot of the resolving website associated with the disputed domain name, which displays the title “Fuel Wheel Outlet” in a stylized type font that is quite similar to that used in Complainant’s own logo for its FUEL mark. The site also displays various wheel products allegedly for sale and, at the bottom of the website, it lists the name “Fuel Wheel Outlet” along with a physical address and a phone number. Each page of the website also contains the footer “Copyright © 2019 Fuel Wheel Outlet 2019 – All Rights Reserved”. Finally, there is a link to an “About Us” page at which, in small print, it is explained that “Buying wheels can be а pain in the A**”, that the Fuel Wheel Outlet has “over 20 years experience in the wheel and tire industry”, and that “Fuel Off-Road is one of the largest independently owned wheel companies in the world.” It then contains the statement “Here at Fuel Wheel Outlet we have established a long-standing relationship with them and offer that to YOU the end user.”
Past UDRP decisions involving domains that couple the word “outlet” with a complainant’s trademark have considered the Oki Data test. Among them are HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG v. Li Chen, D2016-1623 (WIPO Oct. 3, 2016), in which “the [cheaphugobossukoutlet.com] domain name resolved to a website headed with the Complainant's BOSS logo and offering for sale items purporting to be HUGO BOSS clothing, handbags and other goods”. Id. The Panel concluded that “there is nothing at the website to accurately disclose the relationship, if any, between the Respondent and the Complainant. Indeed the most likely conclusion to be drawn by a consumer entering the website would be that it was the website of the Complainant or associated with, or authorized by the Complainant.” Id. See also, Swarovski Aktiengesellschaft v. swarovskijewelry-outlet.com, D2013-1452 (WIPO Sep. 27, 2013) (“In the present case, the Panel finds that while the first, second and fourth Oki Data criteria appear to be satisfied by the Respondent, the third is not.” Due to “Respondent’s extensive use of the Complainant’s name and branding including its SWAROVSKI and ‘swan’ trademarks”, Respondent “has failed to make clear that its site is neither authorized by nor connected with the Complainant.”).
Here, the Panel finds that Respondent’s repeated and prominent use of the name Fuel Wheels Outlet and the absence on the <fuelwheeloutlet.com> website of any mention of its actual company name Lni Enterprises fails to clearly and accurately disclose its relationship – if any – with the Complainant under the third element of the Oki Data test. The small-print and obtuse reference, on a secondary page of its website, to “a long-standing relationship with them” does not alter this conclusion. Thus, Respondent fails to use the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Complainant argues that Respondent had constructive knowledge of Complainant’s FUEL mark at the time of registering the <fuelwheeloutlet.com> domain name. It is noted that both parties are located in the United States of American where the legal concept of constructive notice of registered trademarks applies. However, the Panel choses to disregard arguments of bad faith based on constructive notice as it is clear, from its website content, that the Respondent had actual knowledge of the FUEL mark. Actual knowledge of a complainant’s trademark may form the foundation upon which to build a case for bad faith under Policy ¶ 4(a)(iii). See, Facebook, Inc. v. DNS Admin / OT NetWork, FA 1827546 (Forum Feb. 28, 2019) (“The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, June 12, 2018, Respondent had actual knowledge of Complainant’s FACEBOOK mark. The website to which the Domain Name resolved to makes direct references to Complainant.”).
Complainant further claims that Respondent attempts to create a likelihood of confusion regarding Complainant’s affiliation with the <fuelwheeloutlet.com> website in order to further a business where Respondent distributes products for commercial gain and in competition with Complainant. Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products). As noted above, Complainant provides a screenshot of the resolving website associated with the domain name, which repeatedly promotes the name “Fuel Wheel Outlet” and displays various wheel products allegedly for sale. Respondent submitted a document claiming to be an email from one of the Complainant’s employees stating that the Respondent is authorized to sell Complainant’s products. However, this text-only document is unsigned; shows no email headers, addresses, dates, or subject line; no letterhead; and otherwise bears no signs of authenticity (it should be noted that the named Complainant employee has a profile on the LinkedIn.com website in which his name and company title are publicly disclosed). Respondent submits no Response or further evidence of its claimed authorization such as a formal agreement, invoices from Complainant or one of its distributors, or an actual signed letter from Complainant or its named employee.[ii] Held up against Complainant’s repeated and clear statements that “Respondent is not an authorized dealer of Complainant” and that “Respondent appears to be engaged in а fraudulent business activity in order to drive business away from Complainant's authorized distributors”, this Panel finds, by a preponderance of the evidence, that the Respondent’s claim of authority is lacking in substance and credibility. Accordingly, the Panel finds that the Respondent registered and uses the <fuelwheeloutlet.com> website to commercially benefit from confusion with Complainant’s FUEL mark in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fuelwheeloutlet.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: March 5, 2019
[i] To be “bona fide,” the offering must meet several requirements. Those include, at the minimum, the following:
- Respondent must actually be offering the goods or services at issue;
- Respondent must use the site to sell only the trademarked goods;
- The site must accurately disclose the registrant's relationship with the trademark owner; and
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
[ii] This seems especially surprising as the Respondent has participated in the process of this case, to some extent, by requesting an extension of the Response deadline, paying a $100 extension fee, and submitting its claimed email from Complainant’s employee.
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