O'Reilly Automotive, Inc. v. Zhang XianHong
Claim Number: FA2212002024955
Complainant is O'Reilly Automotive, Inc. (“Complainant”), represented by Jeanette Sinclare, Missouri, USA. Respondent is Zhang XianHong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oreillyautoparts.us.com>, registered with NameCheap, Inc..
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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated on November 24, 2022.
On December 22, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <oreillyautoparts.us.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP Policy”)
On January 3, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 23, 2023 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@oreillyautoparts.us.com. Also on January 3, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On January 31, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the CDRP Resolution Policy (the "Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, CDRP Rules, 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 made the following contentions.
Complainant, O'Reilly Automotive, Inc., is an automobile parts retailer. Complainant asserts rights in the O’REILLY Mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,422,748, registered May 6, 2008) and other international trademark authorities. See Compl. Ex. D. Respondent’s <oreillyautoparts.us.com> domain name is identical or confusingly similar to Complainant’s O’REILLY mark as it fully incorporates the Complainant’s mark and merely adds the generic terms “auto” and “parts” as well as the “.us” country code top-level domain (“ccTLD”), and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <oreillyautoparts.us.com> domain name. Respondent is not licensed or authorized to use Complainant’s O’REILLY Mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass off as Complainant. Respondent is engaging in a phishing scheme.
Respondent registered or uses the <oreillyautoparts.us.com> domain name in bad faith. Respondent uses the disputed domain name to pass off as Complainant. Respondent attempts use the disputed domain name to defraud Complainant’s customers. Respondent is disrupting Complainant’s business. Additionally, Respondent had actual knowledge of Complainant’s rights in the O’REILLY Mark at the time of registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is an automobile parts retailer.
2. Complainant has established its rights in the O’REILLY mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,422,748, registered May 6, 2008) and other international trademark authorities.
3. Respondent registered the <oreillyautoparts.us.com> domain name on April 25, 2022.
4. Respondent has used the disputed domain name to pass itself off as Complainant and to engage in a phishing scheme.
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 or is being used in bad faith.
The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the O’REILLY Mark based upon its registration of the mark with the USPTO and other trademark authorities (e.g. Reg. No. 3,422,748, registered May 6, 2008). See Compl. Ex. D. Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i). See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has rights in the O’REILLY Mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s O’REILLY mark. Complainant argues that the <oreillyautoparts.us.com> domain name is identical or confusingly similar to Complainant’s mark. The addition of a ccTLD or a gTLD to a mark does not distinguish the disputed domain name from the relevant mark and is usually considered irrelevant per Policy ¶ 4(a)(i). The addition of generic words may strengthen the result that the domain name is confusingly similar to the relevant trademark. See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Dansko, LLC v. zhang wu, FA 1757745 (Forum Dec. 12, 2017) (finding the <danskoshoes.us.com> domain name to be confusingly similar to the DANSKO mark under Policy ¶ 4(a)(i), despite the addition of the “.us” ccTLD and the “.com” gTLD). The disputed domain name fully incorporates the O’REILLY Mark and adds the generic words “auto” and “parts” as well as the “.us” ccTLD and the “.com” gTLD. Accordingly, as the Panel agrees, it finds that the <oreillyautoparts.us.com> domain name is confusingly similar to the Complainant’s O’REILLY mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s O’REILLY mark and add the generic words “auto” and “parts” to use it in its domain name;
(b) Respondent registered the <oreillyautoparts.us.com> domain name on April 25, 2022;
(c) Respondent has used the disputed domain name to pass itself off as Complainant and to engage in a phishing scheme;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent does not have rights or legitimate interest in the <oreillyautoparts.us.com> domain name because Respondent is not licensed or authorized to use Complainant’s O’REILLY Mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, use of a privacy service to conceal the Respondent’s identity may indicate that the respondent is not commonly known by the disputed domain name. Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Further, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Here, the Respondent registered the disputed domain name using privacy services; this is evinced by the WHOIS information for the disputed domain name, which lists the registrant as “Redacted for Privacy”. See Compl. Ex. B. After the shield was dropped, the registrant was revealed to be “Zhang XianHong.” See Registrar Verification Email. The Panel therefore finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent does not use the <oreillyautoparts.us.com> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. The Respondent is directly copying the company information from Complainant’s corporate details page on Complainant’s website. Passing off as a complainant does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”). Here, Complainant provides screenshot evidence of the disputed domain name’s resolving website, showing Complainant’s mark. See Compl. Ex. E. Therefore, the Panel finds Respondent does not use the disputed domain name for any bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii);
(g) Complainant contends Respondent does not use the <oreillyautoparts.us.com> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent registered the disputed domain name to impersonate Complainant and potentially track users’ actions on Complainant’s website and/or to collect users’ personal or payment information once users are redirected to Complainant’s actual website. The use of a disputed domain name in an effort to phish for personal information does not represent a bona fide offering of goods or services nor a legitimate noncommercial or fair use per Policy ¶ 4(a)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent lacked rights and legitimate interests in a domain name with which it conducted a phishing scheme to procure “Internet users’ personal information”). Here, Complainant provides screenshot evidence of the disputed domain name’s resolving website, showing Complainant’s mark and the text “BUY IT NOW”. See Compl. Ex. E. Complainant contends such use and text indicates Respondent plans to use the disputed domain name for fraud. The Panel therefore finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services nor a legitimate noncommercial or fair use per Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered or uses the <oreillyautoparts.us.com> domain name in bad faith. Respondent’s is redirecting the disputed domain name to a website that impersonates the Complainant and copies corporate information directly from Complainant’s own website in an attempt to trick visitors to believe that Respondent is in fact Complainant or is affiliated or associated with Complainant. Passing off as a Complainant is evidence of bad faith per Policy ¶ 4(b)(iv). See 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.”). Here, Complainant provides screenshot evidence of the disputed domain name’s resolving website, showing Complainant’s mark. See Compl. Ex. E. Accordingly, as the Panel agrees, it finds Respondent has acted in bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant submits that Respondent registered or uses the <oreillyautoparts.us.com> domain name in bad faith. Respondent is offering coupons for Complainant’s goods and services and to redirect consumers to Complainant’s website through “BUY IT NOW” button offers indicating an attempt to track user’s actions on Complainant’s website and potentially gather consumer’s credit card or other payment information once on Complainant’s website. A Respondent who knowingly attempts to defraud a complainant’s customers is acting in bad faith per Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. WhoisGuard, FA 1103650 (Forum Dec. 13, 2007) (“There is no dispute that respondent previously used the disputed domain name to obtain personal and financial information from Internet customers of complainant. This fraudulent use [is] known as ‘phishing’”). Here, Complainant provides screenshot evidence of the disputed domain name’s resolving website, showing Complainant’s mark and the text “BUY NOW”. See Compl. Ex. E. Complainant contends such use and text indicates Respondent plans to use the disputed domain name for fraud. Therefore, as the Panel agrees, it finds Respondent has acted in bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant submits that Respondent registered or uses the <oreillyautoparts.us.com> domain name in bad faith because Respondent is intending to confuse others and disrupt Complainant’s business. Disrupting a Complainant’s business is evidence of bad faith under Policy ¶ 4(b)(iii). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”). As the Panel agrees, it finds Respondent has acted in bad faith per Policy ¶ 4(b)(iii).
Fourthly, Respondent contends that Respondent had actual knowledge of Complainant’s rights in the O’REILLY Mark at the time of registering the <oreillyautoparts.us.com> domain name. Actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). To support this assertion, Complainant submits that it is implausible that Respondent was unaware of Complainant given Respondent’s intentional copying of Complainant’s trademarks, text, images, and website design. The Panel agrees. Further, the Complainant first used the O’REILLY Mark over 65 years ago, well before the Respondent registered the disputed domain name on April 25, 2022. See Compl. Ex. B. Therefore, as the Panel finds Respondent had actual knowledge of Complainant’s rights in its mark, it also finds that this supports a finding of bad faith under Policy ¶ 4(a)(iii).
engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oreillyautoparts.us.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: February 2, 2023
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