OK Auto, 4WD & Tire, Inc. d/b/a OK4WD v. Клочко Дмитрий
Claim Number: FA2305002044375
Complainant is OK Auto, 4WD & Tire, Inc. d/b/a OK4WD (“Complainant”), represented by Lisa Lori of Klehr Harrison Harvey Branzburg LLP, Pennsylvania, USA. Respondent is Клочко Дмитрий (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <4x4ome.com> and <4x4ok.com>, registered with Internet Invest, Ltd. dba Imena.ua.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to Forum electronically on May 12, 2023; Forum received payment on May 12, 2023.
On May 17, 2023, Internet Invest, Ltd. dba Imena.ua confirmed by e-mail to Forum that the <4x4ome.com> and <4x4ok.com> domain names are registered with Internet Invest, Ltd. dba Imena.ua and that Respondent is the current registrant of the names. Internet Invest, Ltd. dba Imena.ua has verified that Respondent is bound by the Internet Invest, Ltd. dba Imena.ua 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 May 22, 2023, Forum served the Complaint and all Annexes, including an English and Ukrainian Written Notice of the Complaint, setting a deadline of June 12, 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@4x4ome.com, postmaster@4x4ok.com. Also on May 22, 2023, the English and Ukrainian 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.
A timely Response was received and determined to be complete on June 12, 2023.
On June 27, 2023, an Additional Submission was received from the Complainant.
On June 15, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Darryl C. Wilson 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 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
For over 40 years, Complainant has been the premier outfitter in the United States for, among other things, customized trucks and off-road vehicles. Complainant asserts rights in the OK4WD mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5279906, registered September 5, 2017). Complainant also asserts common law rights in the OK4WD mark. The <4x4ome.com> and <4x4ok.com> domain names are identical or confusingly similar to Complainant’s OK4WD mark because they each are classic examples of typosquatting with typographical errors as well as the addition of the generic top level domain (“gTLD”) “.com”.
Complainant has spent hundreds of thousands of dollars advertising and promoting its brand OK4WD through the Internet, print, and its website <ok4wd.com>. Based on its federal trademark registration and extensive use, Complainant owns the exclusive right to use its Marks.
Respondent lacks rights or legitimate interests in the <4x4ome.com> and <4x4ok.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Respondent been authorized by Complainant to use the OK4WD mark. Additionally, Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services. Instead, Respondent is using the disputed domain names to direct users to a competing website to sell competing goods and services.
Respondent registered and uses the <4x4ome.com> and <4x4ok.com> domain names in bad faith. Respondent is creating a likelihood of confusion with Complainant’s Marks. Respondent is marketing and selling competing goods and services. Respondent is typosquatting. Respondent failed to respond to a cease and desist letter. Finally, Respondent had actual knowledge of Complainant’s rights in the OK4WD mark prior to registration of the disputed domain names.
B. Respondent
Respondent, Клочко Дмитрий, registered the <4x4ome.com> and <4x4ok.com> domain names on September 6, 2017, and May 4, 2019, respectively. Respondent’s principal activity is selling auto parts from mainly US manufacturers for consumers who do not resolve in the USA; Respondent’s business is drop shipping. When registering the disputed domain names, Respondent was unaware that it would violate someone’s rights. Respondent notes that there are many domains with 4wd and 4x4 characters.
Respondent does not lack rights or legitimate interests in the <4x4ome.com> and <4x4ok.com> domain names. Respondent is a legitimate business who sells a different brand than Complainant. Respondent uses the disputed domain names in countries outside the USA.
Respondent did not register the <4x4ome.com> and <4x4ok.com> domain names in bad faith. Respondent is not competing with Complainant nor practicing typosquatting.
C. Additional Submissions
Complainant’s Additional Submission contends that Respondent’s websites are written in English and provide pricing for orders in United States Dollars therefore, Respondent’s websites permit United States persons to view and understand Respondent’s websites, as well as view products for sale.
Further, Respondent accepts payments through Visa, Mastercard and PayPal which are commonly utilized payment processors in the United States. Therefore, Respondent’s websites lead United States persons to believe products can be purchased through Respondent’s websites and permit United States persons to purchase products from Respondent’s websites.
Also, the checkout pages of Respondent’s websites provide options for shipping throughout the United States. The color schemes, fonts and logo designs used in Respondent’s websites are strikingly similar to those of Complainant’s website. both Respondent and Complainant sell aftermarket off-road products for vehicles. Furthermore, Respondent and Complainant sell products of the exact same brands, including, but not limited to Decked, Warn, Bilstein, Fab Fours, Mickey Thompson, etc.
Complainant is OK Auto, 4WD & Tire, Inc. d/b/a OK4WD (“Complainant”), of Stewartsville, NJ USA. Complainant is the owner of the domestic registration for the mark OK4WD based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5279906, registered September 5, 2017). Complainant has used its mark continuously since at least as early as 1987 for the sale of products and services related to customized trucks and off-road vehicles, overland and off-road and camping products for vehicles, and associated outfitting for cars and trucks. Complainant uses its mark in real space as well as cyberspace at its <ok4wd.com> website. Complainant also asserts common law rights in its mark, presumably covering some time period predating its registration with the USPTO. The particulars are not necessary to resolve the instant case.
Respondent is Клочко Дмитрий (“Respondent”), of Kyiv Ukraine - UA. Respondent is a corporation registered in the state of Delaware, USA, who registered the disputed domain names in 2017 and 2019. Respondent is likewise engaged in providing goods and services related to the custom outfitting of cars and trucks, many of the same makes and models as those serviced by the Complainant. Respondent operates primarily on the web and asserts it is in the business of drop shipping and does not directly compete with the Complainant due to its distant physical location. Respondent claims to have been unaware of the Complainant’s business when it registered the disputed domain names as Respondent says it was not informed of any potential conflicts by its registration service. Respondent also asserts many other marks and domains incorporate part of Complainant’s mark.
PRELIMINARY ISSUE: Supported Language Request
The Panel notes that Complainant requests that the language of this matter proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Ukrainian language Registration Agreement.
Both websites of the Disputed Domain Names, including the shipping policy, return policy and contact page of <4x4ok.com>, are written entirely in English. Further, English is the only language offered on both websites of the Disputed Domain Names.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
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.
Complainant asserts rights in the OK4WD mark (e.g. Reg. No. 5279906, registered September 5, 2017) based upon registration with the USPTO. Registration of a mark with the USPTO sufficiently establishes rights in the mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel here finds that Complainant has established rights in the Marks under Policy ¶ 4(a)(i).
Complainant claims that Respondent’s <4x4ome.com> and <4x4ok.com> domain names are identical or confusingly similar to Complainant’s OK4WD mark. Typographical errors as well as the addition of a gTLD is insufficient to distinguish the domain name. See Google Inc. v. Jon G., FA 106084 (Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Roche Therapeutics Inc. v. Williams Shorell, FA 1684961 (Forum Aug. 30, 2016) (“Complainant asserts Respondent’s <boniva.top> domain name is identical to the BONIVA mark. The addition of a generic top level domain to a mark does not differentiate the domain from said mark under Policy ¶ 4(a)(i).). Here, each disputed domain name has a typographical error as well as the addition of the “.com” gTLD.
Respondent argues that its disputed domain names are not identical or confusingly similar to Complainant’s Marks because there are many domains with 4wd and 4x4 characters. A commonly used term may not be identical or confusingly similar under Policy ¶ 4(a)(i). See Tristar Products, Inc. v. Laurie Braden, FA 1592315 (Forum Jan. 22, 2015) (holding “that the terms ‘jean’ and ‘eez’ are commonly used terms. The Panel accordingly finds that the disputed domain name is not confusingly similar to Complainant’s GENIE mark under Policy ¶ 4(a)(i).”).
The Panel finds Respondent’s argument unpersuasive. Respondent offers no further proofs supporting its general statement. Respondent does not identify the “many domains” using similar characters, and the fact that there are others does not mean Respondent’s usage is proper since those many others may also be in violation of this element.
The Panel here finds that the disputed domain names are confusingly similar to Complainant’s Mark under Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes 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”). Complainant has made a prima facie case here.
Complainant argues Respondent has no rights or legitimate interests in the <4x4ome.com> and <4x4ok.com> domain names because Respondent is not commonly known by the disputed domain names and Complainant has never licensed rights to or authorized Respondent to use the OK4WD mark. Where WHOIS information suggests a respondent is commonly known by a disputed domain name, if there is no further evidence to support this fact Panels have found a respondent is not commonly known by the disputed domain name. See Google Inc. v. S S / Google International, FA 1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”). Further, when there is no evidence to indicate a complainant has authorized the use of a mark, it may act as support that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”); see also Navistar International Corporation v. N Rahmany, FA 1505001620789 (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 information for the disputed domain names lists the registrant as “Клочко Дмитрий”. Complainant claims it found no evidence to support that Respondent is in fact known by this name. There is also no evidence to suggest Respondent was authorized, licensed rights to, or otherwise permitted to use the OK4WD mark. Respondent does not directly address these assertions in its Response.
Respondent argues that it does not lack rights or legitimate interests in the <4x4ome.com> and <4x4ok.com> domain names. Respondent states that it is a legitimate business who sells a different brand than Complainant and only uses the disputed domain names in countries outside the USA. Use of marks in completely different areas may show that Respondent has rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Quality Craft Industries, Inc. v. Domain Admin / Ashantiplc Limited, FA 1684372 (Forum Sept. 13, 2016) (finding the existence of concurrent rights to the MONTEZUMA mark in respondent, who provided evidence of its own trademark registrations and long-term usage of a domain name containing the mark).
However, as Complainant indicates in its Additional Submission, Respondent’s claims are not true. Respondent’s domains resolve to websites that look similar to Complainant’s, that are written in English, that advertise competing products for USA automobiles and trucks, and that solicit payment via USA credit cards to facilitate completion of transactions, allowing goods to be dropped off in the USA as well as other places. While Respondent may sell goods in completely different areas, Respondent also sells goods in the USA in direct competition with Complainant.
The Panel here finds Respondent is not commonly known by, and lacks rights or legitimate interests in, the disputed domain names per Policy ¶ 4(c)(ii).
The Complainant has proven this element.
Complainant asserts that Respondent registered and uses the <4x4ome.com> and <4x4ok.com> domain names in bad faith. Respondent intended to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites, which is evidence of bad faith under Policy ¶ 4(b)(iv). See Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (Finding Respondent uses the domain names to point to a site which offers links relating to Complainant’s business. “Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.”). Here, Complainant provides screenshots of the websites reachable through the disputed domain names that indicate Respondent’s sale of goods identical or similar to those sold by Complainant. Further Respondent’s website(s) have a similar color scheme and format as Complainant’s, particularly as related to the domain names and marks heading each page.
Complainant also argues that Respondent registered and uses the <4x4ome.com> and <4x4ok.com> domain names in bad faith due to the fact that Respondent failed to respond to a cease and desist letter in light of Complainant’s strong goodwill in the OK4DW Marks. Failure to respond to a cease and desist letter is evidence of bad faith under Policy ¶ 4(a)(iii). Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Here, Complainant provides screenshot evidence of the cease and desist letter sent to Respondent. The Panel here finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Respondent’s 2017 registration of its first disputed domain name is in close proximity to Complainant’s USPTO registration. However Complainant has an uncontested recognition of its first use of its mark dating back to 1987 as well as its registered mark having reached uncontestable status. Respondent admittedly engaged in some trademark searching prior to registering the disputed domain names. The fact that Respondent’s conclusions from its search results and related conversations did not direct Respondent to choose other domain names then does not insulate Respondent now.
The Panel here finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
The Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <4x4ome.com> and <4x4ok.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 3, 2023
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