O'Reilly Automotive, Inc. v. Priyal Parikh / VARUN REDDY DHONALA / zhang wei / zhangwei / Rasel Ahmmed
Claim Number: FA2302002030466
Complainant is O'Reilly Automotive, Inc. (“Complainant”), represented by Renee Reuter, USA. Respondent is Priyal Parikh / VARUN REDDY DHONALA / zhang wei / zhangwei / Rasel Ahmmed (“Respondents”), India/China/United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <firstcallonline.online>, <firstcallonline.shop>, <firstcallonline.co>, and <firstcallonline.me>, registered with NameCheap, Inc.; Sav.com, LLC and Porkbun LLC (collectively “Registrars”).
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on February 3, 2023; Forum received payment on February 3, 2023.
On February 3, 2023 and February 6, 2023, the Registrars confirmed by e-mail to Forum that the <firstcallonline.online>, <firstcallonline.shop>, <firstcallonline.co>, <firstcallonline.me> domain names are registered with them and that the Respondents are the current registrant of the names. Each of the Registrars has verified that Respondents are bound by their registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 13, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 2023 by which Respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents’ registration as technical, administrative, and billing contacts, and to postmaster@firstcallonline.online, postmaster@firstcallonline.shop, postmaster@firstcallonline.co, postmaster@firstcallonline.me. Also on February 13, 2023, the Written Notice of the Complaint, notifying Respondents of the e-mail addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents’ registration as technical, administrative and billing contacts.
Having received no response from any of the Respondents, Forum transmitted to the parties a Notification of Respondent Default.
On March 13, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is 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 contends that all of the Respondents are related because: 1) the disputed domain names consist of the FIRST CALL mark, the generic term “online” and a generic top level-domain (“gTLD”) or country code top-level domain (“ccTLD”); 2) the domain names <firstcallonline.online> and <firstcallonline.shop> were created within one month of each other, with the same Registrar and the respective public Whois records for each of these domain names (Privacy Service provided by Withheld for Privacy ehf and Unknown) referred to the same unusual geographical region, namely Capital Region, Iceland ; 3) the domain names <firstcallonline.online> and <firstcallonline.me> resolve to essentially identical websites (“Respondent’s Websites”) that each reproduce the Complainant’s trade marks and purport to provide information regarding log-in credentials to Complainant’s websites and provide a link to Complainant’s actual log-in portal in an apparent attempt to track Internet users using the link and collect login-information; 4) the domain names <firstcallonline.online> and <firstcallonline.shop> resolve to web pages that have a similar appearance, each purporting to sell the same goods as Complainant using Complainant’s marks. The Panel notes that this submission is not supported by the evidence in the Complaint; the domain name <firstcallonline.shop> resolves to Wordpress sample page that, other than the apparent use of WordPress, has no similarities to the Respondent’s Websites. For completeness the Panel also notes that the website at <firstcallonline.co>, being a pay-per-click page, has no similarities to any of the websites at the other domain names.
The Panel is satisfied from the evidence that the domain names <firstcallonline.online>, <firstcallonline.shop> and <firstcallonline.me> (“Domain Names”), registered to Priyal Parikh / VARUN REDDY DHONALA / Rasel Ahmmed (“Respondent”) are owned/controlled by a single Respondent. The domain names <firstcallonline.online> and <firstcallonline.me> resolve to identical unique websites which is sufficient to indicate common control.
The domain names <firstcallonline.online> and <firstcallonline.shop> were registered using identical registrars and apparently similar privacy services within a few weeks of each other and share a similar unusual structure. This evidence, in the Panel’s opinion, strongly suggests that the domain names <firstcallonline.online> and <firstcallonline.shop> are owned/controlled by a single Respondent; were the registrants of the domain names <firstcallonline.online> and <firstcallonline.shop> unrelated, it would be unlikely that multiple unconnected entities would register identical domain names with an identical registrar using the same or related privacy service. The Panel also notes that the website at <firstcallonline.shop> is an inactive sample page, which does not clearly indicate different ownership, rather it suggests that the domain name at <firstcallonline.shop> is being passively held pending similar use to the domain names at <firstcallonline.online> and <firstcallonline.me>
The Panel finds that Complainant has not sufficiently presented evidence demonstrating that the <firstcallonline.co> is controlled by the same entity that controls the Domain Names. The <firstcallonline.co> domain name is registered to a different named entity on a different date using a different registrar using different contact details. There is no evidence that the website at the <firstcallonline.co> domain name has anything in common with the Respondent’s Websites; indeed the only similarity between the <firstcallonline.co> domain name and the remaining Domain Names is the nature of the Domain Name itself, which is not a sufficient basis to find the Domain Names are under common control.
The Complaint as it stands is in breach of Paragraph 3(c) of the Rules in that it is in respect of multiple domain names registered by different holders. Forum Supplemental Rule 4(c) provides that if the Panel determines that insufficient evidence is presented to link the respective domain names, the domain names held by the unrelated registrants will not be subject to further consideration by that Panel. The Panel, without prejudice to any future proceedings under the Policy, dismisses the Complaint as against the <firstcallonline.co> domain name and against zhang wei / zhangwei.
A. Complainant
Complainant, O’Reilly Automotive, Inc., is an automobile supply company. Complainant has rights in the FIRST CALL mark through trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,032,675, which was registered on January 21, 1997). The Domain Names are confusingly similar to the FIRST CALL mark as they include the entire mark, merely adding the descriptive term and a gTLD or ccTLD.
Respondent lacks rights or legitimate interests in the Domain Names since Respondent is not licensed or authorized to use Complainant’s FIRST CALL mark and is not commonly known by the Domain Names. Additionally, Respondent does not use the Domain Names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Two of the Domain Names are used to impersonate Complainant and one domain name is inactive.
Respondent registered and uses the Domain Names in bad faith. Two of the Domain Names are used to pass off as Complainant and one domain name is inactive. Further, Respondent registered the Domain Names with a privacy service and constructive and actual knowledge of Complainant’s rights in the FIRST CALL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the FIRST CALL mark. The Domain Names are confusingly similar to Complainant’s FIRST CALL mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names 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 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”).
Complainant has rights in the FIRST CALL mark based upon registration of the mark with the USPTO (Reg. No. 2,032,675, which was registered on January 21, 1997). 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 Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).).
The Panel finds that each of the Domain Names are confusingly similar to the FIRST CALL mark as they each incorporate the entire FIRST CALL mark while adding the generic term “online” and a gTLD or ccTLD. Adding a generic term and a TLD to a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”); see also 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.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the FIRST CALL mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also 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). The WHOIS lists “Priyal Parikh / VARUN REDDY DHONALA / Rasel Ahmmed” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Name <firstcallonline.shop> resolves to an essentially inactive WordPress sample page, which does not by itself provide evidence of rights or legitimate interests; the Panel finds, on the balance of probabilities that the Domain Name <firstcallonline.shop> is being held pending use similar to the remaining Domain Names.
The remaining Domain Names resolve to the Respondent’s Websites which reproduce the Complainant’s mark, logo, images of Complainant’s stores and provide other information about Complainant. The Respondent’s Websites purport to be official websites providing information about Complainant’s online service portal and encourage visitors to provide their log-in details to them for the purpose of logging into Complainant’s online service portal. If done, this would enable the Respondent to potentially capture the personal information, passwords and financial information of visitors to the Respondent’s Websites. Such conduct is fraud or phishing and the use of a domain name to commit fraud does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Caterpillar Inc. v. ruth weinstein, FA 1770352 (Forum Mar. 7, 2018) (“Use of a disputed domain name in an attempt to pass itself off as a complainant and to conduct a phishing scheme is indicative of a failure to use said domain name in connection with a bona fide offer of goods and services per Policy ¶ 4(c)(i) or a legitimate noncommercial or otherwise fair use per Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names, between 2020 and 2022, Respondent had actual knowledge of Complainant’s FIRST CALL mark. There is no obvious explanation, nor has one been provided, for an entity to register 3 domain names wholly incorporating the FIRST CALL mark and the same generic term and redirect two of them to essentially identical websites that seek to take advantage of Complainant’s reputation in the FIRST CALL mark for the purpose of committing a fraud on Complainant’s customers for its own financial gain. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith as Respondent has used (or in the case of the domain name <firstcallonline.shop>, passively held the domain name <firstcallonline.shop> pending similar use) the Domain Names to impersonate Complainant in furtherance of a phishing or other fraudulent scheme. Use of a disputed domain name to impersonate a complainant in furtherance of a fraud or phishing scheme is evidence of bad faith per Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)). Accordingly, the Panel finds that Respondent registered and uses the Domain Names in bad faith pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy with respect to the <firstcallonline.online>, <firstcallonline.shop> and <firstcallonline.me> domain names, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <firstcallonline.online>, <firstcallonline.shop> and <firstcallonline.me> domain names be TRANSFERRED from Respondent to Complainant and the <firstcallonline.co> domain name REMAIN WITH the existing registrant.
Nicholas J.T. Smith, Panelist
Dated: March 14, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page