Decision for dispute CAC-UDRP-107826

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is the registered owner of several trademarks consisting of or containing the term “AUTODOC”, including:

• International Trademark “AUTODOC”, Registration No. 1750634, registered on April 11, 2023 for goods and services in classes 9, 12, 35, 36, 37, 38, 39, 41, and 42;
• European Union Trademark “AUTODOC”, Registration No. 018773433, registered on May 26, 2023, filed on October 05, 2022, for goods and services in classes 9, 12, 35, 36, 37, 38, 39, 41, and 42.

The Complainant is a company duly organized and existing under the laws of Germany. The Complainant operates a well-established business in the automotive parts industry, selling replacement parts and accessories for cars and trucks through its official website, under the domain name <autodoc.de>, as well as other online platforms. The Complainant’s business activities extend to multiple jurisdictions and include the sale of goods and services related to vehicles, spare parts, accessories, vehicle maintenance, and the provision of access to electronic marketplaces and e-commerce platforms.

 The disputed domain name was registered on March 27, 2024. The website corresponding to the disputed domain name features identical or highly similar elements to those used by the Complainant, including the company name, address, color scheme, typography, and overall layout. Moreover, the website reproduces the Complainant’s company history on its “About” page with only minor changes. It offers products identical to those offered by the Complainant on its official website.

The Complainant’s cease-and-desist communication sent to the Respondent’s email address received no substantive response.

The Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

(1) The disputed domain name is confusingly similar to a trademark in which the Complainant has rights, as it wholly incorporates the Complainant’s AUTODOC, mark merely adding the geographical abbreviation “USA”. Such an addition is non-distinctive and does not prevent a finding of confusing similarity. To the contrary, it enhances the likelihood of confusion by implying that the domain represents the Complainant’s official American branch or subsidiary.

(2) The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not granted permission to use its trademark to the Respondent. The Complainant has not licensed or authorized the Respondent to use its mark. The Respondent is not commonly known by the disputed domain name. The website under the disputed domain name falsely presents itself as an official AUTODOC platform, using the Complainant’s registered company name and address, and even listing fictional corporate officers whose names are taken from the television series Suits. The only contact information provided is a generic Gmail address (benautos730@gmail.com), which was linked to an individual in Ghana who claimed merely to be the “programmer of the AUTODOC website” and refused to disclose the client’s identity.

(3) The disputed domain name was registered and is being used in bad faith. Given the extensive reputation and the distinctive nature of its mark, the Respondent clearly knew of the Complainant’s rights when registering the disputed domain name. The Respondent deliberately copied the Complainant’s company details, history, and visual identity to create a website that mirrors the Complainant’s genuine one. The purpose of such imitation is clearly to mislead Internet users into believing that the website is operated by or affiliated with the Complainant. The website’s commercial nature, offering goods identical to those of the Complainant, demonstrates that the Respondent is attempting to attract users for commercial gain by creating a likelihood of confusion with the Complainant’s mark.

The Complainant requests the transfer of the disputed domain name.

The Respondent

The Respondent did not reply to the Complainant’s contentions.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

1) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights;

2) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

3) that the disputed domain name has been registered or is being used in bad faith.

The Panel will further analyze the potential concurrence of the above circumstances.

Moreover, the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and, where appropriate, will decide consistent with the consensus views captured therein.

Identical or Confusingly Similar

According to paragraph 4(a)(i) of the Policy, it should be established that the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights.

The Complainant has demonstrated ownership of its AUTODOC trademark in various jurisdictions, including in Ukraine, where the Respondent resides. Therefore, the Panel is satisfied that the Complainant has registered trademark rights in the AUTODOC mark. See WIPO Overview 3.0, section 1.2.1.

With the Complainant’s rights in the AUTODOC trademark established, the remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to the Complainant’s mark.

The first element functions primarily as a standing requirement, and the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview 3.0, section 1.7. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark AUTODOC, since it reproduces it in its entirety and is clearly recognizable in the disputed domain name. The mere addition of the geographical abbreviation “USA” does not change the overall impression of the mark in the domain name, nor does the “.com” suffix. See WIPO Overview 3.0, sections 1.7 and 1.8. Bearing that in mind, the Panel accordingly holds that the disputed domain name is confusingly similar to the Complainant’s trademark AUTODOC.

The generic Top-Level Domain “.com” should generally be ignored when assessing confusing similarity as established by prior UDRP decisions.

The Panel therefore concludes that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, and the requirement under paragraph 4(a)(i) of the Policy is satisfied.

Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of “proving a negative”, in particular as the evidence needed to show the Respondent’s rights or legitimate interests is often primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name to meet the requirements of paragraph 4(a)(ii) of the Policy.

In the instant case, the Complainant asserts that the Respondent is not authorized by the Complainant to use its trademark. The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that the term “autodocusa” is the Respondent’s name or that the Respondent is commonly known under this name. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the trademark, or to apply for or use any domain name incorporating the trademark.

The use of the domain name does not qualify as a bona fide offering under UDRP. On the opposite, the Respondent’s website misrepresents itself as belonging to the Complainant. It uses the Complainant’s company name and address, reproduces the Complainant’s corporate history, and presents itself as an official AUTODOC platform. The website’s design, color scheme, and content closely mimic those of the Complainant’s legitimate website, reinforcing the false impression of an authorized association.

The contact information provided on the Respondent’s website (an email address “benautos730@gmail.com”) and the use of fictitious executive names taken from the television series Suits indicate that the Respondent is operating under a false identity. The Complainant’s attempts to reach the Respondent, including a cease-and-desist communication, resulted in no substantive response, apart from a call with a self-identified “programmer” located in Ghana, who disclaimed responsibility for the site and was unable to identify the registrant.

These circumstances clearly demonstrate that the Respondent is not commonly known by the disputed domain name, nor is it making any legitimate noncommercial or fair use of it. Rather, it is intentionally misleading consumers and diverting Internet traffic for commercial purposes.

Therefore, the Panel finds that the Complainant has established a strong prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is established, the burden shifts to the Respondent to demonstrate rights or legitimate interests under paragraph 4(c) of the Policy.

The Respondent has not provided any evidence to show that it has any rights or legitimate interests in the disputed domain name. Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.

The Complainant’s trademark registrations significantly predate the registration date of the disputed domain name. The evidence demonstrates that the Complainant’s “AUTODOC” trademarks were registered and well known long before the Respondent’s registration of the disputed domain name in March 2024. The Complainant’s marks are distinctive and widely recognized in the automotive parts sector across Europe and internationally.

The Respondent’s incorporation of the Complainant’s mark in its entirety, combined with the addition of the geographical term “USA”, suggests actual knowledge of the Complainant’s business and brand at the time of registration. It is inconceivable that the Respondent independently selected the domain name without awareness of the Complainant, given the mark’s distinctiveness and the duplication of AUTODOC’s website content, including corporate history and contact details.

Therefore, under this Panel’s view, the Respondent’s choice of the disputed domain name cannot have been accidental and must have been influenced by the fame of the Complainant and its earlier trademarks. Accordingly, the Panel finds that the disputed domain name was registered in bad faith.

The evidence shows that the Respondent also has used the disputed domain name in an attempt to attract Internet users for commercial gain by creating confusion with the Complainant’s trademark.

The disputed domain name resolves to a website that imitates the Complainant’s official website in nearly every aspect, in particular, name, content, layout, and even visual presentation. The website offers identical products, uses the Complainant’s registered company name and address, and falsely presents itself as an official branch of the Complainant, thereby creating a likelihood of confusion among Internet users.

The Respondent’s conduct satisfies paragraph 4(b)(iv) of the Policy, which provides that bad faith exists where the respondent “intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement”.

Further indicators of bad faith include:

• the use of fictional company officers and false contact information;
• the use of a free email address (gmail.com) instead of a corporate domain, suggesting lack of legitimacy;
• the failure to respond to cease-and-desist letters; and
• the misappropriation of the Complainant’s company history and address, demonstrating deliberate deception.

Such conduct reflects a deliberate attempt to exploit the reputation of the Complainant’s trademark for commercial gain, and to mislead consumers into believing that the Respondent’s website is an official extension of the Complainant’s business in the United States.

The Panel finds that these facts constitute both registration and use in bad faith under paragraph 4(a)(iii) of the Policy.