Doggett Company, LLC v Richard Rawlings
WIPO Case No. D2024-3591
•31-10-2024
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Doggett Company, LLC v. Richard Rawlings
Case No. D2024-3591
1. The Parties
Complainant is Doggett Company, LLC, United States of America (“US”), represented by Chamberlain,
Hrdlicka, White, Williams & Aughtry, US.
Respondent is Richard Rawlings, US.
2. The Domain Names and Registrar
The disputed domain names <doggettacura.com>, <doggettaudi.com>, <doggettdodge.com>,
<doggetthyundai.com>, <doggettmercedes-benz.com>, <doggettmercedesbenz.com>,
<doggettmitsubishi.com>, and <doggettsubaru.com> are registered with GoDaddy.com, LLC (the
“Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4,
2024. On September 6, 2024, the Center transmitted by email to the Registrar a request for registrar
verif ication in connection with the disputed domain names. On September 9, 2024, the Registrar transmitted
by email to the Center its verification response disclosing registrant and contact information for the disputed
domain names that differed from the named Respondent (Registration Private Domain By Proxy, LCC) and
contact information in the Complaint. The Center sent an email communication to Complainant on
September 11, 2024, providing the registrant and contact information disclosed by the Registrar and inviting
Complainant to submit an amendment to the Complaint. Complainant f iled an amended Complaint on
September 17, 2024.
The Center verif ied that the Complaint together with the amended Complaint satisf ied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 20, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2024. Respondent did not submit any response. Accordingly, the Center notif ied Respondent’s default on October 11, 2024.
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The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on October 18, 2024. The Panel f inds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant has a multiyear history in the forklif t rental, warehousing, structural automotive parts, and associated sales businesses, currently running multiple auto and equipment dealerships in Texas and nearby states under the DOGGETT brand.
Complainant applied to register its DOGGETT marks with the US Patent and Trademark Of f ice in Classes 12, 35, 37, and 42 on May 19, 2023, (Registration Numbers 7526296 (word mark) and 7526297 (stylized writing), both of which matured to registration on October 8, 2024). The Panel notes that the US Trademark application file contains some pieces of evidence supporting the DOGGETT mark’s first use and f irst use in commerce dating back to 2012 (and for certain classes, 2017). Public web pages accessed by the Panel at “ also show references to Complainant’s operations f rom as early as 2017 in many
locations, including at least in Texas, Louisiana, and Arkansas.
The disputed domain names <doggettaudi.com>, <doggetthyundai.com>, <doggettmitsubishi.com>, and
<doggettsubaru.com> were registered February 24, 2024. The disputed domain names
<doggettacura.com>, <doggettdodge.com>, <doggettmercedes-benz.com>, and
<doggettmercedesbenz.com> were registered February 25, 2024.
All of the disputed domain names resolve either to inactive webpages or to parking pages provided by the
Registrar.
5. Parties’ Contentions
A. Complainant
To establish trademark rights for purposes of this proceeding, Complainant puts forth its 2023 applications for US Trademarks, as well as alleging that it enjoys common-law rights in the DOGGETT mark.
Complainant avers that it has prominently and extensively used, promoted, and advertised the DOGGETT marks and <doggett.com> for over 20 years and that it has been using the marks in connection with automotive dealerships since at least 2017.
Complainant alleges that it has controlled the domain name <doggett.com> since May 2, 2004, used for a website through which Complainant’s goods and services are of fered. Complainant also alleges that the <doggett.com> website is owned by an entity af f iliated with, and under 100% common control of ,
Complainant.
Complainant also alleges that, via an affiliated entity, Complainant has used the marks in the domain names <doggettford.com> and <doggettauotgroup.com> since 2018. The Complaint annexes a photo of signage prominently featuring the DOGGETT mark for one of its auto dealerships, allegedly taken in 2022.
Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.
B. Respondent
Respondent did not reply to Complainant’s contentions.
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6. Discussion and Findings
A. Identical or Confusingly Similar
It is well accepted that the f irst element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.
Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.
The Panel f inds that the mark is recognizable within the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
The Panel f inds that the f irst element of Policy paragraph 4(a) has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is of ten primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisf ied the second element. WIPO Overview 3.0, section 2.1.
Complainant alleges that Respondent has no license or authorization to use Complainant’s marks. The
Panel accepts these undisputed allegations.
Although not addressed by Complainant, it also appears that Respondent is not commonly known by the disputed domain name, and the Panel so f inds.
Having reviewed the available record, the Panel f inds that a prima facie case has been established that Respondent lacks rights or legitimate interests in the disputed domain names. Respondent has not rebutted the prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise.
The Panel f inds the second element of paragraph 4(a) of the Policy has been established.
C. Registered and Used in Bad Faith
The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
As cited in sections 3.8.1 and 3.8.2 of the WIPO Overview 3.0, while panels will not normally find bad faith on part of a respondent where a respondent has registered a domain name prior to a complainant’s trademark rights having accrued, there are certain limited circumstances where the facts of the case establish that a
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respondent’s intent in registering a domain name was to unfairly capitalize on the complainant’s nascent
(typically as yet unregistered) trademark rights.
In the present case, while the Complainant’s rights were still pending at the time of registration of the disputed domain names, the Panel notes that Respondent composed each of the disputed domain names by taking the DOGGETT mark (which Complainant has used for several years in the auto sales and auto parts business in Texas, among other locations) and adding an automotive brand name. In his registration agreements, Respondent identif ied his address as being within the same region of Texas in where Complainant’s business operations and auto dealerships are located. The Panel f inds that it is highly unlikely that Respondent registered the disputed domain names without knowledge of Complainant’s DOGGETT mark and associated businesses.
Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.
Panels have found that the non-use of a domain name (including a blank, “coming soon,” or parking page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes that Respondent targeted Complainant in each of the disputed domain names, and f inds that in the circumstances of this case the passive holding of the disputed domain names does not prevent a f inding of bad faith under the Policy.
The Panel f inds that Complainant has established the third element of paragraph 4(a) of the Policy. [1]
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <doggettacura.com>, <doggettaudi.com>, <doggettdodge.com>, <doggetthyundai.com>, <doggettmercedes-benz.com>, <doggettmercedesbenz.com>,
<doggettmitsubishi.com>, and <doggettsubaru.com> be transferred to Complainant.
/Jeffrey D. Steinhardt/
Jeffrey D. Steinhardt
Sole Panelist
Date: October 31, 2024
proceeding against Respondent by Complainant in relation to the DOGGETT marks was apparently terminated without a published decision, see Doggett Company, LLC v. Richard Rawlings, WIPO Case No. D2024-1567. The Panel is therefore unable to evaluate Complainant’s contention that bad faith should be found on that basis.
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