Jasper Engine Exchange, Inc. v prashanth vasa

WIPO Case No. D2025-1585

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Jasper Engine Exchange, Inc. v. prashanth vasa

Case No. D2025-1585

1. The Parties

The Complainant is Jasper Engine Exchange, Inc., United States of America (“United States”), represented by Dentons Bingham Greenebaum LLP, United States.

The Respondent is prashanth vasa, India.

2. The Domain Name and Registrar

The disputed domain name <jasper-engines.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2025. On April 22, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 22, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 23, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 24, 2025.

The Center verified that the Complaint together with the amendment to the Complaint satisfied 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 the Respondent of the Complaint, and the proceedings commenced on May 6, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2025. The Respondent sent an email communication to the Center on April 24, 2025.

The Center appointed Alistair Payne as the sole panelist in this matter on June 3, 2025. The Panel finds 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.

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4. Factual Background

The Complainant based in Indiana, has operated since 1954 and has become one of the largest remanufacturers of engines and transmissions in the United States. It owns United States trade mark registration 5164868 registered on March 21, 2017 for JASPER and also United States trade mark registration 2593814 for the combined word and device mark JASPER ENGINES & TRANSMISSIONS GO! registered on July 16, 2002. It also owns the domain name <jasperengines.com> from which it operates its main website.

The disputed domain name was registered on August 11, 2024. It resolves to a website which promotes engines and transmissions under the name “Jasper Engines LLC” and sets out the same physical address as the Complainant’s as the location of its premises.

5. Parties’ Contentions
A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that it owns registered trade mark rights as noted above and that the disputed domain name is confusingly similar to its JASPER and JASPER ENGINES & TRANSMISSIONS GO! combined word and logo mark registrations. It says that the disputed domain name wholly incorporates the JASPER mark, a hyphen and the word “engines”. Therefore, according to the Complainant, the disputed domain name is confusingly similar to either of the Complainant’s registered trade marks.

The Complainant submits that it has not licensed or authorised the Respondent to use its registered trade marks and has found no evidence that the Respondent has been known as, or makes a bona fide offering of goods or services under, the trade mark JASPER ENGINES. It says that the Respondent has not filed an application to register the trade mark JASPER-ENGINES with the United States Patent and Trademark

Office and that a search of the Internet using the Google search engine and the search string “DOMAINS BY
PROXY, LLC” and “jasper engines” returned no results showing use of JASPER-ENGINES by the
Respondent.

The Complainant further submits that the disputed domain name is being used to advertise and sell engines and transmissions and that these are the same type of goods that the Complainant offers for sale. It says that the Respondent is using the disputed domain name to communicate to visitors the impression that the Respondent is “Jasper Engines LLC”, in an attempt to impersonate the Complainant and makes various promotional statements and copies factual details, such as the Complainant’s physical address to

masquerade as if it is the Complainant. The Complainant submits that this is not bona fide use and is rather a fraudulent use for the Respondent’s own commercial purposes and is not consistent with the Respondent having rights or legitimate interests in the disputed domain name.

In terms of registration in bad faith, the Complainant says that the disputed domain name was registered some years after it registered the most recent of its trade mark registrations noted above and close to 70 years after it commenced business as Jasper Engine Exchange, Inc. in 1954. This combined with the use of the disputed domain name to resolve to a website at which the Respondent appears to masquerade as if it is the Complainant, using the name Jasper Engines LLC and the Complainant’s address details demonstrates, according to the Complainant, that the Respondent was aware of the Complainant’s trade marks and

business at the date of registration of the disputed domain name.

The Complainant asserts that the Respondent combined JASPER with ENGINES because it sought to trade off the Complainant’s goodwill associated with the word element JASPER in the context of engines and transmissions. It says that the circumstances of the use to which the Respondent has put the disputed domain name to advertise and sell engines and transmissions, represents paradigmatic bad faith

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registration. It submits that the Respondent has sought, for its own commercial gain, to create a likelihood of confusion with the Complainant’s composite mark or standard character word mark for JASPER as to the source, sponsorship, affiliation, or endorsement of the disputed domain name and of the products and

services promoted at the website to which it resolves and that this amounts to use in bad faith in terms of the

Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. (The brief email communication dated April

24, 2025, did not include any substantive arguments.)

6. Discussion and Findings
A. Identical or Confusingly Similar

It is well accepted that the first 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 trade mark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trade mark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The Panel finds the mark is recognisable within the disputed domain name. Accordingly, the disputed
domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section
1.7.

Although the addition of other terms here the common English word “engines” and a hyphen may bear on assessment of the second and third elements, the Panel finds the addition of such term to the Complainant’s JASPER mark does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. In addition, the Panel finds that the disputed domain name is confusingly similar to the JASPER ENGINES & TRANSMISSIONS GO! word mark which is the dominant element in its combined word and device mark for JASPER ENGINES &

TRANSMISSIONS GO!.

The Panel finds the first element of the Policy 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 often 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 satisfied the second element. WIPO Overview 3.0, section
2.1.

The Complainant has submitted that it has not licensed or authorised the Respondent to use its registered trade marks and has found no evidence that the Respondent has been known as, or makes a bona fide offering of goods or services under, the trade mark JASPER ENGINES. It has asserted that the Respondent

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has not filed an application to register the trade mark JASPER-ENGINES with the United States Patent and Trademark Office and that a search of the Internet using the Google search engine and the search string “DOMAINS BY PROXY, LLC” and “jasper engines” returned no results showing use of JASPER-ENGINES by the Respondent.

The Complainant has further submitted that the disputed domain name is being used to advertise and sell engines and transmissions and that these are the same type of goods that the Complainant offers for sale. It has suggested that the Respondent is using the disputed domain name to communicate to visitors the

impression that the Respondent is “Jasper Engines LLC”, in an attempt to impersonate the Complainant and that the Respondent has made various promotional statements and has copied factual details, such as the Complainant’s physical address, in order to masquerade as if it is the Complainant. The Complainant has submitted that this is not a bona fide use and is rather a fraudulent use for the Respondent’s own commercial purposes and is not consistent with the Respondent having rights or legitimate interests in the disputed
domain name.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel finds the second element 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.

The Panel notes that the disputed domain name was registered some years after the Complainant registered the most recent of its trade mark registrations for JASPER as noted above and close to 70 years after it commenced business as Jasper Engine Exchange, Inc. in 1954. The Complainant’s JASPER mark is

unusual and distinctive in relation to engines and transmissions and has been used by the Complainant for many years in the United States. This combined with the fact that the disputed domain name resolves to a website at which the Respondent appears to masquerade as if it is the Complainant, using the name Jasper Engines LLC with the Complainant’s address details leads to a strong inference that the Respondent was aware of the Complainant’s trade marks and business at the date of registration of the disputed domain
name.

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.

Under paragraph 4(b)(iv) of the Policy there is evidence of registration and use of the disputed domain name in bad faith where a Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the website.

In this case the Respondent has used the disputed domain name to resolve to a website at which it promotes engine and/or transmission products and services which are very similar to the Complainant’s products and services. It is trading, allegedly as a corporate entity, under the name “Jasper Engines LLC” which is very similar to the Complainant’s name and marks and which incorporates the Complainant’s distinctive JASPER mark. In addition, the website incorrectly suggests that the Respondent trades from the Complainant’s

physical address. It is apparent that the Respondent, although based in India, has sought to use the
disputed domain name in trade aimed at the United States marketplace for its own commercial purposes to
create a likelihood of confusion with the Complainant’s JASPER mark as to the source, sponsorship,

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affiliation, or endorsement of the disputed domain name and of the products and services promoted at the
website to which it resolves. This is paradigmatic bad faith use as suggested by the Complainant and

amounts to evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

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 name <jasper-engines.com> be transferred to the Complainant.

/Alistair Payne/
Alistair Payne
Sole Panelist
Date: June 17, 2025