RockAuto LLC v Cheyenne Daraujo, Rock Auto Florida

WIPO Case No. D2024-4123

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

RockAuto LLC v. Cheyenne Daraujo, Rock Auto Florida

Case No. D2024-4123

1. The Parties

Complainant is RockAuto LLC, United States of America (“United States”), internally represented.

Respondent is Cheyenne Daraujo, Rock Auto Florida, United States.

2. The Domain Name and Registrar

The disputed domain name <rockautoflorida.com> (hereinafter “Disputed Domain Name”) is registered with

Squarespace Domains II LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2024.
On October 8, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Disputed Domain Name. On October 8, 2024, 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 (Redacted for Privacy) and contact information in the Complaint.
The Center sent an email communication to Complainant on October 9, 2024, providing the registrant and
contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the

Complaint. Complainant filed an amendment to the Complaint on October 16, 2024.

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 Respondent of the Complaint, and the proceedings commenced on October 17, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2024. Respondent did not submit any response. Accordingly, the

Center notified Respondent’s default on November 7, 2024.

The Center appointed Lawrence K. Nodine as the sole panelist in this matter on November 12, 2024. The
Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

Complainant alleges that since 2000 it has used the trademark ROCK AUTO (hereinafter the “Mark”) in connection with the sale of automobile parts throughout the United States, including Florida.

Complainant owns United States Trademark Registration No. 5339980 (registered on November 21, 2017)
for ROCKAUTO and United States Trademark Registration No. 2866795 (registered on July 27, 2004) for the
RA ROCKAUTO.COM plus design.

Respondent registered the Disputed Domain Name on May 16, 2022. Complainant alleges that on the associated website Respondent offers to sell automobile parts.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the
Disputed Domain Name.

Notably, Complainant alleges that it “spends millions of dollars advertising its name.” Complainant also contends that the Mark combines two unrelated words – “Rock” and “Auto” – and that “[i]t is inconceivable the respondent would compound these two unrelated words, to compete in the same industry, without knowledge of Complainant’s brand.”

B. Respondent

Respondent did not respond the Complaint.

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
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 entirety of the Mark is reproduced and recognizable within the Disputed Domain Name. The addition of “florida” 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. See also Compagnie Générale des

Etablissements Michelin v. Pokey Tool, ValueTire LLC, WIPO Case No. D2022-2937 (<michelinflorida> confusingly similar to MICHELIN).

Accordingly, the Disputed Domain Name is confusingly similar to the Mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.

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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 Respondent may demonstrate rights or legitimate interests in a Disputed Domain Name.

Although the overall burden of proof in UDRP proceedings is on 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

Respondent. As such, where a complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to 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 Respondent fails to come forward with such relevant evidence, Complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds Complainant has established a prima facie case that 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.

Respondent is using the inherently misleading Disputed Domain Name, incorporating Complainant’s distinctive trademark and a geographic term, in connection with a website that, like Complainant, offers to sell automobile parts. In these circumstances, using the Disputed Domain Name in association with a website that is directly competitive with Complainant is not a legitimate use under the Policy. While the Panel notes that Respondent is “Cheyenne Daraujo, Rock Auto Florida” as disclosed by the Registrar, there is no evidence before the Panel showing that Respondent has been commonly known by the Disputed Domain Name for the purposes of the Policy.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

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 finds that Respondent registered the Disputed Domain Name in bad faith. Complainant has not submitted any evidence to substantiate its allegation that it was well known in 2022, when Respondent registered the Disputed Domain Name. However, the Panel finds that the combination of “rock” and “auto” is arbitrary and distinctive – the word “rock” has no descriptive connotations with respect to automobile parts. Moreover, Respondent offers no explanation for why he selected the Disputed Domain Name to serve as the platform to engage in the same business as Complainant – the sale of automobile parts. Consequently, based on the balance of probabilities, the Panel finds that it is likely that Respondent was aware of and targeted Complainant and its rights when it registered the Disputed Domain Name.

The Panel also finds that Respondent uses the Disputed Domain Name in bad faith. Respondent deliberately causes and exploits the confusion of Internet users to compete with Complainant for commercial gain. This is bad faith use under Policy paragraph 4(b)(iv).

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

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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 <rockautoflorida.com> be transferred to Complainant.

/Lawrence K. Nodine/
Lawrence K. Nodine
Sole Panelist
Date: November 22, 2024