RockAuto LLC v Zhen XingLei

WIPO Case No. D2024-4116

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

RockAuto LLC v. Zhen XingLei

Case No. D2024-4116

1. The Parties

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

The Respondent is Zhen XingLei, China.

2. The Domain Name and Registrar

The disputed domain name <rock-auto.parts> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2024. 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, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 9, 2024, 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 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 the 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. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on November 13, 2024.

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The Center appointed Steven A. Maier as the sole panelist in this matter on November 18, 2024. 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.

4. Factual Background

The Complainant is a limited liability company located in Madison, Wisconsin, United States. It is a supplier of auto parts.

The Complainant is the owner of United States trademark registration number 5339980 for the word mark
ROCKAUTO, registered on November 21, 2017 in International Class 35.

The Complainant operates a website at “ The homepage header states “Rockauto.com” and “ALL THE PARTS YOUR CAR WILL EVER NEED”.

The disputed domain name was registered on August 15, 2023.

The disputed domain name has resolved to a website headed “Welcome to Rockauto Parts”, and stating that
the operator is “America’s leading auto parts supplier” and has operated from Madison, Wisconsin since

1999.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it was established in 2000 and has continuously used the trademark name.

The Complainant submits that the disputed domain name is confusingly similar to its ROCKAUTO trademark. It contends that the disputed domain name consists of its trademark, together with an added hyphen and the generic word “parts”.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It contends that it has not authorized the Respondent to use its ROCKAUTO trademark, that the Respondent has not commonly been known by that name, and that the Respondent has no independent trademark rights corresponding to the disputed domain name.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. It contends it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant’s ROCKAUTO brand. It states that the Respondent is using the disputed domain name to create confusion with the Complainant’s trademark, and to attract Internet visitors to its own website, offering services that compete with those of the Complainant.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions

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6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the

Complainant has rights;

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

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of registered trademark rights in respect of the mark ROCKAUTO. The disputed domain name fully incorporates that mark, with the insertion of a hyphen, and the generic Top-Level Domain (“gTLD”) “.parts”, which may typically be disregarded for the purposes of

comparison. The Panel therefore finds that the disputed domain name is confusingly similar to a trademark

in which the Complainant has rights.

B. Rights or Legitimate Interests

In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has failed to file a Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. Moreover, the Panel is satisfied on the evidence that the Respondent registered and has used the disputed domain name in order to impersonate the Complainant, which cannot give rise to rights or legitimate interests on the Respondent’s part. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name comprises the Complainant’s trademark ROCKAUTO, together with the gTLD “parts”, which describes the Complainant’s business activity. Furthermore, the disputed domain name has resolved to a website which, in the view of the Panel, pretends to be that of the Complainant and

impersonates the Complainant and its business. The Panel finds, therefore, that the Respondent registered the disputed domain name in the knowledge of the Complainant’s trademark and with the intention of taking unfair advantage of the business goodwill attaching to that trademark. The Panel finds further that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain,
Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the
source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website
(paragraph 4(b)(iv) of the Policy).

The Panel finds in the circumstances that the disputed domain name has been registered and is being used in bad faith.

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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 <rock-auto.parts> be transferred to the Complainant.

/Steven A. Maier/
Steven A. Maier
Sole Panelist
Date: December 2, 2024