Standard Bearer Machines, LLC v Tyler Cruz

WIPO Case No. D2025-0046

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Standard Bearer Machines, LLC v. Tyler Cruz

Case No. D2025-0046

1. The Parties

The Complainant is Standard Bearer Machines, LLC, United States of America (“United States”), represented by War IP Law PLLC, United States.

The Respondent is Tyler Cruz, Cameroon.

2. The Domain Name and Registrar

The disputed domain name <rungubikes.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2025.
On January 8, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On January 8, 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 (The Owner(s) of Redacted for Privacy)
and contact information in the Complaint. The Center sent an email communication to the Complainant on
January 9, 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 January 13, 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 January 15, 2025. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2025. The Respondent sent an email communication to the Center on January 15, 2025. The Center sent an email communication to the Parties on January 20, 2025, regarding a possible settlement. The Complainant indicated that it was not interested in settling the case. Subsequently, the Center informed the Parties that it would proceed with Panel Appointment on February 6, 2025.

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The Center appointed Fabrizio Bedarida as the sole panelist in this matter on February 10, 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.

4. Factual Background

The Complainant in this administrative proceeding is Standard Bearer Machines, LLC., an American company. The Complainant has used the RUNGU family of trademarks in connection with the sale of bicycles and bicycle parts since November 2014.

The Complainant is, inter alia, the owner of:

United States Trademark Registration number 4735871 for the RUNGU (word) trademark, registered on May
12, 2015.

United States Trademark Registration number 6714001 for the RUNGU DUALIE (word) trademark, registered on April 26, 2022.

The Complainant is also the owner of the domain name <riderungu.com> registered on August 31, 2013.

The disputed domain name was registered on May 2, 2023. Currently the disputed domain name is not linked to an active website. However, from the submissions provided by the Complainant it appears that previously (at least on December 27, 2024), the disputed domain name resolved to a website where the

Complainant’s RUNGU trademark, as well as purported RUNGU branded products offered for sale, some at discounted prices, and the Complainant’s official product images were displayed.

On May 7, 2024, the Complainant sent a cease-and-desist letter to the Respondent asking it to cease any and all use of the disputed domain name and to transfer the same to the Complainant.

The Respondent replied on December 17, 2024, as follows:

“Thanks for getting to me. We wish to let you know we have received your email. The domain will be
available for auction to you and your client. It was our way to flip the domain.
If this is of interest to you we can choose a reliable escrow to complete the domain transfer to you.

Thanks”

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 the addition in the disputed domain name of the term “bikes”, which is the generic word for the Complainant’s goods, does not avoid confusion between the disputed domain name and the Complainant’s trademark; that the Respondent’s use of the Complainant’s trademark on its website clearly shows that Respondent was aware of Complainant’s business and offering online; and that the Respondent has admitted to purchasing the disputed domain name for the explicit purpose of reselling it.

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B. Respondent

The Respondent has made no formal reply to the Complainant’s contentions. However, the Respondent, following the Center notification to the Parties of the Commencement of Administrative Proceeding, sent the following informal email communication to the Center:

“Thanks for getting in touch . What is the way forward for the settlement?
We bought the domain name to flip it and we contacted the company for an offer .

We use the keywords to rank the domain and have never sold any item in the name of the company.”

6. Discussion and Findings

In order for the Complainant to obtain a transfer of the disputed domain names, paragraph 4(a) of the Policy requires that the Complainant must demonstrate to the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights; and
(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

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 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.

The 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 finds the RUNGU mark is incorporated entirely and recognizable 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, “bikes”, may bear on assessment of the second and third elements, the Panel finds the addition of such term 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.

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.

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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. Indeed, it appears that the Respondent bought the disputed domain name with the primary intention of reselling it to the Complainant, presumably at a price that would exceed the costs of registration of the same.

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.

In the present case, the Panel notes that Respondent was aware of the Complainant’s trademark registrations and rights to the RUNGU trademark when it registered the disputed domain name.

The disputed domain name contains in its entirety, without any authorization or approval, the Complainant’s registered RUNGU trademark, and this is the only distinctive component of the disputed domain name. Moreover, the Respondent has combined said distinctive trademark with the word “bikes”, which is directly associated with the Complainant’s products, i.e., bicycles.

In addition, the Respondent offered bicycles for sale on its website. The Respondent even listed the Complainant’s own products. It is at the least very unlikely that the Respondent, purportedly operating in the same field as the Complainant, was not aware of the existence of the Complainant’s trademarks when registering the disputed domain name.

Therefore, it is more likely than not that the Respondent, when registering the disputed domain name, had knowledge of the Complainant’s earlier rights to the RUNGU trademark.

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.

The bad faith registration of the disputed domain name is also affirmed by the fact that the Respondent has clearly registered and used the disputed domain name in an attempt to push the Complainant to buy the disputed domain name.

This is shown by the Respondent’s assertions made in its response to the cease-and-desist letter sent by the Complainant, and in the informal email sent to the Center, in which the Respondent said it had registered the disputed domain name to “flip” it (i.e., resell it) and that it contacted the company (i.e., the Complainant) for

an offer.

In addition, it appears that the Respondent’s website was used to mislead Internet users to believe that it was authorized by or at the least connected to the Complainant.

The Panel finds that the 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 <rungubikes.com> be transferred to the Complainant.

/Fabrizio Bedarida/
Fabrizio Bedarida
Sole Panelist
Date: February 21, 2025