Great Plains Ventures, Inc. v. CARQUEST
FORUM Claim Number: FA2312002076391
February 14, 2024
RATIO
Relief was denied to the Complainant in this case on the grounds that it had failed to establish that the Respondent had registered the domain name <gpi.com> in bad faith and that the Respondent had no legitimate rights or interests in operating such domain name.
BACKGROUND
Great Plains Ventures, Inc. (“the Complainant”), has alleged that it has continually used the GPI trademark since 1972 and obtained multiple trademark registrations for the GPI marks, starting from 1977. According to the Complainant, the Respondent is an automotive aftermarket parts provider that does not market or sell any products or services under the name GPI or any similar name, and therefore has no legitimate rights or interests in the disputed domain name.
CARQUEST (“the Respondent”) has contended that it has long been connected with GPI as an acronym for General Parts, Inc., and has made good faith use of the disputed domain name <gpi.com> for decades, which it had procured in 2010 from General Parts, Inc. The Respondent claims to use the subdomain openwebs.gpi.com to administer an e-commerce website for its B2B customers. The Respondent has also used the disputed domain name through various subdomains, for other external and internal uses. The Respondent also owned the trademark GPI & Design under registration no. 994166, registered with the USPTO for four decades, starting from 1974. The registration lapsed in 2016, but till then, each time the Respondent renewed its domain name, it had the registration for the GPI & Design mark. After the trademark registration lapsed, the Respondent simply continued to use a long-held legacy domain name made up of an acronym directly tied to Respondent and its affiliates.
The Respondent in turn alleged that Complainant was aware of the disputed domain name’s association with the Respondent, but did not adequately conduct research before filing the complaint. Moreover, after the complaint was filed, the Respondent produced legitimate evidence of its use of the disputed domain name, but even then, the Complainant did not withdraw its complaint. The Respondent sought a finding of Reverse Domain Name Hijacking (“RDNH”) against the Complainant.
After the Respondent’s submissions, the Complainant made additional submissions that the Respondent's alleged bad faith in registering the disputed domain name should be determined as of 2010, because the transfer of a domain name to a third-party, amounts to a new registration and that successive renewals of a domain name constitute re-registrations. The Complainant further alleged that the Respondent stopped using the GPI mark in commerce by the time it re-registered the disputed domain name after 2016, and 2011 was the last year that evidence of use in commerce of the GPI mark was recorded with the USPTO. The Complainant also highlighted the communications between the parties to stay the proceeding and try and amicably resolve the matter, with the Complainant even offering to buy the disputed domain name, but the Respondent chose to file its response and accused the Complainant of RDNH.
The Respondent then made additional submissions that General Parts, Inc. operated as CARQUEST in 2010. Later on, Advance Auto Parts, Inc. acquired General Parts, Inc. in 2014, but the nature of business conducted through the disputed domain name has remained consistent. There has been no break in the chain of possession of the disputed domain name <gpi.com>. According to the Respondent, it was not required to have knowledge of the Complainant’s GPI marks because a) that mark is a commonly used three-letter acronym and (b) the Respondent already owned rights in or had an interest in GPI or was known by GPI when the domain name was registered and renewed. The Respondent lastly stated that the Complainant had only offered a settlement proposal and did not mention a stay, much less propose or agree to one.
DECISION
The Panelist noted that an Internet search of the GPI acronym does not yield any search results related to Respondent or its affiliates. The Panelist reviewed the matter in accordance with the UDRP Rules.
Identical and/or confusingly similar
The Complainant has established that it owns a registered trademark on GPI, and that the disputed domain name entirely contains such trademark of the Complainant. Therefore, the disputed domain name was indeed identical or confusingly similar to the Complainant’s trademark and therefore the first element in a domain dispute matter was satisfied.
Rights or legitimate interests
The Panelist found that the Respondent uses the subdomain openwebs.gpi.com to administer an e-commerce website for its B2B customers, and it also uses the disputed domain name through various other subdomains for external and internal uses. The Panelist was satisfied that the Respondent had brought proof of a genuine business plan utilizing the disputed domain name and that it was not used to infringe the Complainant’s rights.
Further, the Panelist accepted that GPI is an acronym for General Parts, Inc, as well as General Parts International, Inc. In fact, when the disputed domain name was registered, General Parts, Inc., had long used GPI as a name and a trademark, and General Parts is still referred as "GPI" on Advance's website and in press releases, as well as Advance's SEC filings, and in many third-party articles and other media. The Complainant had failed to establish the distinctiveness of the GPI trademark in its favour.
Accordingly, the Complainant had not established that the Respondent has no rights or legitimate interests in the disputed domain name, and had consequently failed to satisfy the second element in a domain dispute matter.
Registration and Use in Bad Faith
Even though consequent to the aforementioned finding, this third finding is not required, the Panelist considered its merits. The Respondent has been able to establish through evidence that there has been an unbroken chain of ownership of the disputed domain. Moreover, the two parties are in wholly different areas of activity; one is a fuel transfer pumps, fuel meters, flowmeters, and industrial instrumentation for fluid transfer pump and liquid flowmeters company, and the other an automotive aftermarket company. Therefore, it is implausible that the Respondent deliberately registered the disputed domain name to cause confusion with the Complainant, or attract the Complainant’s customers. Lastly, the Respondent is not directly using the disputed domain name <gpi.com>, but in good faith via subdomains and in other manners, and there are many third parties globally who own trademark registrations for GPI in connection with a variety of goods and services.
Therefore, the Complainant had failed to satisfy the third element in a domain dispute matter.
ORDER
Having failed to establish all the three elements necessary in a domain disputes matter, relief was denied to the Complainant.
REVERSE DOMAIN NAME HIJACKING (“RDNH”)
The Panelist denied the Respondent’s prayer for a finding of RDNH, since they concluded that the present action was not brought by the Complainant in bad faith. Even though the letters GPI are derived from General Parts, Inc., the Respondent’s use of the disputed domain via subdomains and in other manners, was not in public facing manner. Moreover, the Complainant had made good faith efforts to resolve the dispute amicably, and therefore, a finding of RDNH was unnecessary.
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