LawnRacing.com UDRP: Not a chance of fat-fingering this domain!

Optimal Processing, LLC d/b/a Lund Racing v. alfredo melendrez / speedline motorsports

Claim Number: FA2501002134002

PARTIES

Complainant is Optimal Processing, LLC d/b/a Lund Racing (“Complainant”), represented by Tyler R. Marandola of Duane Morris, LLP, Pennsylvania, USA. Respondent is alfredo melendrez / speedline motorsports (“Respondent”), California, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is lawnracing.com, registered with GoDaddy.com, LLC.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge have no known conflict in serving as Panelist in this proceeding.

Karen J. Bernstein as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 7, 2025; Forum received payment on January 7, 2025.

On January 8, 2025, GoDaddy.com, LLC confirmed by e-mail to Forum that the lawnracing.com domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

Also, on January 8, 2025, Forum sent a deficiency letter to the Complainant and attached the Registrar’s email Verification inviting Complainant to Amend the Complaint to properly identify the Respondent and its contact information.

Accordingly, on January 9, 2025, Complainant timely submitted its Amended Complaint to Forum electronically.

On January 9, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 2025 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@lawnracing.com. Also on January 9, 2025, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

Pursuant to Forum Supplemental Rule 6, Respondent requested a four-day extension of the time to submit its Response to Forum until February 3, 2025, which Forum accepted. Accordingly, a timely Response was received by Forum and determined to be complete on February 3, 2025.

On February 4, 2025, pursuant to the Parties’ requests to have the dispute decided by a single-member Panel, Forum appointed Karen J. Bernstein as Panelist.

Complainant submitted an Additional Submission, which was received and determined to be compliant on February 4, 2025.

Respondent submitted an Additional Submission, which was received and determined to be compliant on February 5, 2025.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Since at least as early as 2005, Complainant Optimal Processing, LLC d/b/a Lund Racing (“Complainant”) has used the LUND and LUND RACING trademarks and its website (created in 2006) located at lundracing.com in connection with selling goods and services in the field of aftermarket tuning of automobiles, and in particular in connection with car tuning and customization services, as well as related goods and services, including car performance parts. As a result, Complainant’s unregistered LUND RACING mark has been used continuously for at least 20 years and has developed secondary meaning in the minds of the public as the sole source identifier for the sale of car tuning and car performance parts.

2. Through the lundracing.com website, customers can order certain aftermarket mechanical parts to optimize their cars, as well as custom tuning files, which are software files that can be installed (or “flashed” in tuning parlance) onto the customer’s vehicle using a hardware device that plugs into the car. One such hardware device is a “Remote Tuning Device” or RTD.

3. Complainant claims to have racked up tens of thousands of followers on its social media channels and has more than 40 authorized dealers throughout the United States and internationally (with two dealers in Canada and one in Kuwait) who promote and sell products and services under the LUND RACING Mark.

4. Complainant states that in the last six years alone (i.e., since 2019), it has earned more than $20 million selling goods and services in connection with the LUND RACING Mark and it has garnered substantial earned media discussing LUND RACING branded products and services.

5. Complainant claims that the domain name, lawnracing.com (the “Disputed Domain Name”) is confusingly similar to Complainant’s LUND RACING mark because it wholly incorporates a close phonetic equivalent of Complainant’s LUND RACING Mark. Specifically, LUND and LAWN vary only by two letters, and sound highly similar. Moreover, the addition of the word, Racing,” brings the Disputed Domain Name closer to Complainant’s LUND RACING mark. And, because the word, “Racing,” is associated with the core goods and services that Complainant provides, the use of the additional term “reinforces the potential for association” with Complainant’s LUND RACING mark.

6. Complainant claims that Respondent has no rights or legitimate interests in the Disputed Domain Name as Respondent is not connected or affiliated with Complainant and has not received a license or consent, express or implied, to use the LUND RACING mark in the Disputed Domain Name or in any other manner. Complainant does not sponsor or endorse the Respondent in any manner.

7. Further, Complainant states that Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services because Respondent uses the Disputed Domain Name to target Complainant by providing goods and services related to automobile tuning in direct competition with Complainant’s business, including by selling an identical RTD and other tuning products and services on its website. In addition, the only reason Respondent uses a phonetically nearly identical Disputed Domain Name is to profit off the longstanding reputation of the LUND RACING Mark and thus to get a credibility “head start” when marketing directly competitive products.

8. Complainant further states that Respondent is not making a fair or non-commercial use of the Domain Name, and is not using the Disputed Domain Name in connection with a bona fide offering of goods or services.

9. Complainant claims that the Disputed Domain Name was registered and used in bad faith because Respondent’s actions (discussed below) show it had actual or constructive knowledge of Complainant.

10. Complainant also claims that Respondent uses the Disputed Domain Name to disrupt Complainant’s business by taking advantage of the close phonetic similarity between the Disputed Domain Name and the LUND RACING mark and, prior to the filing of the Amended Complaint, the website mimicked aspects of Complainant’s business to draw an explicit connection with the LUND RACING mark, including by selling RTDs with “Lawn Racing” branding on them that looked exactly like Complainant’s LUND RACING branded RTDs in an attempt to trade on the reputation and notoriety of the LUND RACING mark.

11. The website located at the Disputed Domain Name also displayed graphics and text with a logo that featured cartoon impersonations of Lund Racing employees and referred specifically to the employees’ first names with the last name “Lawn.” The website also focused on Ford vehicles by claiming to be the “Leader in Ford Tuning Platform!!”

12. In social media, Respondent explicitly referenced Lund Racing and posted a video of someone stickering over a LUND RACING branded RTD with a Lawn Racing sticker.

13. Prior to the filing of the Amended Complaint, Complainant did not know the identity of Respondent and conveyed “cease and desist demands” through “someone” who “appeared to have a relationship” with Respondent’s business based on the “someone’s” social media history. The “someone” or “correspondent” confirmed to Complainant’s counsel that he had passed on the demands.

14. Shortly after Complainant’s “demands” were made and prior to the fling of the Amended Complaint, Respondent’s social media accounts were removed and the website’s contents were “stripp[ed] of content” from the Disputed Domain Name.

B. Respondent

1. Respondent alfredo melendrez/speedline (“Respondent”) claims he is a competitor of Complainant and that the Disputed Domain Name is not confusingly similar because the words are not phonetically similar, and Complainant cannot claim exclusive rights to the word, “Racing,” because the word, “Racing” is a generic term widely used in the automotive industry.

2. Respondent also distinguishes his business from Complainant’s by arguing that his business caters to tuning services for Ford vehicles from 1996 to the present; whereas, Complainant’s business focuses on 2011 and newer Ford models. In addition, the use of RTD tuners is a standard industry practice, and submits that the Lawn Racing RTDs do not look like Complainant’s RTDs as Respondent’s RTDs are blue; whereas, Complainant’s RTDs are orange.

3. Respondent further argues that he has promoted “Lawn Racing” and the “Lawn Racing” RTDs through social media well before he ever registered the Disputed Domain Name and before this proceeding was instituted and evidenced screenshots of a YouTube video from May 2, 2021 showing his use of “Lawn Racing” in May 2, 2021 and in a January, 2023 post on his Instagram account that promoted his Lawn Racing brand of RTDs. Further, Respondent attached a screenshot of an online retail website called, “Beefcake Racing,” which sells Lawn Racing branded RTDs and other automotive performance products, all in an effort to show that he was commonly known for the term, “Lawn Racing and that the Disputed Domain Name was registered to reflect Respondent’s established brand and online presence.

4. Respondent further claims the use of the Disputed Domain Name is a fair use because it does not specifically target only Complainant for purposes of parody, but also various other businesses and figures across the automotive tuning industry and that it is for the purpose of “making ‘waves’ with its animated puppet-style satire, rather than being a serious competitor or source of market confusion.

5. Respondent requests a finding of Reverse Domain Name Hijacking under Rule 15(e), as the Complainant knew or should have known that it had no reasonable basis for its claims and is instead using this proceeding as a means of bullying the Respondent into surrendering a lawfully registered the Disputed Domain Name.

6. As evidence of the purported bad faith behavior on the part of the Complainant, Respondent annexed to its Response a portion of Complainant’s “cease and desist demands,” which was a Cease and Desist letter that Complainant’s representative wrote to a third party who was mistakenly believed to be behind the website located at the Disputed Domain Name. The portion of the letter produced by Respondent indicates that Complainant viewed Respondent’s use of the website located at the Disputed Domain Name as defamatory and threatened court action. According to Respondent, the Cease and Desist letter (the other portion of the letter that was not produced to the Panel) explicitly threatened that this was “literally going to be the only opportunity we will extend to you to avoid what will be an aggressive litigation.” Respondent claims that such language suggests that Complainant’s primary intent in bringing this proceeding against the Disputed Domain Name is not to establish a valid trademark claim, but rather to financially pressure and intimidate the Respondent through costly litigation.

7. In addition, Respondent evidenced a screenshot of a text string between one of Complainant’s employees and the person to whom Complainant thought was behind the “Lawn Racing” name and threatened bodily harm against this other individual by telling the other person to “make cartoons” and “I’ll beat your *ss.” Respondent states that the Cease and Desist letter and the threatening texts suggests an attempt to intimidate and suppress competition rather than a legitimate concern about consumer confusion or trademark infringement. Thus, Complainant’s actions indicate an improper attempt to misuse the UDRP process to intimidate the Respondent rather than to protect legitimate trademark rights.

C. Additional Submissions

As noted above, Complainant and Respondent filed timely additional submissions, both of which elaborated on contentions advanced in the Complaint and the Response. The Panel has considered the Additional Submissions and has decided that the parties’ Additional Submissions provide no additional evidence for the Panel’s consideration. Accordingly, they will not be accepted into the record.

FINDINGS

Complainant has failed to prove the first element of the Policy.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

Does Complainant Have Standing in this Proceeding

Paragraph 4(a)(i) of the Policy functions primarily as a standing requirement. There are two parts to this requirement. The first part is to determine whether complainant has rights in its trademark, and the second part is whether the domain name is confusingly similar to complainant’s trademark.

The threshold challenge for the Complainant is that it lacks a registered trademark and does not offer persuasive evidence that its claimed unregistered LUND RACING mark has “become a distinctive identifier which consumers associate with the complainant’s goods and/or services.” See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (‘WIPO Overview 3.0’), paragraph 1.7.

In Policy terms, complainants must offer detailed and specific evidence to demonstrate that an unregistered mark has acquired distinctiveness or secondary meaning. As the consensus of panelists view that conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. Such evidence of unregistered rights in a mark include a range of factors such as: (1) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. See WIPO Overview 3.0, paragraph 1.3.

The onus is on Complainant to adduce evidence of unregistered rights in a mark and is more substantial than a complainant that owns federal trademark registration rights.

Preliminarily, the Panel conducted independent research, as it is entitled to pursuant to paragraph 10 of the Rules, and performed a Google search for “Lund,” which found that “Lund” is a family name or surname. As such, “Lund” standing alone is not inherently distinctive as identifying Complainant’s business. Indeed, where a personal name is being used as a trademark-like identifier in trade or commerce, complainant may be able to establish unregistered or common law rights in that name for purposes of standing to file a UDRP case where the name in question is used in commerce as a distinctive identifier of the complainant’s goods or services.” WIPO Overview 3.0, paragraph 1.5.2.

Here, Complainant claims unregistered or common law rights to the LUND RACING mark, so it must establish that it has trademark rights to the Lund family name by presenting evidence that consumers identify the term “Lund” exclusively or near exclusively with its products or services and that its unregistered trademark rights have garnered a sufficient level of recognition so that the mark denotes a single source to consumers. The term, “Racing” will be disregarded here as it is commonly descriptive for items that is used for racing or parts of racing vehicles. See https://www.merriam-webster.com/dictionary/racing.

In reviewing Complainant’s evidence, it offers little supporting documentation for its conclusory claims of secondary meaning. Although Complainant evidenced its social media presence, the Panel visited Complainant’s Facebook and Instagram pages only to see the posts on its social media mainly do not feature the LUND RACING mark but appear to be a series of pictures of drag race and muscle cars with descriptions about how Complainant has a team that builds aftermarket mustang sports cars for itself and others.

Further, Complainant failed to provide supporting evidence of: (1) documents that reflect the first use date of the LUND RACING mark; (2) the number of visitors to Complainant’s website located at lundracing.com since its purported first use date; (3) historical sales data to support its assertion of receiving earnings in the last six years of more than $20 million selling goods and services in connection with the LUND RACING mark; or (4) substantial evidence of its advertising.

As for unsolicited media, Complainant annexed to its Amended Complaint a handful of articles in mostly small online and print publications, except for one 2018 article in Motor Trend Magazine. The articles that featured Complainant were about how Complainant builds Mustang racing cars with no mention of Complainant’s branded RTDs or any other performance parts it sells.

In addition, the screenshot of Applicant’s website that displays its 40 authorized dealers does not evidence that such “authorized dealers” actually sell LUND RACING goods and services.

Complainant has failed to prove that the unregistered mark, LUND RACING, is a distinctive mark.

Further, the family name, “Lund” is also not the sole source identified for performance automobile accessories. The Panel uncovered a decision where the complainant with the same family name in a similar business named, Lund, prevailed in a UDRP proceeding entitled, Lund, Inc. v. 璐 蔡, FA 2093032 (Forum May 8, 2024). In its complaint, the other Lund, known as “Lund, Inc.,” described in its UDRP complaint that its LUND mark is a “premium automotive accessories brand offering high performance and stylish accessories for trucks, SUVS, CUVs and passenger cars,” which is similar to the business that Complainant operates in. As a result of this discovery, a review of the United States Patent and Trademark Office records reveals Lund, Inc. (not Complainant) is the owner of several United States trademark registrations for LUND and LUND INTERNATIONAL, and other brands in the automobile accessories field that predate Complainant’s claimed first use date by 11 and 5 years, respectively.1

Accordingly, the Panel does not accept that Complainant’s LUND RACING mark is the sole source of goods and services related to automobile performance parts and services and so Complainant cannot claim exclusive unregistered rights in LUND RACING for Policy purposes.

Is the Disputed Domain Name Confusingly Similar to

Finally, for completeness, even if Complainant were to have been found to have proven that its LUND RACING mark is distinctive, which it has not, the Disputed Domain Name is not confusingly similar to the LUND RACING mark.

The test for confusing similarity involves a side-by-side comparison of the letters, words, sound, and other aspects of the disputed domain name to the corresponding aspects of the relevant trademark. The manner in which the domain name is used, including the content of the associated website, is normally disregarded for purposes of this analysis, but in some instances, panels have taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name. See WIPO Overview 3.0

§§ 1.7; 1.15. The gTLD, in this case, “.com” is disregarded in the analysis.

The Complainant does not argue that the Disputed Domain Name and the LUND RACING mark look alike. Instead, it argues that LAWN RACING and LUND RACING are phonetically similar.

This is not the case. But for the descriptive term, “Racing,” the names are neither visually nor phonetically similar. Although the Disputed Domain Name begins with the letter (“L” for the first letter in “Lawn” and “Lund”) that is where the similarities end. The Disputed Domain Name does not look like LUND or even mean the same thing as LUND (“Lawn” versus “Lund”). Further, contrary to Complainant’s allegations, there are not two but actually three letters that differentiate the Disputed Domain Name and the LUND RACING mark. (“awn” versus “und”), and the chances are extremely low that someone would accidentally type in all three letters, “awn” versus the three letters “und” on a keyboard.

Thus, there is no phonetic similarity between the Disputed Domain Name, and the LUND RACING mark and the Disputed Domain Name is not confusingly similar to the LUND RACING mark. For completeness, the Panel also finds that from the pre-cease and desist letter screenshots of Respondent’s website located at the Disputed Domain Name that Complainant evidenced in its Amended Complaint, there was nothing in the website that specifically referred to the LUND RACING mark.

In light of the above analysis, the Panel finds that the Complainant has not demonstrated that the claimed mark LUND RACING has acquired distinctiveness in identifying goods or services associated with the Complainant and that the Disputed Domain Name is confusingly similar to LUND RACING.

Accordingly, the Panel concludes that the Complainant has failed to establish the first element of the Complaint.

Rights or Legitimate Interests

Given the Panel’s conclusion on the first element of the Complaint, it is not necessary to enter findings on the second element.

Registration and Use in Bad Faith

Given the Panel’s conclusion on the first element of the Complaint, it is not necessary to enter findings on the third element.

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be denied.

Accordingly, it is Ordered that the lawnracing.com domain name remain with Respondent.

Karen J. Bernstein Panelist

Dated: February 18, 2025