ALLDATA LLC v. Caiyong c/o Caiyong Caiyong
Claim Number: FA0712001118372
Complainant is ALLDATA LLC (“Complainant”), represented by Jason
D. Rosenberg, of Alston & Bird, LLP,
The domain name at issue is <alldatacd.com>, registered with Bizcn.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On December 14, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 3, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@alldatacd.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <alldatacd.com> domain name is confusingly similar to Complainant’s ALLDATA mark.
2. Respondent does not have any rights or legitimate interests in the <alldatacd.com> domain name.
3. Respondent registered and used the <alldatacd.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, ALLDATA LLC, is a wholly-owned subsidiary of AutoZone, Inc. Complainant is a leading provider of automotive repair information and solutions to thousands of professional automotive service shops. Complainant offers a variety of software and informational products, including: ALLDATA REPAIR (original equipment manufacturer (“OEM”) repair information), ALLDATA MANAGE (shop management system software), ALLDATA MARKET (customer relations software), ALLDATA COLLISIONCONNECT (OEM collision repair information), and ALLDATA DIY (individual consumer subscription software offering repair articles and instructions). Since 1989, Complainant has conducted its operations under the ALLDATA mark (Reg. No. 1,556,655 issued September 19, 1989), which was registered with the United States Patent and Trademark Office (“USPTO”). Complainant has marketed its products and services under the <alldata.com> domain name, which has been owned and operated by Complainant since 1994.
Respondent registered the <alldatacd.com>
domain name on
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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; and
(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.
Complainant has established sufficient rights in the ALLDATA
mark pursuant to Policy ¶ 4(a)(i) through registration
of the mark with the USPTO. See
Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Respondent’s <alldatacd.com> domain name incorporates Complainant’s entire ALLDATA mark while adding the generic term “CD,” which commonly stands for “compact disc.” The addition of a generic term to a mark generally does not render a disputed domain name distinct for purposes of a Policy ¶ 4(a)(i) analysis. In this case, the generic term “CD” fails to differentiate the disputed domain name as the term arguably applies to Complainant’s business. Moreover, the disputed domain name’s dominant feature remains Complainant’s ALLDATA mark. Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has asserted that complainant lacks rights and legitimate interests in the <alldatacd.com> domain name. Once Complainant sets forth a prima facie case supporting its allegations, as it has in this case, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent has failed to respond to the Complaint, thus the Panel may conclude that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed). However, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Respondent’s primary use of the <alldatacd.com> domain name is to resolve to a website
that offers pirated copies of Complainant’s products. The Panel finds that such a commercial use of
the disputed domain name does not constitute a bona fide offering of
goods or services under Policy ¶ 4(c)(i), or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Inversiones HP Milenium
Respondent offers no evidence to
suggest that it is commonly known by the <alldatacd.com>
domain name. Moreover, the WHOIS domain
name registration information provides no contrary assertion. Finally, there is no evidence that Respondent
ever obtained a license to use Complainant’s mark. Therefore, the Panel finds that Respondent
lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb.
Forum Feb. 5, 2001) (finding no rights or legitimate interests because the
respondent is not commonly known by the disputed domain name or using the
domain name in connection with a legitimate or fair use); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <alldatacd.com>
domain name to resolve to a website which purports to offer pirated copies of
Complainant’s products. The Panel finds
that Respondent engaged in bad faith registration and use of the disputed
domain name under Policy ¶ 4(b)(iii), as Respondent
primarily intended to disrupt Complainant’s business. See Wall v. Silva, FA 105899 (Nat. Arb.
Forum Apr. 29, 2002) (finding that despite respondent’s claim that it used the <josephinewall.com> domain name,
which was identical to complainant’s JOSEPHINE WALL mark, to help complainant
become popular in the United States, the Panel found that the respondent’s use
of the domain name to sell the complainant’s artwork in the United States
constituted disruption pursuant to Policy ¶ 4(b)(iii)); see also G.D.
Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum
Respondent’s use of Complainant’s ALLDATA mark within the disputed domain name creates a likelihood of confusion as to Complainant’s source, affiliation, and endorsement of Respondent’s website and the disputed domain name. By offering pirated copies of Complainant’s products, Respondent is clearly cultivating such confusion for commercial gain. Thus, the Panel finds that Respondent has engaged in bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”); see also Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alldatacd.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: January 17, 2008
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