AutoZone Parts, Inc. v. DomainBonus.com c/o Alex Tesler
Claim Number: FA0810001229026
Complainant is AutoZone Parts, Inc. (“Complainant”), represented by Kitty
Bina, of Alston & Bird, LLP, Georgia,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <autozone.asia>, registered with EuroDNS
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 13, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 13, 2008.
14, 2008, EuroDNS
On October 22, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 12, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 17, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
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 <autozone.asia> domain name is identical to Complainant’s AUTOZONE mark.
2. Respondent does not have any rights or legitimate interests in the <autozone.asia> domain name.
3. Respondent registered and used the <autozone.asia> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant sells automotive parts and accessories under the
AUTOZONE mark, which Complainant registered with the United States Patent and
Trademark Office (“USPTO”) on July 14, 1992 (Reg. No. 1,700,101). Complainant has used the AUTOZONE mark
continuously in commerce since at least as early as 1987 to promote and sell
its products. Complainant operates more
than 4,000 AutoZone retail stores in the
Respondent registered the <autozone.asia> domain name on March 24, 2008. The disputed domain name resolves to a website that currently features a listing of “.asia” domain names for purchase. Until very recently, the disputed domain name resolved to a website that featured explicit, adult-oriented images and links to third-party websites, including an adult-oriented website. Respondent also indicated in several correspondences with Complainant that Respondent was offering to sell the disputed domain name to Complainant for at least $350.
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.
The Panel finds that Complainant has established rights in
the AUTOZONE mark for purposes of Policy ¶ 4(a)(i)
through its trademark registration with the USPTO. See
Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive."); see also Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
Complainant contends that
domain name is identical to its AUTOZONE mark. The <autozone.asia> domain name differs from Complainant’s mark only in that
the generic top-level domain (gTLD) “.asia” has been added to the mark. Under Policy ¶ 4(a)(i),
the addition of a gTLD is irrelevant when considering whether a domain name is
identical to a mark. See Nev.
State Bank v. Modern Ltd. – Cayman Web Dev.,
FA 204063 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <autozone.asia> domain name. Under Policy ¶ 4(a)(ii), if the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See 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); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant contends that Respondent is not commonly known
by the <autozone.asia>
domain name nor has it ever been the owner or licensee of the AUTOZONE
mark. The WHOIS record for the disputed
domain name lists Respondent as “DomainBonus.com
c/o Alex Tesler.” Additionally,
Respondent has failed to show any evidence contrary to Complainant’s
contentions. Because there is no
evidence that Respondent has ever been known by any variant on the AUTOZONE
mark, the Panel finds that Respondent is not commonly known by the <autozone.asia> domain name pursuant to Policy ¶
4(c)(ii). See Am. Online, Inc. v. World
Photo Video & Imaging Corp., FA
109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not
commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as
“Sunset Camera” and “World Photo Video & Imaging Corp.”); see also RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum
Respondent was using the <autozone.asia> domain name to host a website that featured both adult-oriented material and links to third-party websites. Complainant contends that Respondent received “click-through” fees from those third-party websites, and therefore commercially benefitted from the use of the disputed domain name. The Panel finds that none of these uses by Respondent of the <autozone.asia> domain name are either bona fide offerings of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair uses under Policy ¶ 4(c)(iii). See Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 25, 2003) (finding that the respondent had no rights or legitimate interests in a domain name that it used to redirect Internet users to an Internet directory website that featured numerous pop-up advertisements for commercial goods and adult-oriented websites); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
Respondent has, in the course of several communications with Complainant, offered to sell the disputed domain name to Complainant. An offer to sell a disputed domain name is evidence that a respondent has given up any claim to rights or legitimate interests in the domain name. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name). Therefore, the Panel finds that Respondent’s offers to sell the disputed domain name to Complainant are evidence that Respondent lacks any and all rights and legitimated interests in the <autozone.asia> domain name pursuant to Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where the respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the worldwide web would be "misleadingly" diverted to other sites).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has offered to sell the <autozone.asia> domain name to
a domain name that has value because it incorporates a trademark held by
another, and then offering to sell that domain name to that party who holds the
rights to the trademark, is evidence that the registrant has registered and is
using the domain name in bad faith.
The <autozone.asia> domain name was, and is still, directing Internet customers to Respondent’s websites that resolve from the disputed domain name. Complainant contends that this was an intentional diversion by Respondent, who accomplished it through the confusion caused by the similarity of the AUTOZONE mark and the <autozone.asia> domain name. Complainant also contends that Respondent was intentionally disrupting Complainant’s business by further diverting confused customers to third-party websites. The Panel finds that Respondent was disrupting Complainant’s business, and therefore did register and use the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business).
Complainant also contends that Respondent was gaining commercially from this diversion, through the click-through fees that Respondent was receiving from the third-party websites. The Panel agrees, and finds that Respondent was intentionally using the disputed domain name for commercial gain by creating a likelihood of confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), this use is also evidence of Respondent’s registration and use of the <autozone.asia> domain name in bad faith. See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Until recently, the website resolving from the disputed domain name also featured adult-oriented material, which itself can be evidence that a respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the complainant’s mark to post adult-oriented photographs and to publicize hyperlinks to additional adult-oriented websites evidenced bad faith use and registration of the domain name). Because of the adult-oriented material Respondent has featured on the website that resolved from the disputed domain name, as well as the website’s links to adult-oriented material on at least one other website, the Panel finds that Respondent has definitely registered and used the <autozone.asia> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (“[I]t is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques.”); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) ( “[W]hatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”); see also CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (“this association with a pornographic web site can itself constitute a bad faith”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <autozone.asia> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: December 1, 2008
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