AutoZone Parts Inc. v. H. W. Barnes
Claim Number: FA0904001257223
Complainant is AutoZone Parts Inc. (“Complainant”), represented by Kitty W Bina, of Alston & Bird LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <autozonestore.com>, registered with Moniker Online Services, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 10, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 13, 2009.
On April 13, 2009, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <autozonestore.com> domain name is registered with Moniker Online Services, Inc. and that the Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 14, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 4, 2009 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 firstname.lastname@example.org by e-mail.
A Response was received in electronic copy on May 5, 2009 prior to the Response deadline; however no hard copy was received. The National Arbitration Forum therefore does not consider the Response to be in compliance with ICANN Rule 5.
On May 6, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
AutoZone is a leading retailer and distributor of automotive
replacement parts and accessories, operating more than 4,000 AUTOZONE branded
retail stores in the
Since at least as early as 1987, AutoZone has continuously and exclusively used the service mark and trademark AUTOZONE in connection with the sale of its automotive parts and accessories.
AutoZone also has spent millions of dollars over many years promoting and marketing its goods and services under the AUTOZONE mark, and, as a result of these collective efforts, goods and services sold under the AUTOZONE mark are recognized by the consuming public as being associated with Complainant alone.
Complainant has most recently registered its AUTOZONE trademark and service mark with the United States Patent and Trademark Office, the registration being identified as Reg. No. 3,278,988, issued August 14, 2007.
Respondent has no connection or affiliation with Complainant, nor has it at any time received from Complainant a license or consent, express or implied, to use the AUTOZONE mark in a domain name or in any other manner.
Respondent registered the domain name <autozonestore.com> on March 6, 2008.
The domain name is confusingly similar to Complainant’s AUTOZONE mark.
Respondent is currently using the domain name as the address for a series of parking pages that include links to a third party websites, including the sites of Complainant’s business competitors.
The links on Respondent’s website are pay-per-click links, so that Respondent receives revenue each time an Internet user clicks on one of the links and is redirected to a third party’s website.
Respondent’s registration and use of the disputed domain name is a blatant attempt to benefit from the goodwill and fame associated with the AUTOZONE mark.
Respondent has never used, nor even made preparation to use, the domain name in connection with any bona fide offering of goods and services, nor has it made a legitimate non-commercial or fair use of the contested domain name.
Respondent’s commercial use of the domain name in the manner described does not give rise to any bona fide rights or interests in the domain name for Respondent.
In light of the substantial and widespread fame and notoriety of the AUTOZONE mark, it is inconceivable that Respondent could have registered the disputed domain name without knowledge of AutoZone’s rights in its mark.
Such use of the domain name by Respondent constitutes bad faith registration and use of the AUTOZONE mark to attract users to a web site for the profit of Respondent in violation of ICANN Policy.
Respondent has responded to the Complaint herein by e-mail message dated May 4, 2009, which recites in pertinent part as follows – “I do not wish to contest against the Complainant, and [I] surrender the domains [sic] to the TM holder.”
Paragraph 4(a) of the Policy requires that, in the ordinary course, Complainant must prove each of the following elements in order to obtain from a Panel an order that a domain name be transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
Notwithstanding the foregoing, Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Further, Policy ¶ 3(a) provides for
the transfer of a domain name registration upon the written instructions of the
parties to a UDRP proceeding without the need for otherwise required findings
and conclusions .
Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Arb.
Respondent’s Response does not contest the material allegations of the Complaint, and, in particular, it does not contest Complainant’s request that the disputed domain name be transferred to Complainant. Thus the parties have effectively agreed in writing to a transfer of the subject domain name from Respondent to Complainant without the need for further proceedings.
Accordingly, it is Ordered that the <autozonestore.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 20, 2009
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