AutoZone Parts, Inc. v. Domain Administrator
Claim Number: FA0907001274395
Complainant is AutoZone Parts, Inc. (“Complainant”), represented by Kitty
Bina of Alston & Bird, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <autozoneparts.com>, registered with Moniker.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically July 17, 2009; the National Arbitration Forum received a hard copy of the Complaint July 20, 2009.
On July 17, 2009, Moniker confirmed by e-mail to the National Arbitration Forum that the <autozoneparts.com> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker verified that Respondent is bound by the Moniker registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 27, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 17, 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 postmaster@autozoneparts.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 24, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <autozoneparts.com>, is confusingly similar to Complainant’s AUTOZONE mark.
2. Respondent has no rights to or legitimate interests in the <autozoneparts.com> domain name.
3. Respondent registered and used the <autozoneparts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AutoZone Parts, Inc., operates a business that sells automotive parts and accessories. Complainant registered its AUTOZONE mark with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 1,496,638 issued July 19, 1988). Complainant operates an official website resolving from its <autozone.com> domain name in connection with its sale of automobile parts and accessories.
Respondent registered the disputed domain name March 21, 2004. The disputed domain name resolves to a series of parking pages that display links to competing third-party automotive parts websites under the heading “Related Searches.”
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 provided evidence of the registration of its AUTOZONE mark with the USPTO on July 19, 1998 (Reg. No. 1,496,638). The Panel finds that Complainant’s registration of the mark with the USPTO establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
Complainant asserts that Respondent’s disputed <autozoneparts.com> domain name
contains Complainant’s AUTOZONE mark with the addition of the descriptive term
“parts” and the generic top-level domain “.com.” The Panel finds these additions do not affect
the similarity between the disputed domain name and Complainant’s AUTOZONE
mark. Thus, the Panel finds the disputed
domain name is confusingly similar to Complainant’s AUTOZONE mark under Policy
¶ 4(a)(i). See Miller
Brewing
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleged that Respondent does not have rights to or legitimate interests in the disputed domain name. Complainant is required to make a prima facie showing in support of its allegations. When Complainant meets this burden, the burden of proof shifts to Respondent to show that it has such rights to or legitimate interests. The Panel finds that Complainant made a prima facie case.
Respondent failed to file a response. Due to Respondent’s failure to respond to
these proceedings, the Panel may assume Respondent does not possess rights or
legitimate interests in the disputed domain name. The Panel, however, still examines the record
to determine whether the record suggests that Respondent has such rights or
legitimate interests in the disputed domain name pursuant to Policy ¶
4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case
under the Policy, the burden effectively shifts to Respondent. Respondent’s
failure to respond means that Respondent has not presented any circumstances
that would promote its rights or legitimate interests in the subject domain
name under Policy ¶ 4(a)(ii).”); see also
Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30,
2002) (“[B]ased on Respondent's failure to respond, it is presumed that
Respondent lacks all rights and legitimate interests in the disputed domain
name.”).
Complainant contends that Respondent’s disputed domain name resolves to a series of parking websites that display links to competing automotive parts third-party websites under a heading entitled “Related Searches.” The Panel finds that Respondent’s use of the disputed domain name to provide competing links to third-party websites is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).
Additionally, Complainant asserts that Respondent is not commonly known by the disputed domain name and produced evidence of the WHOIS information, listing the registrant as “Domain Administrator,” which bears no characteristics relating to the disputed domain name. Thus, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant also asserts that Respondent acted in bad faith in registering and using the disputed domain name, which was registered on March 21, 2004, to redirect Internet users to competing websites offering automobile products. Respondent does this through the use of a series of parking pages resolving from the disputed domain name. The Panel finds Respondent’s competing use of the disputed domain name constitutes disruption, which is evidence that supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Furthermore, Complainant asserts that Respondent is presumably receiving compensation in the form of click-through fees for its use of the competing links displayed on the series of websites resolving from the confusingly similar disputed domain name. The Panel agrees with Complainant’s presumption and finds that Respondent is attempting to profit by creating a likelihood of confusion as to Complainant’s source, sponsorship or affiliation with the disputed domain name. This also supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to Respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that Complainant satisfied the elements of ICANN 0Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <autozoneparts.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 11, 2009.
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