AutoZone Parts Inc. v. Er Bai Wu
Claim Number: FA0909001282970
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 <duralastbattery.com>, registered with Directi Internet Solutions Pvt. Ltd.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 4, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 8, 2009.
On September 5, 2009, Directi Internet Solutions Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <duralastbattery.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. 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 September 10, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 30, 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@duralastbattery.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 6, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <duralastbattery.com> domain name is confusingly similar to Complainant’s DURALAST mark.
2. Respondent does not have any rights or legitimate interests in the <duralastbattery.com> domain name.
3. Respondent registered and used the <duralastbattery.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AutoZone Parts Inc., is a retailer and
distributor of automotive replacement parts and accessories. Complainant operates more than 4,200 retail
stores in the
Respondent, Er Bai Wu, registered the <duralastbattery.com> domain name on April 20, 2008. The disputed domain name resolves to a website featuring a commercial search engine and links resolving to Complainant’s competitors in the automotive parts and accessories business.
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 contends it has established rights in the
DURALAST mark. Previous panels have
found that trademark registration with a federal trademark authority is
sufficient to establish rights in a mark.
Complainant alleges Respondent’s <duralastbattery.com> domain name is confusingly similar to Complainant’s DURALAST mark. The disputed domain name includes Complainant’s entire mark and adds the descriptive term “battery,” which describes Complainant’s automotive battery business, and the generic top-level domain (“gTLD”) “.com.” The Panel finds the addition of a descriptive term and a gTLD is insufficient to adequately distinguish the disputed domain name from Complainant’s mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel finds Respondent’s <duralastbattery.com> domain name is confusingly similar to Complainant’s DURALAST mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <duralastbattery.com> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <duralastbattery.com> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the 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.”).
Respondent is using the <duralastbattery.com> domain name to resolve to a website featuring
a commercial search engine and links to Complainant’s competitors in the
automotive parts industry. The Panel
finds this use of the confusingly similar disputed domain name is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use of the domain name under Policy ¶ 4(c)(iii). See
Jerry Damson, Inc. v.
Respondent has
offered no evidence, and there is no evidence in the record, suggesting that
Respondent is commonly known by the <duralastbattery.com> domain
name. Complainant asserts that
Respondent is not authorized to use the DURALAST mark. The WHOIS information identifies Respondent
as “Er Bai Wu.” Therefore, the Panel
finds that Respondent has not established rights or legitimate interests in the
<duralastbattery.com> domain name pursuant to Policy ¶
4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA
830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to
establish rights and legitimate interests in the <emitmortgage.com>
domain name as the respondent was not authorized to register domain names
featuring the complainant’s mark and failed to submit evidence of that it is
commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007)
(concluding a respondent has no rights or legitimate interests in a disputed
domain name where there was no evidence in the record indicating that the
respondent was commonly known by the disputed domain name).
The Panel finds
Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <duralastbattery.com> domain name resolves to a website featuring a
commercial search engine and hyperlinks relating to Complainant’s competitors
in the automotive products business.
Complainant claims that Respondent’s use of the disputed domain name
disrupts Complainant’s automotive products business because Internet users
looking to buy products from Complainant may be redirected to Complainant’s
competitors through Respondent’s confusingly similar website. The Panel finds Respondent’s use of the <duralastbattery.com>
domain name does disrupt Complainant’s business and constitutes bad faith
registration and use pursuant to Policy 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb.
Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy
¶ 4(b)(iii) where a respondent used the disputed domain name to operate a
commercial search engine with links to the complainant’s competitors); see
also 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).
The Panel infers
Respondent receives click-through fees from the links relating to Complainant’s
automotive product competitors. Internet
users may become confused as to Complainant’s affiliation and sponsorship of
the competing hyperlinks and website resolving from the disputed domain
name. The Panel finds Respondent’s
receipt of click-through fees constitutes bad faith registration and use under Policy
¶ 4(b)(iv). See 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); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain
name to operate a website which features links to competing and non-competing
commercial websites from which Respondent presumably receives referral
fees. Such use for Respondent’s own
commercial gain is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv).”).
The Panel finds 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 <duralastbattery.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 21, 2009
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