AutoZone Parts, Inc. v. Administrator of the day c/o Auto Care Products
Claim Number: FA1001001304654
Complainant is AutoZone Parts, Inc. (“Complainant”), represented by Kitty Bina, of Alston & Bird LLP, Georgia, USA. Respondent is Administrator of the day c/o Auto Care Products (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <autozonecare.com>, registered with Moniker.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 25, 2010; with its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the Forum’s website.
On January 26, 2010, Moniker confirmed by e-mail to the National Arbitration Forum that the <autozonecare.com> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker 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 February 5, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@autozonecare.com. Also on February 5, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 3, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <autozonecare.com> domain name is confusingly similar to Complainant’s AUTOZONE.COM mark.
2. Respondent does not have any rights or legitimate interests in the <autozonecare.com> domain name.
3. Respondent registered and used the <autozonecare.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AutoZone Parts, Inc., is an international retailer and distributor of automotive replacement parts and accessories with more than 4,400 stores in the United States, Mexico and Puerto Rico, as well as an online retailer within the automotive parts field. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its AUTOZONE (e.g., Reg. No. 1,700,101 issued on July 14, 1992) and AUTOZONE.COM mark (e.g., Reg. No. 2,449,353 issued on May 8, 2001). Complainant also operates its <autozonecares.com> domain name for customer feedback and recommendations.
Respondent, Auto Care Products, registered the <autozonecare.com> domain name on January 2, 2006. Respondent’s disputed domain name resolves to a website that displays third-party links to websites offering automotive parts and accessories in competition with Complainant.
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 and AUTOZONE.COM marks for the purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also 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.”). The Panel further finds that Complainant need not register its trademark in the country of Respondent for purposes of Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Respondent’s domain name <autozonecare.com> is confusingly similar to Complainant’s mark because it contains the AUTOZONE.COM mark in its entirety and merely adds a descriptive word to it, closely resembling the <autozonecares.com> domain name operated by Complainant. The Panel finds that the addition of the descriptive word “care,” a reference to a website operated by Complainant, is not sufficient to distinguish the disputed domain name from the registered trademark pursuant to Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”). Therefore, the Panel finds under Policy ¶ 4(a)(i) that the disputed domain name is confusingly similar to Complainant’s AUTOZONE.COM mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights
or legitimate interests in the <autozonecare.com>
domain name. Complainant is required to
make a prima facie case in support of
these allegations. Once the Complainant
has produced a prima facie case the
burden shifts to Respondent to show they do have a right or legitimate interest
in the disputed domain name. See Domtar,
Inc. v. Theriault.,
FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a
complainant has made out a prima facie case
in support of its allegations, the burden shifts to respondent to show that it
does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the
Policy.”); see also Swedish Match UK Ltd.
v. Admin, Domain, FA 873137 (Nat.
Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the
burden then shifts to the respondent to demonstrate its rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel finds that Complainant has
established a prima facie case. Since Respondent failed to respond to these
proceedings the Panel may assume Respondent does not have any rights or
legitimate interests in the disputed domain name. See Am.
Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no
rights or legitimate interests where the respondent fails to respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
Complainant states that Respondent is neither commonly known by the disputed domain name, nor has Complainant given Respondent permission to use the AUTOZONE.COM mark in any way. The WHOIS information for the disputed domain name displays “Tian Hong Shan Zhuang” as registrant, and there is no further evidence showing that Respondent is commonly known by the disputed domain name. The Panel therefore finds that Respondent lacks rights and legitimate interests in the disputed 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 Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s disputed domain name resolves to a website that
displays links to websites offering automotive parts and accessories for
Complainant’s competitors in the automotive retail industry. The Panel finds that Respondent’s use of the
disputed domain name to redirect Internet users to Complainant’s competitors,
presumably for financial gain, does not constitute a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media
Insight, FA 198959 (Nat. Arb. Forum Dec.
5, 2003) (finding that the respondent was not using the domain names for a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use because the respondent used the names to divert Internet users to a website
that offered services that competed with those offered by the complainant under
its marks); see also Glaxo Group Ltd. v. WWW Zban, FA
203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not
using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii)
because the respondent used the domain name to take advantage of the
complainant's mark by diverting Internet users to a competing commercial site). Therefore, the Panel finds that Respondent
has no rights or legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(a)(ii).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Respondent uses the <autozonecare.com> domain name to divert
Internet users’ seeking its official <autozonecares.com> website to the
websites of Complainant’s competitors, thereby disrupting Complainant’s
business is evidence of bad faith registration and use. The Panel finds that Respondent’s
registration and use of the <autozonecare.com> domain name to
intercept Internet users’ who are attempting to reach Complainant’s website and
referring them to the websites of Complainant’s competitors was made in bad
faith under Policy ¶ 4(b)(iii). See 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)); see
also St. Lawrence Univ. v. Nextnet Tech,
FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by
redirecting Internet users seeking information on Complainant’s educational
institution to competing websites, Respondent has engaged in bad faith
registration and use pursuant to Policy ¶
4(b)(iii).”).
Respondent is collecting click-through fees and is attempting to profit by creating a likelihood of confusion between the Complainant’s AUTOZONE.COM mark and the confusingly similar disputed domain name. The Panel finds that Respondent’s use of the disputed domain name is further evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); 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 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 <autozonecare.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 17, 2010
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