AutoZone Parts, Inc. v. Namal Edirisooriya c/o Noble Ventures
Claim Number: FA1006001327533
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-uk.com>, registered with Tucows, Inc.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 1, 2010.
On June 2, 2010, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <autozone-uk.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 June 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 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@autozone-uk.com. Also on June 4, 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 June 30, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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" 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 <autozone-uk.com> domain name is confusingly similar to Complainant’s AUTOZONE.COM mark.
2. Respondent does not have any rights or legitimate interests in the <autozone-uk.com> domain name.
3. Respondent registered and used the <autozone-uk.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AutoZone Parts, Inc.,
specializes in the sale of automotive parts and accessories in retail stores in
the
AUTOZONE USPTO Reg. No. 1,700,101 issued July 14, 1992;
AUTOZONE USPTO Reg. No. 2,225,191 issued February 23, 1999;
AUTOZONE USPTO Reg. No. 2,397,635 issued October 24, 2000;
AUTOZONE.COM USPTO Reg. No. 2,449,353 issued May 8, 2001;
AUTOZONE USPTO Reg. No. 3,123,505 issued August 1, 2006;
AUTOZONE USPTO Reg. No. 3,281,590 issued August 21, 2007;
AUTOZONE UKIPO Reg. No. B1504995 issued October 29, 1993;
AUTOZONE UKIPO Reg. No. 2,186,628 issued July 9, 1999;
AUTOZONE UKIPO Reg. No. 2,186,629 issued July 9, 1999;
AUTOZONE OHIM Reg. No. 001083633 issued December 15, 2000; &
AUTOZONE OHIM Reg. No. 001084078 issued May 15, 2001.
Respondent, Namal Edirisooriya c/o Noble Ventures, registered the <autozone-uk.com> domain name on December 26, 2005. The disputed domain name resolves to a website featuring a number of different homepage designs, but each displaying a listing of third party links to both competing and unrelated websites.
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 owns trademark registrations for the AUTOZONE.COM and related marks in numerous countries around the world, including with the USPTO, the UKIPO, and the OHIM:
AUTOZONE USPTO Reg. No. 1,700,101 issued July 14, 1992;
AUTOZONE USPTO Reg. No. 2,225,191 issued February 23, 1999;
AUTOZONE USPTO Reg. No. 2,397,635 issued October 24, 2000;
AUTOZONE.COM USPTO Reg. No. 2,449,353 issued May 8, 2001;
AUTOZONE USPTO Reg. No. 3,123,505 issued August 1, 2006;
AUTOZONE USPTO Reg. No. 3,281,590 issued August 21, 2007;
AUTOZONE UKIPO Reg. No. B1504995 issued October 29, 1993;
AUTOZONE UKIPO Reg. No. 2,186,628 issued July 9, 1999;
AUTOZONE UKIPO Reg. No. 2,186,629 issued July 9, 1999;
AUTOZONE OHIM Reg. No. 001083633 issued December 15, 2000; &
AUTOZONE OHIM Reg. No. 001084078 issued May 15, 2001.
The Panel finds that extensive trademark registration with trademark authorities around the world, including with the USPTO, is conclusive proof of Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Complainant contends that Respondent’s <autozone-uk.com> domain name is
confusingly similar to Complainant’s AUTOZONE.COM mark because the disputed
domain name uses Complainant’s full mark, modifying it only with the insertion
of a hyphen and the geographic abbreviation “uk,” which stands for “United Kingdom.” The Panel finds that the addition of a hyphen
and the abbreviation “
The Panel finds Policy
¶ 4(a)(i) has been satisfied.
Complainant bears the burden of presenting a prima facie case when alleging that Respondent lacks rights and legitimate interests in the disputed domain name according to the requirements of Policy ¶ 4(a)(ii). In this instance, Complainant’s assertions and supporting evidence are sufficient to establish such a case. The burden to show rights and legitimate interests therefore shifts to Respondent. Respondent, however, has failed to respond to the Complaint. The Panel is accordingly able to infer that Respondent does not possess rights and legitimate interests in the disputed domain name and that Complainant’s allegations are true and uncontested. See Compañia de Radiocomunicaciones Móviles S.A. v. Bolinhas, D2000-0915 (WIPO Oct. 5, 2000) (finding that because Respondent defaulted and did not demonstrate that it had any rights or legitimate interests, the “Panel assumes that there were no other motives for Respondent having registered the three domain names at issue but Respondent’s actual or most likely knowing of the famous or well known marks MOVICOM and BELL SOUTH”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). In the interest of performing a full analysis, however, the Panel chooses to consider all the evidence in the record according to the Policy ¶ 4(c) factors.
Complainant contends that Respondent is not commonly known
by the <autozone-uk.com>
domain name, is not licensed to use Complainant’s mark, and is not connected
with Complainant or Complainant’s mark in any way. The WHOIS information for the disputed domain
supports Complainant’s argument as it lists the registrant of <autozone-uk.com> as “noble
ventures.” The Panel finds that the
failure of the WHOIS information, as well as the other evidence in the record,
to indicate that Respondent is commonly known by the disputed domain name leads
to a conclusion that Respondent possesses no rights and legitimates interests according
to Policy ¶ 4(c)(ii).
See 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); see
also Wells Fargo & Co.
v. Onlyne Corp. Services11, Inc., FA
198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant asserts that Respondent’s <autozone-uk.com> domain name
resolves to a website that makes use of several different homepage
designs. Complainant asserts that each
homepage design features a listing of pay-per-click links to third-parties. These links redirect Internet users to
unrelated sites about television, as well as to sites sponsored by
Complainant’s competitors, such as Auto Parts Warehouse and Advance Auto
Parts. Complainant argues that some of
the links even appear to link to Complainant but instead link to other
directory style pages advertising more pay-per-click links. The Panel finds that Respondent’s use of the
<autozone-uk.com> domain name does not meet the requirements of a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to
Policy ¶ 4(c)(iii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr.
18, 2007) (holding that the respondent’s use of the contested domain name to
maintain a commercial website with links to the products and services of the
complainant’s competitors did not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii)); see also Jerry Damson, Inc.
v.
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
Complainant alleges that Respondent maintains a website at the <autozone-uk.com> domain name that features numerous links to Complainant’s competitors, including Auto Parts Warehouse and Advance Auto Parts. Complainant further contends that the links on the resolving website appearing to direct Internet users to Complainant’s website instead redirect users to other directory pages advertising for Complainant’s competitors. The Panel finds the prominent advertising of Complainant’s competitors through pay-per-click links and the inability of Internet users to reach Complainant’s website under a domain name completely appropriating Complainant’s mark indicate that Respondent registered and is using the disputed domain name in bad faith according to Policy ¶ 4(b)(iii) in order to disrupt Complainant’s business. See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also 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).
Complainant asserts that its customers are highly likely to
be confused by the presence of Complainant’s complete AUTOZONE.COM mark in the
disputed domain name, expecting to be directed to Complainant’s online presence. Complainant argues that Respondent registered
the <autozone-uk.com> domain
name with this purpose of attracting these customers seeking Complainant in
order to subsequently divert them to Respondent’s pay-per-click site for
profit. The Panel finds Respondent’s
registration and use of the disputed domain name shows bad faith under 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 <autozone-uk.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: July 8, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum