AutoZone Parts, Inc. v. Konstantinos Vardakastanis
Claim Number: FA1006001331739
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 <theautozones.com>, registered with GoDaddy.com, 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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 24, 2010.
On June 25, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <theautozones.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 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 email@example.com by e-mail. Also on June 29, 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 July 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 "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:
AutoZone Parts, Inc. (“AutoZone”) bases its complaint upon its rights in its famous mark AUTOZONE in connection with the sale of automotive parts and accessories. These rights are reflected in registrations in more than 25 countries around the world, including, but not limited to, Reg. Nos. 1,700,101; 2,449,353; 2,225,191; 2,397,635; 2,527,429; 3,123,505; and 3,281,590; in the United States; and Reg. Nos. 1,084,078; 1,083,633; and 2,426,914 in the European Community (“CTM registrations”).
I. FACTUAL BACKGROUND
A. AutoZone and Its Famous AutoZone Marks
Through licensed affiliates, AutoZone is a leading retailer and
distributor of automotive replacement parts and accessories, operating more
than 4,400 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 automotive parts and accessories. In addition to the AUTOZONE mark, AutoZone has made longstanding and widespread use of numerous trademarks and service marks that consist in whole or in part of the word “Zone,” including the marks AUTOZONE.COM, ZONE, GET IN THE ZONE, BATTERYZONE, PARTSZONE, CHECKOUTZONE, and KIDZONE (collectively, the “AUTOZONE Marks”).
The U.S. federal trademark registrations for the AUTOZONE Marks are valid and subsisting in law, were duly and legally issued, are prima facie evidence of the validity of the marks registered, and constitute constructive notice of the ownership of these marks by AutoZone in accordance with Sections 7(b) and 22 of the Trademark Act of 1946, 15 U.S.C. §§ 1115(a), 1057(b) and 1072. Many of AutoZone’s registrations are incontestable pursuant to Section 15 of the Trademark Act of 1946, 15 U.S.C. § 1065, and, pursuant to Section 33(b) of the Act, 15 U.S.C. § 1115(b), constitute conclusive evidence of AutoZone’s exclusive right to use the marks identified in the registrations in commerce in the United States.
AutoZone’s rights in the AUTOZONE Marks are likewise reflected in numerous international trademark registrations, including Reg. Nos. 1,084,078; 1,083,633; and 2,426,914 in the European Community (“CTM registrations”).
AutoZone also has spent millions of dollars over the years promoting and marketing its goods and services under the AUTOZONE Marks. As the result of these collective efforts, goods and services sold under the AUTOZONE Marks are recognized by the consuming public as being associated with AutoZone alone.
B. Respondent and Its Unlawful Activities
Respondent registered <theautozones.com> (the “Domain Name”) on May 18, 2009. Respondent is currently using the Domain Name as the address for a website featuring automotive-related content that appears to have been copied from other online sources and for advertisements and links for automotive-related businesses. Articles identical to those posted at the Domain Name can be found on a number of other websites, and, upon information and belief, the Respondent is has copied this content to include at the Domain Name to create the pretext of a legitimate website. However, upon information and belief, the website is designed solely to generate income for the Respondent from pay-per-click advertisements.
According to the registration record for the Domain Name and
correspondence from Respondent, the Respondent purports to be located in
AutoZone has not authorized Respondent to register or use the Domain Name. On February 8, 2010, AutoZone’s outside counsel sent a cease and desist notice to Respondent, objecting to his registration and use of the Domain Name. Counsel further requested that Respondent transfer the Domain Name registration to AutoZone and refrain from registration of any mark or domain name similar to AUTOZONE for any purpose in the future. Respondent responded in an email dated February 22,2010, refusing to transfer the Domain Name.
Pursuant to the ICANN Rules, AutoZone must establish the following to obtain the relief it requests in this action: (1) that the Domain Name is identical or confusingly similar to a trademark or service mark in which AutoZone has rights; (2) that Respondent has no rights or legitimate interests in the Domain Name; and (3) that Respondent has registered and used the Domain Name in bad faith. AutoZone submits that its Complaint readily satisfies each of these requirements.
A. The Domain Name is Confusingly Similar to the AUTOZONE Mark
For the reasons set forth above, AutoZone owns valid and enforceable rights in the AUTOZONE Marks. See AutoZone, Inc. v. SZK.com c/o Michele Dinoia, FA 741832 (Nat. Arb. Forum, Aug. 21, 2006); AutoZone Parts, Inc. v. DomainBonus.com c/o Alex Tesler, FA 229026 (Nat. Arb. Forum, Dec. 1, 2008); AutoZone Parts, Inc. v. Domain Administrator, FA 274395 (Nat. Arb. Forum, Sept. 11, 2009). AutoZone acquired these rights well prior to the date on which Respondent registered and began using the Domain Name.
Consumers who see the Domain Name are certain to associate it with AutoZone because it includes the AUTOZONE mark in its entirety. The addition of the word “the” and the extra letter “s” do not reduce the likelihood of confusion. The Domain Name is therefore confusingly similar to the AutoZone mark. Hollywood Casino Corp. v. Online Casino Serv., Ltd., FA095,342 (Nat. Arb. Forum Sept. 19, 2000) (Transferring the domain name <thehollywoodcasino.com>, stating “Respondent has merely added the word ‘THE’ to the Complainant’s ‘HOLLYWOOD CASINO’ trademark, intentionally creating confusion as to the source of the services provided at the Respondent’s web site.”); Global IT Profiles, LLC v. IT Sales Leads, LLC, FA 1,198,689 (Nat. Arb. Forum July 7, 2008) (“[T]he addition of the letter ‘s’ at the end of Complainant’s IPROFILE mark fails to differentiate the mark sufficiently to avoid a finding of confusing similarity.”); See also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name such as ‘.net’ or ‘.com’ does not affect the domain for purposes of determining whether it is identical or confusingly similar to a competing mark).
B. Respondent Has No Rights or Legitimate Interests in the Domain Name
Respondent’s registration and use of the Domain Name is a
blatant attempt to benefit from the goodwill and fame associated with the
AUTOZONE mark. Respondent registered the
Domain Name more than twenty years after AutoZone acquired rights in its famous
AUTOZONE mark. Respondent was on notice
of AutoZone’s exclusive rights in the AUTOZONE Marks as a result of AutoZone’s
numerous registrations of its marks in the
Respondent’s current use of hosting pay-per-click links at the Domain Name is an attempt to profit from consumer confusion. Respondent has admitted that he receives $500 per month for hosting this content. Respondent’s registration and use of the Domain Name is a transparent attempt to trade on the AUTOZONE Marks. Such commercial use of the AUTOZONE Marks does not give rise to any bona fide rights or interest in the Domain Name for the Respondent. See AutoZone Parts, Inc. v. Domain Administrator, FA 274395 (Nat. Arb. Forum Sept. 11, 2009) (finding 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 nor a legitimate noncommercial or fair use); AutoZone Parts, Inc. v. Auto Info Links, FA 274397 (Nat. Arb. Forum Oct. 6, 2009) (“The Panel presumes that [r]espondent is profiting through the generation of click-through fees” and is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.); see also QNX Software Sys. Ltd. v. Future Media Architects, Inc., D2003-0921 (WIPO Feb. 26, 2004) (“It has been held that use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods and services.”).
The copied content posted alongside the advertisements and links only serves to create a pretext website and is not a legitimate use of the Domain Name. Dermalogica, Inc. and The Int’l Dermal Inst., Inc. v. Raj Sukkersudhad a/k/a Seimpact Ltd., FA811,693 (Nat. Arb. Forum Nov. 14, 2006) (“…the use of confusingly similar domain names that resolve to websites that contain copied content for the purpose of commercially linking to related commercial websites fails to qualify as a bona fide offering of goods or services…or a legitimate noncommercial or fair use…”).
Upon information and belief, 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 Domain Name.
C. Respondent Registered and Has Used the Domain Name in Bad Faith
In light of the substantial fame and notoriety of the AUTOZONE Marks, it is inconceivable Respondent could have registered the Domain Name without knowledge of AutoZone’s rights in its marks. This knowledge, along with the clear confusion that Respondent had to know would follow from its use of the Domain Name evidences registration and use in bad faith in violation of the Policy. See Deutsche Bank AG v. Diego-Arturo Bruckner, WIPO Case No. D2000-0277 (WIPO, May 30, 2000) (holding that respondent should have known of complainant’s rights in the “Deutsche Bank” mark because of the widespread use and fame of the mark at the time of registration); Reuters Ltd. v. Teletrust IPR Ltd., WIPO Case No. D2000-0471 (WIPO, Sept. 8, 2000) (finding that Respondent’s awareness of complainant’s famous mark at the time of registering the domain name, and its awareness of the deception and confusion that would inevitably follow if it used the domain name evidenced bad faith); Marriott Int’l, Inc. v Momm Amed Ia, FA095573 (Nat. Arb. Forum, Oct. 23, 2000) (recognizing that evidence of bad faith includes actual or constructive knowledge of Complainant’s use of its commonly known mark when registering the domain names.)
Moreover, the inclusion of “autozone” in the Domain Name is intended to trade on the goodwill created by AutoZone in the automotive industry, so that Respondent can unfairly benefit from consumer confusion and increase its profits from automotive-related pay-per-click advertisements. See Berlitz Investment Co. v. Pierre Hacopian, WIPO Case No. D2007-0483 (WIPO May 31, 2007) (holding that respondent would unfairly benefit by using “berlitz” in its domain name because of consumer confusion that Berlitz Investment Co. was affiliated with the website); Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453 (WIPO July 24, 2003) (holding that knowledge of the mark at the time of registration, use in commerce without a legitimate interest, and confusion allowing respondent to free-ride on the complainant’s goodwill indicates registration in bad faith). Such use of the Domain Name constitutes a bad faith use of AutoZone’s mark to attract users to a web site for the profit of the Respondent in violation of ICANN Policy ¶4(b)(iv).
B. Respondent failed to submit a Response in this proceeding. However, Respondent submitted two non-conforming emails, which shall be reproduced here to ensure the clarity of the record:
The first email says:
First of all, I would like to state
that I leave in
The English language is not my mother tongue and as a result I can not express my self and my thoughts as I would like to. Also I am not the law profession and of as a result I don’t understand 99% of what is written in this documents their full meaning and they actually have to say. The law documents are very hard for me to understand.
From the things I know when the above reasons exist:
a) The state, the complainant or the forum or what so ever appoints a lawyer free from any fees to represent the defender, in this case me. So I would like a representative free of charge for me and the fees should be covered from the complainant.
b) The defender has the right to be heard in his mother tongue in this case Greek language. So I want all the documents translated in Greek language and the sum for this translation must be covered from the complainant as he is the one starting the confliction. Also my answers will be in Greek language. So this document must be send to me again in my mother tongue as well as all the other documents like the whole file FA1006001331739 complains and exhibits. All the money spend in this procedure must be covered from the complainant despite the final verdict. In any other different case I declare that I do not understand any of this documents send to me and that I am not aware of any information as a result no deadline of 24/June/2010 and timeframes exist.
Dear Michael please forward this email to any people that must be aware of the above
The second email reads:
perhaps you didn't understand what I was asking for. I am a student still in a university and I make sites to earn some bucks from advertisements.
I receive a letter from you, and I don't even know you people, i am in a different country, about a forum etc etc. I don't even know if you are a state organization and your jurisdiction. And I receive an email about filing complaints, members, fees etc etc I earn around 50$/month from this site - domain, do you think that it deserves all the above work? NO OF COURSE NOT
I was just asking who you are people? and what do you want from
me? and what should I do? What happens if I don't do
anything the next 20 days? And if I do what I must pay?
Regarding the attorney I believe that I answered your question above, also Id like to say that either case I cannot do that cause in my country there is not any attorney that is working in this field!!! Maybe I should hire one from
I don't f..ing understand anything, I bought the domain a year ago legit!! I didn’t bother anyone
Give me a break here
Complainant AutoZone Parts, Inc. has established rights in its AUTOZONE mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,700,101 issued July 14, 1992). Complainant uses the mark in connection with cleaning preparations for automobiles, vehicle engine parts, and related goods and services.
Respondent Konstantinos Vardakastanis registered the <theautozones.com> domain name on May 18, 2009. The disputed domain name resolves to a website that displays content related to the services offered by Complainant, as well as advertisements for and hyperlinks to third-party websites including competitors of 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 formal 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.”). This Panel will bear the two non-conforming emails in mind while evaluating this case, even though it does not have an obligation to do so.
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.
UDRP Rule 11 provides:
11. Language of Proceedings
(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
(b) The Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding.
The registration agreement at GoDaddy.com is in English. This means (absent the parties’ agreement to the contrary and a contrary designation in the agreement) the proceedings will take place in English. There has been no claim that GoDaddy.com designates proceedings shall take place in Greek in their registration agreement.
A respondent does not have a right to have counsel appointed at complainant’s expense in UDRP proceedings.
Complainant asserts it has rights in its AUTOZONE mark due
to its registration with the USPTO (Reg. No. 1,700,101 issued July 14, 1992).
The Panel finds Complainant’s registration of its AUTOZONE mark with the USPTO
is sufficient to establish Complainant’s rights in the mark pursuant to Policy
Complainant argues Respondent’s <theautozones.com> domain name is confusingly similar to Complainant’s AUTOZONE mark under Policy ¶4(a)(i). Complainant argues the disputed domain name incorporates the Complainant’s mark in its entirety, adds a generic term (“the”), adds the letter “s,” and adds a generic top-level domain (“gTLD”) (“.com”) to Complainant’s mark. Complainant claims these alterations do not distinguish the disputed domain name from the registered AUTOZONE mark. See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the <theotheraol.com> and <theotheraol.net> domain names were confusingly similar to the AOL mark, as the addition of common terms to a mark does not distinguish the domain names from the mark); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶4(a)(i) is satisfied); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶4(a)(i)); see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶4(a)(i)); 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.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel finds Respondent’s <theautozones.com> domain name, despite the minor alterations to Complainant’s mark, is confusingly similar to Complainant’s AUTOZONE mark pursuant to Policy ¶4(a)(i).
The Panel finds Complainant has satisfied the elements of Policy ¶4(a)(i).
The Panel finds Complainant’s allegation Respondent lacks rights or legitimate interests in the disputed domain name establishes a prima facie case under Policy ¶4(a)(ii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”). While another Panel might view Respondent’s failure to formally respond to the Complaint as the acceptance of the allegations, this Panel chooses to review the elements of the allegations to determine their truthfulness under Policy ¶4(c). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). Respondent’s emails do not demonstrate any rights or legitimate interests is the domain name.
Complainant argues Respondent is not commonly known by the <theautozones.com>
domain name. The WHOIS information lists
the registrant of the disputed domain name as “Konstantinos Vardakastanis,”
which, Complainant argues, does not support a contention Respondent may be
commonly known by the disputed domain name.
Complainant also contends it did not grant any license for or
authorization to use the AUTOZONE mark to Respondent. Additionally, Complainant contends its mark
is well-known and has gained significant commercial recognition due to the use
and registrations of Complainant. The
Panel finds, because Respondent is not commonly known by the disputed domain
name and Complainant gave no authorization of its AUTOZONE mark to Respondent,
Respondent lacks rights and legitimate interest in the disputed domain name
pursuant to Policy ¶4(c)(ii). See
Oakley, Inc. v. Watson, D2000-1658 (WIPO May 3, 2001) (“It is clear that
the value in the Oakley name has been created by the commercial use and
registrations of the Complainant and it is also
clear . . . that Respondent is taking advantage of the
value created by the Complainant.”); see
also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001)
(“Given the Complainants’ established use of their famous
Respondent’s <theautozones.com> domain name resolves to a website displaying advertisements for and hyperlinks to third-party websites including competitors of Complainant in the automobile replacement parts industry, as well as content related to the replacement parts and automobile cleaning preparation services provided by Complainant under its mark, contends Complainant. Further, Complainant alleges Respondent gains profit through click-through referral fees when an Internet users, seeking Complainant’s goods, clicks on a displayed link in a mislead assumption that the link is related to Complainant. Respondent seems to admit the web site exists solely to collect “click through” advertising fees. The Panel finds displaying links to third-party websites on a webpage resolving from a confusingly similar domain name and receiving profit from the ensuing Internet user confusion is not 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); see also Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds this use of the disputed domain name does not constitute 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).”).
The Panel finds Complainant has satisfied the elements of Policy ¶4(a)(ii).
Complainant claims Respondent’s registration and use of the <theautozones.com>
domain name was in bad faith and with intent to divert business from
Complainant to its competitors.
Complainant contends Respondent used Complainant’s AUTOZONE mark in the
disputed domain name to disrupt Complainant’s business by displaying links to
third-party websites of Complainant’s competitors in the automobile replacement
parts industry. While Respondent
initially claimed to make $500 per month due to advertising, this claim was
later reduced to $50 per month.
Respondent seems to admit the sole purpose of the web site is to
generate “click through” revenue. The
Panel finds offering a web directory of links to third-party competitors of
Complainant on a website resolving from a confusingly similar domain name constitutes
bad faith registration and use under Policy ¶4(b)(iii). See
Complainant claims Internet users, searching for Complainant’s services, will be confused as to Complainant’s sponsorship or affiliation with the <theautozones.com> domain name and Respondent attempts to profit from this confusion through by click-through fees. This Panel finds Respondent’s use of the disputed domain name to profit from Internet user confusion constitutes bad faith registration and use pursuant to Policy ¶4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶4(b)(iv).”).
The Panel finds Complainant has satisfied the elements of Policy ¶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 <theautozones.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: July 27, 2010
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