AutoZone Parts, Inc. v. Rikhav Infotech Pvt. Ltd.
Claim Number: FA1112001418215
Complainant is AutoZone Parts, Inc. (“Complainant”), represented by Kitty Bina of Alston & Bird, LLP, Georgia, USA. Respondent is Rikhav Infotech Pvt. Ltd. (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <greenautozone.net>, registered with Trunkoz Technologies Pvt Ltd. d/b/a Ownregistrar.com.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 2, 2011; the National Arbitration Forum received payment on December 2, 2011.
On December 13, 2011, Trunkoz Technologies Pvt Ltd. d/b/a Ownregistrar.com confirmed by e-mail to the National Arbitration Forum that the <greenautozone.net> domain name is registered with Trunkoz Technologies Pvt Ltd. d/b/a Ownregistrar.com and that Respondent is the current registrant of the name. Trunkoz Technologies Pvt Ltd. d/b/a Ownregistrar.com has verified that Respondent is bound by the Trunkoz Technologies Pvt Ltd. d/b/a Ownregistrar.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2012 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@greenautozone.net. Also on December 14, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 January 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <greenautozone.net> domain name is confusingly similar to Complainant’s AUTOZONE mark.
2. Respondent does not have any rights or legitimate interests in the <greenautozone.net> domain name.
3. Respondent registered and used the <greenautozone.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AutoZone Parts, Inc., owns multiple trademark registrations for its AUTOZONE mark with both the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,700,101 registered July 14, 1992) and India’s Office of the Controller-General of Patents, Designs and Trademarks (“IOCGPDT”) (e.g., Reg. No. 838,290 registered January 25, 1999). Complainant uses its AUTOZONE mark in connection with the sale of automotive parts and accessories.
Respondent, Rikhav Infotech Pvt. Ltd., registered the <greenautozone.net> domain name March 5, 2010. The disputed domain name resolves to a website that purports to be a blog with information about automobiles and the environment and also contains hyperlinks that resolve to Complainant’s direct competitors, such as Advance Auto Parts, Auto Parts Warehouse, and Pep Boys.
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.
In order to satisfy its burden under Policy ¶ 4(a)(i), Complainant argues that it owns rights in its AUTOZONE mark and presents evidence of its trademark registrations for its mark with the USPTO (e.g., Reg. No. 1,700,101 registered July 14, 1992) and IOCGPDT (e.g., Reg. No. 838,290 registered January 25, 1999). Past panels found that national trademark registrations are sufficient to establish rights in a mark. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Campus Mgmt. Corp. v. Sudha, FA 1346206 (Nat. Arb. Forum Oct. 25, 2010) (determining that the complainant’s multiple trademark registrations with the USPTO and the IOCGPDT established rights in the mark under Policy ¶ 4(a)(i). Consequently, the Panel concludes that Complainant owns rights in its AUTOZONE mark pursuant to Policy ¶ 4(a)(i).
Additionally, Complainant contends that Respondent’s <greenautozone.net> domain name is confusingly similar to Complainant’s AUTOZONE mark. Complainant asserts that the addition of the generic term “green” and the generic top-level domain (“gTLD”) “.net” do not distinguish the disputed domain name. Prior panels found the additions of a generic term and a gTLD did not remove a disputed domain name from the realm of confusing similarity. See Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark); see also Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to the complainant’s mark); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). In accordance with this precedent, the Panel determines that Respondent’s <greenautozone.net> domain name is confusingly similar to Complainant’s AUTOZONE mark under Policy ¶ 4(a)(i).
The Panel holds Complainant satisfied Policy ¶ 4(a)(i).
Complainant alleged that Respondent does not have any rights or legitimate interests in the <greenautozone.net> domain name. Previous panels have held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds Complainant made a sufficient prima facie case. Past panels have also held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). 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).
Under Policy ¶ 4(c)(ii), Complainant claims that Respondent is not commonly known by the <greenautozone.net> domain name. Complainant argues that Respondent is not connected or affiliated with Complainant and that Complainant did not license or consent to Respondent’s use of the AUTOZONE mark. The WHOIS information lists “Rikhav Infotech Pvt. Ltd.” as the registrant of the disputed domain name, and Respondent does not provide any arguments that it is commonly known by the <greenautozone.net> domain name. Previous panels found that a respondent is not commonly known by a disputed domain name if the respondent is not authorized to use the complainant’s mark, the WHOIS information is not similar to the disputed domain name, and the respondent fails to present any affirmative evidence of such a fact. See 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Thus, the Panel determines that Respondent is not commonly known by the <greenautozone.net> domain name under Policy ¶ 4(c)(ii).
Complainant further asserts that Respondent does not own rights or legitimate interests under Policy ¶¶ 4(c)(i) and (iii) because Respondent uses the <greenautozone.net> domain name to provide information about automobiles and the environment along with hyperlinks that resolve to Complainant’s competitors. Complainant claims that Respondent receives click-through fees from the hyperlinks. Past panels found that such a use is evidence that the respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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 also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel concludes that Respondent makes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <greenautozone.net> domain name.
The Panel holds Complainant satisfied Policy ¶ 4(a)(ii).
Complainant does not make any arguments under Policy ¶ 4(b)(iii). However, the Panel infers that Complainant’s business is likely disrupted by Respondent’s registration and use of the <greenautozone.net> domain name for the purpose of hosting competing hyperlinks. Previous panels found that evidence that the respondent is hosting competing hyperlinks sufficiently demonstrates bad faith registration and use under 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 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).”). The Panel agrees with this precedent and finds that Respondent registered and uses the <greenautozone.net> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant does contend that Respondent’s registration and use of the <greenautozone.net> domain name are in bad faith and an attempt to “trade on the goodwill created by [Complainant] in the automotive industry, so that Respondent can unfairly benefit from consumer confusion.” Prior panels found that the registration and use of a confusingly similar domain name to host competing hyperlinks constituted bad faith registration and use. See 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).”); 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). Thus, the Panel holds that Respondent registered and uses the <greenautozone.net> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also argues that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the AUTOZONE mark. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, past panels found that a panel may nonetheless find that a respondent registered and uses a disputed domain name in bad faith under Policy ¶ 4(a)(iii) if the respondent is found to have had actual notice of the complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Based on the evidence in the record, the Panel finds that Respondent had actual notice of Complainant’s rights in the mark and that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel concludes Complainant satisfied 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 <greenautozone.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: January 11, 2012
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