U.S. Auto Parts Network, Inc. v. Nadeem Qadir
Claim Number: FA1112001420469
Complainant is U.S. Auto Parts Network, Inc. (“Complainant”), represented by Brody Stout of CitizenHawk, Inc., California, USA. Respondent is Nadeem Qadir (“Respondent”), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jcwhiney.com>, <jcwhitey.com>, and <jcwhintey.com>, registered with eNom, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2011; the National Arbitration Forum received payment on December 16, 2011.
On December 19, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <jcwhiney.com>, <jcwhitey.com>, and <jcwhintey.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 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@jcwhiney.com, postmaster@jcwhitey.com, and postmaster@jcwhintey.com. Also on December 19, 2011, 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 January 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <jcwhiney.com>, <jcwhitey.com>, and <jcwhintey.com> domain names are confusingly similar to Complainant’s JCWHITNEY mark.
2. Respondent does not have any rights or legitimate interests in the <jcwhiney.com>, <jcwhitey.com>, and <jcwhintey.com> domain names.
3. Respondent registered and used the <jcwhiney.com>, <jcwhitey.com>, and <jcwhintey.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, U.S. Auto Parts Network, Inc., is a large on-line retailer of automotive parts and accessories. Complainant own multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the JCWHITNEY mark (e.g.. Reg. No. filed May 31, 2000 registered May 14, 2002). Complainant uses the mark in its own domain name and on its website to market and sell automotive components, parts, and accessories.
Respondent, Nadeem Qadir, registered the disputed domain names on September 23, 2001. The disputed domain names resolve to a website offering automotive goods and accessories for sale, which directly compete with Complainant’s 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 that it has established its rights in the JCWHITNEY mark by registering it with the USPTO (e.g.. Reg. No. filed May 31, 2000 registered May 14, 2002). Previous panels have concluded that a trademark registration issued from the USPTO satisfies the rights requirement under this provision and that the registrant’s rights date back to the filing date. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). Therefore, the Panel finds that Complainant has established its rights in the JCWHITNEY mark under Policy ¶ 4(a)(i) by registering it with the USPTO, even though Respondent resides in a different country. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant also contends that Respondent’s disputed domain names are confusingly similar to its JCWHITNEY mark. The disputed domain names all retain the aesthetic and phonetic characteristics of Complainant’s mark, while including the generic top-level domain (“gTLD”) “.com.” Each domain name is comprised of what the Panel finds to be a typographical error of Complainant’s mark, either omitting a letter in the mark or transposing letters within the mark. The Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s JCWHITNEY mark under Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Neuberger Berman Inc. v. Jacobsen, D2000-0323 (WIPO June 12, 2000) (finding that the respondent’s <newbergerberman.com> domain name was confusingly similar to the complainant’s NEUBERGER BERMAN mark despite the slight difference in spelling).
The Panel finds that Policy ¶ 4(a)(i) has been established.
The Panel finds that Complainant has shifted the burden of proof under Policy ¶ 4(a)(ii) by making a prima facie case against Respondent, indicating that Respondent lacks rights or legitimate interests in the disputed domain names. 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.”) Respondent has not only failed to rebut Complainant’s prima facie case but has failed to file any kind of response whatsoever. Based upon Respondent’s failure in this regard, the Panel may assume that it lacks rights of legitimate interests in the disputed domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, the Panel will make no such assumptions before examining the entire record and addressing Respondent’s rights or legitimate interests in the disputed domain names in accordance with the factors included in Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain names. Respondent has not offered any evidence that would oppose Complainant’s assertions. Also, the WHOIS information identifies the registrant of the disputed domain names as “Nadeem Qadir,” which the Panel finds does not suggest a relationship beyond mere ownership between Respondent and the disputed domain names. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See 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); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant also asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. Respondent’s disputed domain names resolve to a website offering after-market automotive products for sale. Complainant is in the automotive products industry, making this website a direct competitor of Complainant. The Panel finds that using the disputed domain names to offer competing products is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); 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).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant claims that Respondent has established a pattern of registering infringing domain names which suggests bad faith registration and use in this matter. Complainant has submitted the case information for multiple adverse UDRP decisions against Respondent. See Travelocity.com LP v. Nadeem Qadir a/k/a Tan Kim Fong, FA 1347880 (Nat. Arb. Forum Nov. 10, 2010); see also Deutche Lufthansa AG v. Nadeem Qadir/ Bladimir Boyiko, D2010-2147 (WIPO Feb. 11, 2011); see also Target Brands, Inc. v. Nadeem Qadir, FA 1290087 (Nat. Arb. Forum Nov. 25, 2009); see also Time Warner Inc. v. Tan Kim Fong a/k/a Nadeem Qadir a/k/a Dotsan a/k/a R.S. Potdar a/k/a NA NA, FA 1384739 (Nat. Arb. Forum June 2, 2011). Based upon the information provided, the Panel finds that Respondent is a serial cybersquatter and has furthered its pattern of bad faith registration and use of disputed domain names in this matter under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
Complainant argues that Respondent’s disputed domain names disrupt its business, indicating bad faith registration and use on the part of Respondent. Respondent’s disputed domain names resolve to a website which offers automotive products for sale. Internet users may mistakenly type in one of the disputed domain names rather than Complainant’s domain name and be diverted to this resolving website. Internet users diverted to Respondent’s website may then purchase goods from Respondent rather than Complainant, whom it was actually searching for. The Panel finds that this use clearly disrupts Complainant’s business and as a result demonstrates bad faith registration and use under Policy ¶ 4(b)(iii) on the part of Respondent. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Complainant also argues that Respondent registered and is using the disputed domain names for its own commercial gain constituting bad faith registration and use. Respondent sells automotive products from the website to which the disputed domain names resolve. Respondent presumably charges Internet users to purchase these items in an attempt to generate revenue. By offering competing services and goods from its website, Respondent is attempting to trick Internet users into thinking that they are in fact purchasing goods from Complainant or one of its affiliates. Complainant states that at no point has it authorized Respondent to use its mark to sell products or for any other use. Therefore, the Panel finds that Respondent has registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(iv) because it is attempting to gain commercially by confusing Internet users into thinking that it is an associate of Complainant. See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market); see also Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jcwhiney.com>, <jcwhitey.com>, and <jcwhintey.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 31, 2012
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