AutoZone Parts, Inc. v. Stanley Pace
Claim Number: FA1201001423984
Complainant is AutoZone Parts, Inc. (“Complainant”), represented by Jessica Lewis of Alston & Bird, LLP, Georgia, USA. Respondent is Stanley Pace (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <autozpne.com>, registered with Fabulous Pty. Ltd.
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.
Hon. Nelson A. Diaz (ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 11, 2012; the National Arbitration Forum received payment on January 11, 2012.
On January 11, 2012, Fabulous Pty. Ltd. confirmed by e-mail to the National Arbitration Forum that the <autozpne.com> domain name is registered with Fabulous Pty. Ltd. and that Respondent is the current registrant of the name. Fabulous Pty. Ltd. has verified that Respondent is bound by the Fabulous Pty. Ltd. 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 January 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 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@autozpne.com. Also on January 16, 2012, 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.
A timely Response was received and determined to be complete on February 7, 2012.
On February 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nelson A. Diaz as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges that it owns rights in the AUTOZONE.COM mark. In support of this allegation, Complainant provides the Panel with a copy of its trademark registration with the United States Patent and Trademark Office (“USPTO”) for its AUTOZONE.COM mark (Reg. No. 2,449,353 registered May 8, 2001). Based on Complainant’s USPTO trademark registration, Complainant contends that Respondent’s <autozpne.com> domain name is confusingly similar to Complainant’s AUTOZONE.COM mark. Complainant claims that the only change Respondent makes to Complainant’s mark in the disputed domain name is the exchange of the letter “o” with the letter “p.” Complainant asserts that Respondent is not commonly known by the <autozpne.com> domain name. Complainant claims that Respondent is not connected or affiliated with Complainant and that Complainant never licensed or consented to Respondent’s use of Complainant’s AUTOZONE.COM mark. Complainant provides the Panel with the WHOIS information for the <autozpne.com> domain name, which lists the registrant of the disputed domain name as “Stanley Pace.” Complainant does allege that Respondent’s <autozpne.com> domain name resolves to a website that hosts competing hyperlinks.
B. Respondent
“After the previous dispute, which I was not aware of, the current Complainant received possession of the domain and then allowed it to expire, failing to defend what they assert.”
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."
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 provides the Panel with a copy of its trademark registration with the United States Patent and Trademark Office (“USPTO”) for its AUTOZONE.COM mark (Reg. No. 2,449,353 registered May 8, 2001). See Complainant’s Exhibit D. Based on Complainant’s USPTO trademark registration, the Panel concludes that Complainant owns rights in its AUTOZONE.COM mark pursuant to Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).
Complainant claims that the only change Respondent makes to Complainant’s mark in the disputed domain name is the exchange of the letter “o” with the letter “p.” The Panel determines that this alteration fails to adequately distinguish the disputed domain name from Complainant’s mark, the Panel finds that Respondent’s <autozpne.com> domain name is confusingly similar to Complainant’s AUTOZONE.COM mark for the purposes of Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar).
The complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not commonly known by the <autozpne.com> domain name. Complainant claims that Respondent is not connected or affiliated with Complainant and that Complainant never licensed or consented to Respondent’s use of Complainant’s AUTOZONE.COM mark. Complainant provides the Panel with the WHOIS information for the <autozpne.com> domain name, which lists the registrant of the disputed domain name as “Stanley Pace.” See Complainant’s Exhibit B. Respondent does not allege that it is commonly known by the disputed domain name in its Response. After examining all of the evidence in the record, the Panel holds that Respondent is not commonly known by the <autozpne.com> domain name under 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 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).
Complainant avers that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <autozpne.com> domain name. Complainant alleges that Respondent uses the disputed domain name to host hyperlinks that resolve to Complainant’s competitors in the automotive industry. Complainant provides the Panel with a screen shot of the resolving website in support of its allegations. See Complainant’s Exhibit H. Complainant argues that Respondent receives a pay-per-click fee each time an Internet user clicks on one of the aforementioned hyperlinks. The Panel determine that such a use demonstrates that Respondent makes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the <autozpne.com> domain name under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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 also Skyhawke Techns., 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 that 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).”).
Complainant further contends that Respondent’s <autozpne.com> domain name only differs from Complainant’s AUTOZONE.COM mark by the exchange of the letter “o” for the letter “p.” The Panel notes that the letters “o” and “p” are right next to each other on the QWERTY keyboard. The Panel agrees with Complainant that Respondent is typosquatting, which evidences that Respondent lacks rights and legitimate interests in the <autozpne.com> domain name pursuant to Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
Complainant alleges that Respondent’s <autozpne.com> domain name resolves to a website that hosts competing hyperlinks. The Panel determines that the hosting of competing hyperlinks likely disrupts Complainant’s business concluding that Respondent registered and uses the <autozpne.com> domain name in bad faith pursuant to 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 Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Complainant claims that Respondent commercially benefits from the competing hyperlinks found on the resolving website by receiving pay-per-click fees. Complainant also avers that Respondent is attempting to create confusion as to Complainant’s affiliation with the disputed domain name in order to increase traffic to Respondent’s resolving website, which would increase Respondent’s potential commercial gain from the hyperlinks. The Panel finds that Respondent registered and uses the <autozpne.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel holds that Respondent’s typosquatting is also evidence of Respondent’s bad faith registration and use of the <autozpne.com> domain name pursuant to Policy ¶ 4(b)(iv). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
The Panel finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel determines Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <autozpne.com> domain name be TRANSFERRED.
Hon. Nelson A. Diaz (ret.), Panelist
Dated: February 13, 2012
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