Aftermarket Auto Parts Alliance, Inc. v. PrivacyProtect.org / Domain Admin
Claim Number: FA1202001431133
Complainant is Aftermarket Auto Parts Alliance, Inc. (“Complainant”), represented by Harry B. Ray of Harry B. Ray & Associates, PLLC, Tennessee, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DOMAIN NAME
The domain name at issue is <autopartsmaster.com>, registered with Registermatrix.com Corp.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 23, 2012; the National Arbitration Forum received payment on February 23, 2012.
On March, 6 2012, Registermatrix.com Corp. confirmed by e-mail to the National Arbitration Forum that the <autopartsmaster.com> domain name is registered with Registermatrix.com Corp. and that Respondent is the current registrant of the name. Registermatrix.com Corp. has verified that Respondent is bound by the Registermatrix.com Corp. 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 March 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 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@autopartsmaster.com. Also on March 9, 2012, 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.
A timely Response was received and determined to be complete on March 15, 2012.
On March 28, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Charles A. Kuechenmeister 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
1. Respondent did acquire the Domain Name primarily for the purpose of selling it. Respondent is a generic domain name reseller and this is its bona fide business.
2. Respondent did not intend to disrupt Complainant’s business.
3. Complainant’s primary websites use the domain names <Alliance1.com>, and <800autotalk.com>, none of which is at all similar to the <autopartsmaster.com> Domain Name. Accordingly, there is no confusion.
4. Respondent’s business is to redirect traffic for users looking for auto parts to advertisers. This is a bona fide business. Again, because of the dissimilarity between the domain names resolving to Complainant’s websites and the Domain Name, there is no confusion.
5. Complainant is guilty of reverse domain name hijacking.
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 the Complainant to 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
The Panel makes the findings and determinations set forth below with respect to the Domain Name at issue between the parties.
Complainant’s rights in its PARTS MASTER mark are demonstrated by the evidence of its trademark registrations for that mark with the USPTO (i.e., Reg. No. 1,966,792 registered April 9, 1996), MIIP (e.g., Reg. No. 426,264 registered January 6, 1992), CIPO (e.g., Reg. No. TMA 383,502 registered July 20, 1989), and the SBIP (Reg. No. 17,603 registered December 28, 2000). See Complainant’s Annex A. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Respondent’s <autopartsmaster.com> domain name is confusingly similar to Complainant’s PARTS MASTER mark. The Domain Name contains a combination of Complainant’s PARTS MASTER mark without the space, the descriptive term “auto,” and the generic top-level domain (“gTLD”) “.com.” The missing space between PARTS and MASTER, and the addition of “auto” and a gTLD fail to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the Domain Name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Respondent argues that there is no confusing similarity between the Domain Name and the domain names used by Complainant for its primary websites, being Alliance1.com, and 800autotalk.com. This misses the point. The test of confusing similarity under the Policy is usually confined to a comparison of the Domain Name with the Complainant’s trademark. See, e.g., Limco, Inc. and The Limited Stores Inc. v. Rarenames aka Buydomains.com aka Buy This Domain aka limited.net, FA 99693 (Nat. Arb. Forum Nov. 27, 2011), quoting Playboy Enterprises Int’l, Inc. v. Vileshome, D2002-1058 (WIPO Jan. 26, 2003). The fact that Complainant may have chosen to use domain names not including its PARTS MASTER mark is irrelevant. For the purposes of Policy ¶4(a)(i), the comparison is between the <autopartsmaster.com> Domain Name and Complainant’s PARTS MASTER mark.
The Panel finds that the Domain Name is confusingly similar to the PARTS MASTER mark for the purposes of Policy ¶4(a)(i), and that Complainant has substantial and demonstrated rights in that mark.
If a complainant makes a prima facie case that the respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii), 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 interest in the 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’s lack of rights or legitimate interest in the Domain Name is demonstrated by several circumstances present in this case: (1) Respondent has not been licensed or permitted to use the PARTS MASTER mark or any domain names incorporating that mark, (2) Respondent is not commonly known by the Domain Name or any variation thereof, (3) Respondent’s use of the Domain Name to operate a website that provides links to competitors of Complainant is not a bona fide offering of goods and services, and (4) Respondent is not making any legitimate noncommercial fair use of the Domain Name, without intent for commercial gain. On these facts it appears that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. It is thus incumbent upon Respondent to demonstrate that it does.
Respondent does not claim that it is known by the Domain Name. Its only claim with respect to rights and legitimate interests is that its business of redirecting Internet traffic seeking sources for auto parts to its advertisers is a bona fide business. Again, Respondent misses the point. Using a domain name that incorporates another’s trademark in this fashion is not a bona fide business. The Domain Name resolves to a website that hosts hyperlinks to websites selling competing auto parts and related products. See Complainant’s Annex D. Respondent benefits commercially from these hyperlinks. This is not evidence that Respondent is making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <autopartsmaster.com> domain name under Policy ¶ 4(c)(iii). In fact, it proves just the opposite. See 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. On the contrary, the Panel finds that this use of the 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).”); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)).
The Panel also notes that Respondent offers the Domain Name for sale to the general public in the WHOIS information and at <sedo.com>. See Complainant’s Annex G. Such offer to sell the Domain Name is further evidence that Respondent lacks rights and legitimate interests in that name pursuant to Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the Domain Name suggested that it lacked rights or legitimate interests in the domain name); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights).
Based upon the foregoing, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The evidence from WHOIS and <sedo.com> demonstrates, and Respondent admits, that Respondent is offering to sell the Domain Name to the general public. This general offer to sell the Domain Name is evidence of Respondent’s bad faith registration and use of the Domain Name. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the Domain Name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale).
Further, Respondent is using the Domain Name to host hyperlinks to websites featuring sales of auto parts and related products in direct competition with Complainant. This disrupts Complainant’s business and is additional evidence of bad faith registration and use under 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 David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the Domain Name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the Domain Name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Finally, Respondent admits that its business is to redirect traffic for users looking for auto parts to its advertisers, presumably by receiving click-through revenues from the hyperlinks on its resolving website. This is how it makes its money. Using the Domain Name, which includes Complainant’s PARTS MASTER mark, is part of that business. By so using that Domain Name, Respondent is attempting to create confusion as to Complainant’s association with Respondent’s website and to benefit commercially from that confusion. This also is evidence of bad faith registration and use, pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the 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).
For the reasons set forth above, the Panel concludes that the Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <autopartsmaster.com> domain name be TRANSFERRED from Respondent to Complainant.
Reverse Domain Name Hijacking
In light of the Decision set forth above, the Panel finds and determines that Respondent’s claim of reverse domain name hijacking is without merit, and that Complainant has not committed the same by bringing this proceeding.
Charles A. Kuechenmeister, Panelist
Dated: April 4, 2012
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