Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. PPA Media Services / Ryan G Foo
Claim Number: FA1204001441330
Complainant is Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <advanceaoutoparts.com>, <advanceatuoparts.com>, <advanceautoaprts.com>, <advanceautopart.com>, and <advanceautoprts.com>, registered with Internet.bs. Corp.
The undersigned certifies he 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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 27, 2012; the National Arbitration Forum received payment on April 27, 2012.
On May 2, 2012, Internet.bs. Corp. confirmed by e-mail to the National Arbitration Forum that the <advanceaoutoparts.com>, <advanceatuoparts.com>, <advanceautoaprts.com>, <advanceautopart.com>, and <advanceautoprts.com> domain name is registered with Internet.bs. Corp. and that Respondent is the current registrant of the name. Internet.Bs. Corp. has verified that Respondent is bound by the Internet.bs. 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 May 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 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@advanceaoutoparts.com, postmaster@advanceatuoparts.com, postmaster@advanceautoaprts.com, postmaster@advanceautopart.com, and postmaster@advanceautoprts.com. Also on May 9, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 31, 2012, 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 (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
This Complaint is based on the following factual and legal grounds:
Headquartered in Roanoke, VA Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC ("Complainant") is the second largest retailer of automotive replacement parts and accessories nationwide. Complainant maintains over 3,563 stores in 39 states and employs a staff of more than 51,000 employees in the United States, Puerto Rico, and the Virgin Islands.
Complainant was founded in 1929 as Advance Stores, LLC. In 1932, Arthur Taubman purchased Advance Stores and successfully led the company to its current status as a leading retailer of auto parts and services. By 2001 Complainant acquired Carport Auto Parts and Discount Auto Parts, Inc., two leading regional auto parts chains located throughout the southeastern region of the United States. Such expansion led Complainant to become a publicly traded company on the New York Stock Exchange under the symbol AAP.
In addition to operating over 3,662 stores nationwide, including 202 Autopart International stores, Complainant also maintains the website. This website functions as part of Complainant's main commerce and point of sale operations in addition to their chain of stores. Complainant's website averages over five million unique visitors per month.
Given Complainant's success as an industry giant, Complainant has also received the following awards and recognitions:
---No. 466 on Fortune 500 List of Companies, 2003;
---No. 54 on Training Magazine's Top 100 List for development and training programs, 2003;
---No. 1,497 on "World's Biggest Public Companies," Forbes, 2005; and
---Contributed over $16 million since 1994 to the Juvenile Diabetes Research Foundation.
With over 80 years of experience and revenue, Complainant has proven themselves as an innovative industry leader. In 2011, Advance Auto Parts, Inc. generated $828.8 million in operating cash flow and a record $507.2 million of free cash flow. The Free cash flow was driven by a significant decrease in inventory, net of payables, and strong growth in net income, partially offset by an increase in capital expenditures. Overall, 2011 marked the fourth consecutive year of financial and operational growth for the Complainant.
Additionally, Complainant owns the ADVANCE AUTO PARTS marks cited in Section 4(c) above for which it has obtained federal trademark registrations. The federal trademark registrations have not been abandoned, cancelled or revoked.
Complainant has spent millions of dollars in advertisement and promotion of the ADVANCE AUTO PARTS marks on the Internet through its website located at <advanceautoparts.com>. A simple search on GOOGLE.CL for “advance auto parts”, a search engine accessed in the location of the Respondent, provides results in reference to the Complainant and its Marks. Based on its federal trademark registrations and extensive use, Advance Auto Parts, Inc d/b/a Advance Innovations, LLC owns the exclusive right to use the ADVANCE AUTO PARTS Marks in connection with their auto parts retail and service activities.
[a.] The Disputed Domain Name(s) are nearly identical and confusingly similar to Complainant's Marks.
i. By virtue of its federal trademark and/or service mark registration(s), Complainant is the owner of the Complainant's Mark(s). See, e.g., United Way of America v. Alex Zingaus, NAF Claim No. FA0707001036202 ("Panels have long recognized Complainant's registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy 4(a)(i)"). establishing prior rights. In Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005), and Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005), the panels found that national trademark registrations are sufficient to establish rights in a mark under Policy ¶4(a)(i). In Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), and Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), the panels concluded that the complainant is not required to register a mark within the country the respondent resides or operates in order to demonstrate rights under Policy ¶4(a)(i). Therefore, the Panel should conclude that Complainant’s owns rights in its ADVANCE AUTO PARTS mark for the purposes of Policy ¶4(a)(i).
When comparing the Disputed Domain Name(s) to the Complainant's Mark(s), the relevant comparison to be made is between only the second-level portion of the Disputed Domain Name(s) and the Complainant's Mark(s). See Rollerblade, Inc. v. McCrady, WIPO Case No.D2000-0429 (finding that the top-level domain, such as ".net" or ".com", does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., NAF Claim No. FA0304000153545 ("[t]he addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.")
The Disputed Domain Name(s) (is/are) confusingly similar to Complainant's Mark(s) because (it/they) differ(s) by only a single character from Complainant's Mark(s), or because it differs by only the juxtaposition of two characters when compared to Complainant's Mark(s). For clarification, the Disputed Domain Name(s) contain(s) either:
[i.] the addition of one extra character, or...
[ii.] the removal of one character, or...
[iii.] one character which is incorrect, or...
[iv.] two juxtaposed characters
as compared to Complainant's Mark(s).
The Disputed Domain Name(s) (is/are), simply put, a classic example of "typosquatting". The practice of typosquatting is designed to take advantage of Internet users' typographical errors, which means the names must be confusingly similar by design. See Reuters Ltd. v. Global Net 2000, Inc., WIPO Case No. D2000-0441 (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); Caterpillar Inc. v. Center for Ban on Drugs, NAF Claim No. FA0603000661437 ("the omission of a single letter from Complainant's mark does not adequately distinguish the Disputed Domain Name from the mark"); and Victoria's Secret v. Zuccarini, NAF Claim No. FA0010000095762 (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant's marks).
A "Cease and Desist" letter was sent to the Respondent on May 8, 2012. The letter informed the Respondent that it was infringing on Complainant's IP rights and allowed the Respondent the opportunity to respond if they have any IP rights. The Respondent was provided with the information of the Complainant's trademark(s), hence showing proof that the Complainant has rights to the brand(s). To date, no reply has been received from Respondent. 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, WIPO Case No. D2000-0009 (WIPO Feb. 29, 2000("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint."). Also in WIPO case ACCOR v. Pham Manh Ha, Case No. D2007-1855, the panel found that the evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name.
v. Respondent has ignored Complainant's attempts to resolve the dispute outside of this administrative proceeding. Complainant notes that if the owner of the Disputed Domain Name(s) fails to respond to this Complaint, it is presumed that the owner has no rights or legitimate interests in the Disputed Domain Name(s). See Mattel, Inc. v. RaveClub Berlin, FA106115 (Nat. Arb. Forum May 8, 2002), citing Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents' failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Further, Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) states that when "the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interest in the domain name at issue."
Respondent is using (some or all of) the Disputed Domain Name(s) to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business. Presumably, Respondent receives pay-per- click fees from these linked websites. As such, Respondent is not using the Disputed Domain Name(s) to provide a bona fide offering of goods or services as allowed under Policy; 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy; 4(c)(iii). See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent's use of the 24hrsfitness.comgt, 24-hourfitness.com.gt and 24hoursfitness.com.gt, domain names to redirect Internet users to a website featuring advertisements and links to Complainant's competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent's website, which is blank but for links to other websites, is not a legitimate use of the domain names).
vii. Respondent is using (some or all of) the Disputed Domain Name(s) to redirect Internet users to a website operated by Complainant's competitors. Presumably, Respondent receives consideration from those firms for driving traffic to them. As such, Respondent is not using the domain name(s) to provide a bona fide offering of goods or services as allowed under Policy 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy; 4(c)(iii). Furthermore, Respondent is causing confusion amongst consumers and tarnishing Complainant's good name in the marketplace. See Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) inding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant's mark for its competing website; see also Winmark Corp. d/b/a Play It Again Sports v. In The Zone a/k/a Giant Sports Factory, FA 128652 (Nat. Arb. Forum Dec. 6, 2002) finding that Respondent had no rights or legitimate interests in a domain name that used Complainant's mark to redirect Internet users to a competitor's website.
The earliest date on which Respondent registered the Disputed Domain Name(s) was August 23, 2002, which is significantly after Complainant's first use in commerce, March 3, 1984, as specified in their relevant registration with the USPTO.
The earliest date on which Respondent registered the Disputed Domain Name(s) was August 23, 2002, which is significantly after Complainant's registration of their relevant Marks with the USPTO on April 12, 1988.
The earliest date on which Respondent registered the Disputed Domain Name(s) was August 23, 2002, which is significantly after Complainant's registration of ADVANCEAUTOPARTS.COM on September 29, 1997.
[c.] The Disputed Domain Name(s) should be considered as having been registered and being used in bad faith for the following reasons:
i. Respondent's typosquatting behavior is, in and of itself, evidence of bad faith. See Canadian Tire Corp. v. domain adm'r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent created a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location'.. . through Respondent's persistent practice of 'typosquatting'"); see also Nat'l Ass'n of Prof'l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) ("Typosquatting ... is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.").
ii. Respondent's bad faith is further shown by the Respondent using the Disputed Domain Name(s) website in connection with generating revenue as a "click through" website by using the Complainant's registered trademark(s) and providing links to the services and products offered by the Complainant to take advantage of Complainant's well known mark to achieve a wrongful competitive advantage and commercial gain. In WIPO Decision D2008-1470, AIDA Cruises German Branch of Societa di Crociere Mercurio S.r.l., v. Caribbean Online International Ltd. / BelgiumDomains "the Panel finds that the Respondent registered and is using the disputed domain name for the purposes of commercial gain by offering links to other companies' websites related to cruises and
travels, in the form of a "click through" website. In similar cases, many prior panel decisions have recognised [sic] that the registration of domain names to be used in a "click-through" website has to be considered as an evidence of bad faith (see, e.g. Abercrombie & Fitch Trading Co. v. Digi Real Estate Foundation., WIPO Case No. D2007-0440; Early Times Distillers Company v. IP Admin / DNAV ASSOCS, WIPO Case No. D2007-1812; HBOS Plc v. Whois Protection, WIPO Case No. D2007-1605)".
iii. Respondent has caused the website(s) reachable by (some or all of) the Disputed Domain Name(s) to display Complainant's Mark(s) spelled correctly (even though the domain name(s) (is/are) a misspelled version of the same mark(s)). This serves as further evidence of bad faith intent because it removes any doubt as to whether or not the misspelling was intentionally designed to improperly capitalize on Complainant's famous Mark(s).
iv. Respondent has caused the websites reachable by (some or all of) the Disputed Domain Name(s) to display content and/or keywords directly related to Complainant's business. This serves as further evidence of bad faith intent because it removes any doubt as to whether or not the misspelling was intentionally designed to improperly capitalize on Complainant's famous Mark and its related business.
v. Respondent is a recalcitrant, serial cybersquatter / typo squatter. Searches through the NAF and WIPO UDRP decision databases reveal that Respondent has engaged in an ongoing pattern of such behavior.
vi. Respondent holds registrations on other domain names that appear to be straightforward examples of typosquatting. Although those names are not directly involved in this complaint, they serve as further evidence of bad faith intent on the part of Respondent. See Policy, 4(b)(ii) and Time Warner Inc. v. Zone MP3, NAF Claim No. FA0706001008035 (typosquatting combined with registration of as few as four domain names that are identical or confusingly similar to "protected marks" is sufficient to establish a pattern leading to bad faith). See also Citigroup Inc. v. Digi Real Estate Foundation, NAF Claim No. FA0704000964679.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
Complainant was ordered to submit a copy of its complaint in a word processing format (it had been submitted only in a scanned PDF format). Complainant failed to do this within the allotted time.
While the Panel could have dismissed the case for failure to comply with its procedural order, such a result would not be just for the client under the present circumstances. The Panel will be content to admonish CitizenHawk, Inc. once again for its failure to obey the Panel’s procedural order (or to explain why it was not possible to obey the order).
This is the second time CitizenHawk, Inc. has failed to respond to this Panel’s order on this point. Complainants who use CitizenHawk as their representative in the future are on notice of CitizenHawk’s repeated disregard of this Panel’s orders. This misconduct will be imputed to such future complainants and they run the risk of having appropriate sanctions imposed against them as well as CitizenHawk.
(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 NOT been registered and nor been used in bad faith.
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 Complainant to prove each of the following three elements to obtain an order transferring or cancelling a domain name:
(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 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.”).
Complainant claims it has established its rights in the ADVANCE AUTO PARTS mark by registering the mark with the USPTO (e.g., Reg. No. 1,815,267 registered January 4, 1994). Complainant submits multiple printouts from the USPTO website to support its claims. Complainant’s submissions indicate the mark is duly registered and Complainant is the owner of those registrations. Complainant has adequately established its rights in the ADVANCE AUTO PARTS mark under Policy ¶4(a)(i) by registering it with the USPTO even though Respondent is based in Chile. 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 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 claims Respondent’s <advanceaoutoparts.com>, <advanceatuoparts.com>, <advanceautoaprts.com>, <advanceautopart.com>, and <advanceautoprts.com> domain names are confusingly similar to its ADVANCE AUTO PARTS mark. Complainant claims the disputed domain names all include a majority of the mark, while separately deleting, adding, or transposing letters to, from, and within the mark itself. Each domain name also includes the generic top-level domain (“gTLD”) “.com” while removing the spaces between terms. In the absence of evidence to the contrary, this Panel finds Respondent’s disputed domain names are confusingly similar to Complainant’s ADVANCE AUTO PARTS mark under Policy ¶4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶4(a)(i).”); see also Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark); see also Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the 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)).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent is not commonly known by the disputed domain names. Complainant has never authorized nor given Respondent permission to use the ADVANCE AUTO PARTS mark. The WHOIS information identifies the registrant of the disputed domain names as “PPA Media Services / Ryan G Foo.” Based upon this information, Respondent is not commonly known by the disputed domain names under Policy ¶4(c)(ii). See 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); 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 contends Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The disputed domain names resolve to website offering links to third-party websites, some of which are Complainant’s competitors. Complainant submits a screenshot for each disputed domain name to support its contentions. The screenshots all show a website offering links offering auto parts. Based upon this evidence, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii), respectively. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also 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))
The Panel finds Policy ¶4(a)(ii) satisfied.
The Panel choses to review each of the possible ways to find bad faith registration and use of the domain name. Under policy ¶4(b)(i), a complainant must prove:
circumstances indicating that [Respondent] … registered or [Respondent] … acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;
Complainant has not made any allegations regarding these facts.
Under Policy ¶4(b)(ii), a complainant must prove:
[Respondent] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct
Since Complainant owns the <advanceautoparts.com> domain name, Complainant cannot proceed under this portion of the Policy. The fact Respondent may be a serial cybersquatter is immaterial unless it prevents Complainant from using its mark in a domain name.
Under Policy ¶4(b)(iii), a complainant must prove:
[Respondent] … registered the domain name primarily for the purpose of disrupting the business of a competitor
Once again, Complainant does not raise this claim. Complainant does not claim its business was disputed.
Under Policy ¶4(b)(iv), a complainant must prove”
by using the domain name, [Respondent] … intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.
Once again, Complainant does not actually quite make this claim.
Complainant argues Respondent is using the disputed domain names to generate revenue…but does not claim Respondent does this by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site. Generating revenue, without more, is not sufficient grounds to find bad faith. While Complainant does say confusion is being created, Complainant does not explain what the confusion is. Complainant claims its mark is being tarnished, but that isn’t covered under the UDRP.
Saying “typosquatting” might be a shorthand way of trying to say this, but the UDRP doesn’t actually provide “typosquatting” is adequate grounds to transfer a domain name unless the other elements are satisfied.
Panels, including this panel, have found bad faith based upon the totality of the circumstances. That power should be used sparingly to avoid having the exception swallow up the rule. Complainant is represented by CitizenHawk, who has appeared in 365 reported cases (including 5 cases with this Panel). If Complainant has not alleged an essential element, there must be a reason.
The Panel finds Policy ¶4(a)(iii) has not been satisfied.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <advanceaoutoparts.com>, <advanceatuoparts.com>, <advanceautoaprts.com>, <advanceautopart.com>, and <advanceautoprts.com> domain names REMAIN WITH Respondent.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, June 25, 2012
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