national arbitration forum

 

DECISION

 

AutoZone Parts, Inc. v. Fundacion Private Whois / Domain Administrator

Claim Number: FA1206001451406

 

PARTIES

Complainant is AutoZone Parts, Inc. (“Complainant”), represented by Kitty Bina of Alston & Bird, LLP, Georgia, USA.  Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <duralastbattery.net>, registered with Internet.bs Corp.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 29, 2012; the National Arbitration Forum received payment on June 29, 2012.

 

On July 3, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <duralastbattery.net> 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 July 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 23, 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@duralastbattery.net.  Also on July 3, 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 August 1, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant makes the following assertions:

1.     Respondent’s <duralastbattery.net> domain name is confusingly similar to Complainant’s DURALAST mark.

2.    Respondent does not have any rights or legitimate interests in the <duralastbattery.net> domain name.

3.    Respondent registered or used the <duralastbattery.net> domain name in bad faith.

           

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

    1. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for the DURALAST mark (e.g., Reg. No. 1,467,999 registered December 8, 1987), that it uses for automotive parts, including batteries. 
    2. Respondent registered the <duralastbattery.net> domain name on December 29, 2010. 
    3. Respondent’s disputed domain name is confusingly similar to Complainant DURALAST marks. 
    4. Respondent is using the disputed domain name to present Internet users with images of its battery products, text discussing DURALAST batteries, and third-party links to Complainant’s competitors. 
    5. Respondent has no rights or legitimate interests in the disputed domain name.
    6. Respondent registered and is using the disputed domain name in bad faith.

                                          i.    Respondent had knowledge of Complainant’s rights in the DURALAST mark through the fame and notoriety of the mark.

                                         ii.    Respondent references Complainant’s products on the resolving website and features third-party links to Complainant’s competitors.

DISCUSSION

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.

 

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.”).

 

Identical and/or Confusingly Similar

 

Complainant argues that its trademark registrations with the USPTO for the DURALAST mark (e.g., Reg. No. 1,467,999 registered December 8, 1987) are sufficient for it to establish rights in the mark under Policy ¶ 4(a)(i).  The Panel agrees and find that Complainant has indeed established protectable rights in the DURALAST mark under Policy ¶ 4(a)(i).  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).

 

Complainant further contends that the <duralastbattery.net> domain name is confusingly similar to Complainant’s DURALAST mark, where the domain name merely adds the term “battery,” which the Panel finds is descriptive of one of the products Complainant markets under the DURALAST mark.  The Panel also notes that the disputed domain name adds the generic top-level domain (“gTLD”) “.net.”  The Panel finds that the disputed domain name is confusingly similar to Complainant’s DURALAST mark pursuant to Policy ¶ 4(a)(i), where the domain name uses the mark entirely, while adding the descriptive term “battery” and the gTLD “.net.”  See 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 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.”).

 

Rights or Legitimate Interests

 

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 argues that Respondent has “no connection or affiliation with Auto Zone, nor has it at any time received from AutoZone a license or consent, express or implied, to use the DURALAST Marks in a domain name or in any other manner.”  Complainant also notes that the WHOIS information, which identifies the domain name registrant as “Fundacion Private Whois / Domain Administrator,” does not indicate that Respondent is known by “Duralast” or “Duralastbattery.”  The Panel finds that Respondent has not offered any evidence to support a claim that it is commonly known by the disputed domain name.  Therefore, the Panel holds that Respondent is not commonly known by the <duralastbattery.net> 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).

 

Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain name.  Complainant contends that Respondent uses the disputed domain name to display pictures of Complainant’s batteries, information about Complainant’s products, and revolving third-party links to Complainant’s competitors such as Advance Auto Parts, and <shopcompare.net.>.  Complainant argues that Respondent’s use of a pay-per-click website is evidence that Respondent does not have rights or legitimate interests in the disputed domain name.  The Panel agrees and find that Respondent is not using the <duralastbattery.net> domain name for 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 United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors.  The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent has registered and is using the <duralastbattery.net> domain name in bad faith under Policy ¶ 4(b)(iv).  Complainant contends that Respondent is clearly attempting to confuse Internet users into arriving at Respondent’s resolving website by using the DURALAST mark in the domain name in conjunction with the term “battery.”  Complainant also asserts throughout its Complaint that Respondent is presumably profiting from its use of pay-per-click links to Complainant’s competitors.  The Panel determines that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv), where Respondent is using the disputed domain name to redirect Internet users to Complainant’s competitors in the battery and automotive parts industries.  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).

 

Complainant also contends that, in light of the fame and notoriety of Complainant's DURALAST mark, it is inconceivable that Respondent could have registered the <duralastbattery.net> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here 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 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 agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name, as evidenced by Respondent’s display of pictures and commentary concerning Complainant’s products, 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).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <duralastbattery.net> domain name be TRANSFERRED  from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  August 14, 2012

 

 

 

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