Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Conquistador Sat
Claim Number: FA1301001480897
Complainant is Advance Auto Parts, Inc. D/B/A Advance Auto Innovations, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Conquistador Sat (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <advanceautopaets.com> and <advaneautoparts.com>, registered with Fabulous.Com Pty Ltd.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 17, 2013; the National Arbitration Forum received payment on January 18, 2013.
On January 20, 2013, Fabulous.Com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <advanceautopaets.com> and <advaneautoparts.com> domain names are registered with Fabulous.Com Pty Ltd and that Respondent is the current registrant of the names. Fabulous.Com Pty Ltd has verified that Respondent is bound by the Fabulous.Com 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 29, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 19, 2013 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@advanceautopaets.com, postmaster@advaneautoparts.com. Also on January 29, 2013, 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 February 25, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
1. Policy ¶ 4(a)(i): Complainant’s rights and the confusing similarity of the domain names.
2. Policy ¶ 4(a)(ii): Respondent lacks rights and legitimate interests in the domain names.
3. Policy ¶ 4(a)(iii): Respondent registered and is using the disputed domains in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainanat is a prominent and successful United States company in the business of supplying automotive replacement parts and accessories.
2. Complainant declares owns trademark registrations for the ADVANCE AUTO PARTS mark with the USPTO (Reg. No. 1,815,267 registered on Jan. 4, 1994 and Reg. No. 1,847,137 registered on July 26, 1994).
3. Respondent registered the <advanceautopaets.com> domain name on March 11, 2004 and the <advaneautoparts.com> domain name on October 30, 2006. The domain names resolve to websites featuring generic links to third party websites, some of which promote goods that compete with Complainant’s products.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant declares that it owns trademark registrations for the ADVANCE AUTO PARTS mark with the USPTO. See Reg. No. 1,815,267 registered on Jan. 4, 1994; Reg. No. 1,847,137 registered on July 26, 1994. The Panel notes that while Complainant provides a copy of its trademarks from the USPTO’s official website, it does not provide the actual trademark certificates. Previous panels have concluded that when both a complainant and a respondent reside within the United States, USPTO registration is a satisfactory showing of rights. 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)). Therefore the Panel finds that Complainant has rights for the ADVANCE AUTO PARTS mark under Policy ¶ 4(a)(i).
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s ADVANCE AUTO PARTS mark. Complainant argues that Respondent’s <advanceautopaets.com> and <advaneautoparts.com> domain names are confusingly similar to the ADVANCE AUTO PARTS mark. Complainant avers that gTLDs are a required element in every domain name and are therefore irrelevant. Complainant also contends that both of the disputed domain names differ from the ADVANCE AUTO PARTS mark by a single character. The Panel notes that the Respondent formed the <advanceautopaets.com> domain name by misspelling the term “parts” as “paets.” The Panel also notes that the <advaneautoparts.com> domain name features the deletion of the “c” in “advance.” The Panel agrees with Complainant that the addition of a gTLD does nothing to distinguish the domain names and further agrees that the deletion of the spacing from the ADVANCE AUTO PARTS mark does not matter under this analysis. See 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 further agrees that neither of Respondent’s single-character alterations to ADVANCE AUTO PARTS mark embodied in the <advanceautopaets.com> and <advaneautoparts.com> domain names shows a meaningful difference between the domain names and the mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (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); see also Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant). Therefore the Panel finds that the <advanceautopaets.com> and <advaneautoparts.com> domain names are confusingly similar to the ADVANCE AUTO PARTS mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ADVANCE AUTO PARTS mark and to use it in its domain names, making only minor spelling alterations, thus implying that the domain names are official domain names of Complainant leading to an official website of Complainant which they are not;
(b) Respondent has then used the domain names to link to websites featuring generic links to third part websites some of which promote goods that compete with Complainant’s products;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant contends that Respondent is not now, nor has ever been, commonly known by the <advanceautopaets.com> or <advaneautoparts.com> domain names. Complainant declares that it has not sponsored, permitted, or otherwise affiliated itself with Respondent. The Panel notes that the WHOIS information of both disputed domain names lists “Conquistador Sat” as the registrant of the name. Previous panels have agreed that when no evidence can connect a respondent to a given domain name, it can be concluded that the respondent is not commonly known by the name. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Therefore the Panel agrees with Complainant that Respondent is not commonly known by the <advanceautopaets.com> or <advaneautoparts.com> domain names under Policy ¶ 4(c)(ii);
(e) Complainant avers that Respondent is not using the <advanceautopaets.com> and <advaneautoparts.com> domain names in furtherance of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends that both of the disputed domain names resolve to websites featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Complainant concludes that Respondent is presumably acquiring advertisement revenues by hosting these links. The Panel notes that both of the disputed domain names resolve to websites dominated by hyperlink listings to various competing and related products, including links to Complainant’s own website. See Complainant’s Ex. H. Previous panels have concluded that using a disputed domain name to garner advertising revenue, with no other notable purpose, cannot constitute a bona fide offering of goods or a legitimate noncommercial or fair use of the domain name. 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)). Therefore the Panel concludes that Respondent has failed to use the <advanceautopaets.com> and <advaneautoparts.com> domain names for either a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent’s use of the <advanceautopaets.com> and <advaneautoparts.com> domain names to host competing hyperlinks showcases an attempt to divert customers away from Complainant. Complainant believes that this diversion is intended to disrupt its business. The Panel again notes that both of the domain names resolve to websites dedicated to the promotion of hyperlinks for competing products. See Complainant’s Ex. H. Previous panels have found that a respondent commits an act of bad faith under Policy ¶4 (b)(iii) through disruption when the respondent is (1) a competitor of the complainant who (2) registers the domain name primarily to disrupt the complainant’s business. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). As the Panel believes the same is true here, it concludes that Respondent has registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant argues that Respondent is seeking to distract and mislead Internet users who seek Complainant’s websites. Complainant contends that Respondent then directs the Internet users through hyperlinks to Complainant’s competitors so that Respondent may secure advertisement revenues. The Panel notes that both of <advanceautopaets.com> and <advaneautoparts.com> domain names do in fact resolve to websites dedicated to the display of hyperlink advertisements. See Complainant’s Ex. H. Previous panels have held that the use of a confusingly similar domain name for the purpose of hosting a series of hyperlinks to a complainant’s competitors is bad faith use and registration because the respondent seeks to confuse Internet users into believing the complainant endorses or is affiliated with the content of the disputed domain name. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed 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).”). The Panel agrees in concluding that Respondent registered and used the domain names for the purpose of confusing Internet users into believing Complainant was the source of the content of the domain names, and profited from this confusion in bad faith under Policy ¶ 4(b)(iv).
Thirdly, Complainant concludes by arguing that Respondent’s typosquatting behavior is itself evidence of bad faith use and registration. Previous panels have concluded that the registration of some domain names—names so confusingly similar as to be nothing more than common misspellings of a mark—can in itself show that the respondent acted in bad faith. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel finds that given the subtle typographical errors between the ADVANCE AUTO PARTS mark and both the <advanceautopaets.com> and <advaneautoparts.com> domain names, Respondent picked the domain names to typosquat in bad faith under Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the ADVANCE AUTO PARTS mark and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <advanceautopaets.com> and <advaneautoparts.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 26, 2013
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