Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Above.com Domain Privacy
Claim Number: FA1301001482219
Complainant is Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aadvanceautoparts.com>, <adnanceautoparts.com>, <advanceauotoparts.com>, <advanceautoparta.com>, and <advanceautopparts.com>, registered with Above.com Pty Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no known conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 28, 2013; the National Arbitration Forum received payment on January 28, 2013.
On January 29, 2013, Above.com Pty Ltd confirmed by e-mail message addressed to the National Arbitration Forum that the <aadvanceautoparts.com>, <adnanceautoparts.com>, <advanceauotoparts.com>, <advanceautoparta.com>, and <advanceautopparts.com> domain names are registered with Above.com Pty Ltd and that Respondent is the current registrant of the names. Above.com Pty Ltd has verified that Respondent is bound by the Above.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 30, 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@aadvanceautoparts.com, postmaster@adnanceautoparts.com, postmaster@advanceauotoparts.com, postmaster@advanceautoparta.com, postmaster@advanceautopparts.com. Also on January 30, 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 27, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 owns the ADVANCE AUTO PARTS mark, which it uses in connection with its business as an auto parts retail service.
Complainant holds registrations, on file with the United States Patent and Trademark Office (“USPTO”), for the ADVANCE AUTO PARTS service mark (including Reg. No. 1,815,267, registered January 4, 1994).
Respondent registered the contested domain names, <aadvanceautoparts.com>, <adnanceautoparts.com>, <advanceauotoparts.com>, <advanceautoparta.com> and <advanceautopparts.com> on May 1, 2007.
Each of the disputed domain names is confusingly similar to Complainant’s ADVANCE AUTO PARTS mark.
Respondent has not been commonly known by any of these domain names.
Respondent is not sponsored by or affiliated with Complainant, and Complainant has not licensed or otherwise authorized Respondent to use its ADVANCE AUTO PARTS mark.
Each of the disputed domain names is emblematic of typo-squatting.
Respondent has neither any rights to nor any legitimate interests in any of the disputed domain names.
Respondent uses the disputed domain names to disrupt Complainant’s business, and to generate revenue, by providing click-through links to websites offering products and services marketed by Complainant, thus competing with Complainant’s business.
Respondent both registered and uses each of the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 has rights in the ADVANCE AUTO PARTS service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where a UDRP complainant had submitted evidence of its registration of a mark with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”).
This is true without regard to whether Complainant’s rights in its mark arise from its registration in a jurisdiction (here the United States) other than that in which Respondent resides or does business. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a UDRP complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in its mark in some jurisdiction).
Turning then to the central question presented by Policy ¶ 4(a)(i), we conclude from our review of the record that Respondent’s <aadvanceautoparts.com>, <adnanceautoparts.com>, <advanceauotoparts.com>, <advanceautoparta.com>, and <advanceautopparts.com> domain names are each confusingly similar to Complainant’s ADVANCE AUTO PARTS service mark. The domain names differ from Complainant’s mark only by the elimination of the spaces between the terms of the mark, and by the substitution of a single character, the transposition of two characters or the addition of a character, plus the addition of a generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in creating the domain names, do not avoid a finding of confusing similarity under the standards of the Policy. See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding <oicq.net> and <oicq.com> to be confusingly similar to a complainant’s ICQ mark); further see Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding the domain name <hannoverre.com> to be identical to the mark HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a UDRP complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); 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 has made a sufficient prima facie showing under this branch of the Policy. Therefore, and because Respondent has failed to respond to the allegations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Complaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by any of the contested domain names, that Respondent is not sponsored by or affiliated with Complainant, and that Complainant has not licensed or otherwise authorized Respondent to use its ADVANCE AUTO PARTS service mark. Moreover, the pertinent WHOIS information identifies the registrant of each of the contested domain names only as “Above.com Domain Privacy,” which does not resemble any of the disputed domain names. On this record we conclude Respondent has not been commonly known by any of these domain names so as to have acquired rights to or legitimate interests in any of them with the meaning of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so had failed to show that it had rights to or legitimate interests in any of them as described in Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the domain names, and where a complainant had not authorized that respondent to register a domain name containing its registered mark).
We next observe that Complainant asserts, without objection from Respondent, that the webpages resolving from the disputed domain names feature links to websites competing with the business of Complainant, and from the operation of which Respondent receives pay-per-click fees. This use of the domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c) (iii). 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).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are convinced from the evidence that each of the <aadvanceautoparts.com>, <adnanceautoparts.com>, <advanceauotoparts.com>, <advanceautoparta.com>, and <advanceautopparts.com> domain names is employed by Respondent to resolve to webpages featuring links to websites promoting products that compete with the business of Complainant, and that this use of the domain names diverts potential customers away from Complainant’s website, thus disrupting Complainant’s business. This is evidence that Respondent both registered and uses each of the domain names in bad faith under Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) where that respondent employed the domain name to advertise goods and services of a complainant’s competitors, thereby disrupting that complainant’s business).
We are likewise persuaded from the evidence that Respondent’s employment of the domain names in the manner alleged in the Complaint is intended to and does confuse and mislead Internet users in that each of the domain names is confusingly similar to Complainant’s ADVANCE AUTO PARTS mark. That this is done for Respondent’s profit stands as evidence of bad faith in the registration and use of each of the domain names as contemplated in Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by employing a domain name that was confusingly similar to a UDRP complainant’s mark to offer links to third-party websites featuring services similar to those offered by that complainant).
Finally, we take note of the fact that, singly and together, Respondent’s domain names are quintessential examples of typo-squatting, in that each of them is a deliberately misspelled version of Complainant’s ADVANCE AUTO PARTS service mark intended to take advantage of the inadvertent typographical errors made by Internet users when entering into their web browsers the names of enterprises with which they wish to do business online. Typo-squatting is itself evidence of bad faith registration and use of these domain names. See, for example, Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a UDRP respondent engaged in typo-squatting, which is independent evidence of bad faith registration and use of a domain name under Policy ¶ 4(a)(iii)).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain names <aadvanceautoparts.com>, <adnanceautoparts.com>, <advanceauotoparts.com>, <advanceautoparta.com>, and <advanceautopparts.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 12, 2013
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