U.S. Auto Parts Network, Inc. v. PrivacyProtect.org / Domain Admin
Claim Number: FA1302001487286
Complainant is U.S. Auto Parts Network, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jcwhtney.com> and <jcwhutney.com>, registered with Bargin Register, Inc.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 26, 2013; the National Arbitration Forum received payment on February 26, 2013.
On March 6, 2013, Bargin Register, Inc. confirmed by e-mail to the National Arbitration Forum that the <jcwhtney.com> and <jcwhutney.com> domain names are registered with Bargin Register, Inc. and that Respondent is the current registrant of the names. Bargin Register, Inc. has verified that Respondent is bound by the Bargin Register, Inc. 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 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 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@jcwhtney.com, postmaster@jcwhutney.com. Also on March 21, 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 April 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.
1. In August 2010, Complainant acquired Automotive Specialty Accessories and Parts, the holding company of Whitney Automotive Group. Whitney Automotive Group was established in 1915 and is best known for the JC Whitney brand.
a. Complainant’s JC Whitney subsidiary operates at the <jcwhitney.com> domain name.
2. Respondent registered the <jcwhtney.com> domain name on April 1, 2002 and the <jcwhutney.com> domain name on December 27, 2008.
3. Policy ¶ 4(a)(i)
a. Complainant owns numerous United States Patent and Trademark Office (“USPTO”) registrations for marks related to its Whitney Automotive Group subsidiary, including the J.C. WHITNEY mark (Reg. No. 1,624,212 registered November 20, 1990).
b. Respondent’s <jcwhtney.com> and <jcwhutney.com> domain names are confusingly similar to Complainant’s mark.
4. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known by the disputed domain names.
b. Respondent is not sponsored by or legitimately affiliated with Complainant in any way and Complainant has not given Respondent permission to use Complainant’s mark in a domain name.
c. Respondent is using the disputed domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business.
i. Respondent presumably receives pay-per-click revenues from these linked websites.
5. Policy ¶ 4(a)(iii)
a. Respondent has engaged in typosquatting behavior.
b. The competing links Respondent displays on its websites divert potential customers away from Complainant to third-party websites, which disrupts Complainant’s business and indicates bad faith under Policy ¶ 4(b)(iii).
c. Respondent has registered and used the disputed domain names in bad faith by using the domains to attract and mislead consumers for Respondent’s own profit, which demonstrates bad faith under Policy ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds that the Complainant is entitled to the relief requested.
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.”).
Complainant claims ownership of several marks related to its Whitney Automotive Group subsidiary as a result of its registration of those marks with the USPTO, including the J.C. WHITNEY mark (Reg. No. 1,624,212 registered November 20, 1990). The Panel finds that Complainant’s USPTO registration confers rights in the J.C. WHITNEY mark for the purposes of Policy ¶ 4(a)(i), notwithstanding the fact that Respondent operates outside of the United States. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant also claims that Respondent’s <jcwhtney.com> and <jcwhutney.com> domain names are confusingly similar to Complainant’s mark, arguing that neither the addition of a generic top-level domain (“gTLD”) nor the misspelling of Complainant’s mark is sufficient to distinguish the disputed domain names from Complainant’s mark. The Panel notes that the <jcwhtney.com> domain name omits an “i” from Complainant’s J.C. WHITNEY mark, while the <jcwhutney.com> domain name replaces the “i” with a “u.” The Panel also notes that the disputed domain names omit both the periods and the space between words in Complainant’s J.C. WHITNEY mark. The Panel finds that none of these alterations to Complainant’s mark creates a legally distinct domain name under Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD, does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (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). Accordingly, the Panel holds that Respondent’s <jcwhtney.com> and <jcwhutney.com> domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
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 alleges that Respondent is not commonly known by the <jcwhtney.com> and <jcwhutney.com> domain names under Policy ¶ 4(c)(ii). Complainant makes reference to the WHOIS information, which identifies the domain registrant as “PrivacyProtect.org / Domain Admin,” arguing that this provides no evidence to suggest that Respondent is commonly known by either disputed domain name. Complainant asserts that it has not given Respondent permission to use its mark in a domain name, and that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. The Panel finds no evidence in the record to suggest that Respondent is in fact commonly known by the <jcwhtney.com> domain name or the <jcwhutney.com> domain name. The Panel concludes that Respondent is not commonly known by either domain pursuant to 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 that it is commonly known by the domain name).
Complainant also alleges that Respondent is not using the <jcwhtney.com> or the <jcwhutney.com> domain name to provide a bona fide offering of goods or services as allowed under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use as allowed under Policy ¶ 4(c)(iii). Complainant asserts that Respondent is using the disputed domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business. Complainant posits that Respondent receives pay-per-click revenues from these linked websites. The Panel determines that Respondent’s use of the disputed domain names for this purpose constitutes 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 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)).
Complainant has proven this element.
Complainant argues that the competing links Respondent displays on its websites divert potential customers away from Complainant to third-party websites, which disrupts Complainant’s business. Complainant urges that Respondent’s efforts to divert consumers and disrupt Complainant’s business is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). The Panel agrees and concludes that Respondent’s registration of confusingly similar domain names in order to host websites featuring competing pay-per-clicks improperly disrupts Complainant’s business. 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)). The Panel holds that Respondent has registered and used the <jcwhtney.com> and <jcwhutney.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant also argues that Respondent has registered and used the disputed domain names in bad faith by using the domains to attract and mislead consumers for Respondent’s own profit. Respondent’s selection of domain names that are confusingly similar to Complainant’s mark increases the likelihood that consumers will unwittingly associate Respondent’s sites with Complainant, thereby increasing Internet traffic to Respondent’s sites and allowing Respondent to generate greater click-through revenues. The Panel holds that this model does not withstand Policy ¶ 4(b)(iv) scrutiny. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Therefore, the Panel determines that Respondent registered the <jcwhtney.com> and <jcwhutney.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant contends that Respondent has engaged in typosquatting behavior through its registration of the <jcwhtney.com> and <jcwhutney.com> domain names, which demonstrates bad faith in and of itself. Complainant argues that Respondent’s selection of these particular domains was designed to take advantage of Internet users’ typographical errors. The Panel agrees and finds that Respondent has in fact engaged in typosquatting behavior and that such behavior constitutes bad faith under Policy ¶ 4(a)(iii). 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).”).
Complainant has proven this element.
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 <jcwhtney.com> and <jcwhutney.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: April 22, 2013
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